Preliminary injunction: the strategy to protect your business against patent infringement in Poland

While patent infringement proceedings are usually a matter of years, success in obtaining a preliminary injunction minimizes the negative impact of the infringement on your business much earlier. However, since the practical unraveling of such a step may not always be predictable, it is beneficial to consider all the relevant factors taken into account by the Polish courts when it comes to case examination.

The rules of procedure

After a reform in 2020, competence to recognize patent infringement cases, including preliminary injunction proceedings, was exclusively conferred on the District Court of Intellectual Property in Warsaw as a court of first instance (“IPC”).

In order to claim a preliminary injunction, the patent holder must in the first place substantiate his or her claim. Substantiating a claim is what the patent holder typically does in a main pledge to prove patent infringement whereas the substantiation of the claim should include both factual circumstances and the relevant legal basis. However, IPC case law says that:

“The requirement to substantiate a claim rather than to prove the existence of a claim, means that a party bearing the burden of substantiating the claim is relieved from the obligation to comply with the specific rules of evidentiary procedure.”
IPC decision of 25 March 2021, No. XXII GW 355/20

The framework of the preliminary proceedings prevents the court from making findings based on court expert evidence. Therefore, it has become well establish practice that the right holder commissions a private expert’s opinion to substantiate a claim. The arguments presented by the private expert should concern interpretation of the technical features of the invention or comparison of the features of the disputed solutions. The approach to the private experts’ opinions may vary among the judges. However, practice shows that IPC in Warsaw considers such opinions a significant element of substantiation of a claim when the author of the opinion is an expert (usually scientist from a reputable institution) who specializes in a field covered by the patent. According to the IPC case law:

“Due to the accelerated and much more informal nature of the preliminary injunction proceedings, it may be sufficient, instead of taking evidence from the court experts’ opinions, to present a private expert report prepared at the request of the parties.”
IPC decision of 2 August 2022, No. XXII GWo 28/22

The opinions made by patent attorneys or engineers who do not specialize in a certain field may not prove sufficient to substantiate a claim.

Another frequently used measure to substantiate a claim is to present sample purchases, pictures from stationary stores and products exhibitions or screenshots of the websites selling the infringing products. To strengthen the power of the evidence from a website it is recommended to provide the court with a notarized copy of the website screenshot.

It is also important to notice that documentation provided to IPC needs to be in Polish, in case of documents in foreign languages sworn translation is required.

The second requirement is to substantiate a legal interest in obtaining preliminary injunction. Legal interest exists when the lack of security will prevent or seriously impede the execution of the judgment rendered in the case or otherwise prevent or seriously impede the achievement of the purpose of the proceedings. IPC case law supports the position which assumes that a legal interest in obtaining a preliminary injunction exists when, without such a measure, the legal protection provided by the substantive ruling will be incomplete for a patent holder.

The current legislation does not expressly indicate the time factor which would require the right holder to take action, e.g. without undue delay or, even less, within a specified period of time.

Nevertheless, the lack of a sufficiently prompt response and the toleration of the infringement are considered by courts to be a factor which may adversely impact upon the chances of obtaining a preliminary injunction due to the lack of a legal interest.  It is assumed that urgency, i.e. the lack of delay in making the request, is an element in the assessment of the above-mentioned statutory condition.

“Since the plaintiff tolerated the circumstances concerning the defendant described in the lawsuit, there is a presumption that, at the very least, there was no rush to take quick and radical steps against the defendant. In the lawsuit, the plaintiff did not provide any arguments for treating the issue of the defendant's cessation of possible violations of rights or favorable legal situations as requiring urgent resolution, and thus did not demonstrate a legal interest in obtaining an injunction.”
IPC decision od 21 January 2021, No. XXII GW 348/20

The case law to date refers to no single, even approximate, time of permissible delay. In some recent court decisions, the court concluded that it should be no longer than 6 – 8 months. Current IPC decisions suggest that a line of jurisprudence is developing concerning the time within which right holders should apply for a preliminary injunction in intellectual property cases - it should be matter of months rather than days or weeks.

The court’s order granting preliminary injunction by its nature is anticipatory as it usually does not differ from the substantive judgement concluding the infringement proceedings. In practice, the preliminary injunction very often takes the form of:

• prohibition of certain activities for the duration of the proceedings; 
• seizure of the infringing goods.

Under Polish law, a request for a preliminary injunction can be withdrawn after it has been granted or dismissed if the withdrawal of the request is made before the court order becomes final. However, some experts claim that it is not clear whether the admissibility and effectiveness of the withdrawal after the request has been rejected depends on the consent of the infringing party or must be combined with a waiver of the claim that was to be secured by a preliminary injunction.

Contesting patent validity

IPC is quite clearly in favor of respecting administrative decisions granting a patent right. As a rule, only a final and non-appealable decision on patent invalidation could dismiss the preliminary injunction proceedings or a preliminary injunction already granted. However, it may not be completely ruled out that, under certain circumstances, a patent invalidation decision may play a role in whether to support a claim or not.

The Warsaw Court of Appeal, which analyzed the legitimacy of upholding a preliminary injunction following a decision by the Polish Patent Office to invalidate a patent ruled that:

“it would be acceptable to consider the possibility of challenging the substantiation of the [patent holder] claim if there was at least a ruling by the Regional Administrative Court”.
Warsaw Court of Appeal decision of 18 October 2018, No. VII Gz 1058/18

However, a stricter position was also taken and it is the latter that appears to dominate IPC case law:

“First of all, it should be noted that the final decision of the Polish Patent Office invalidating the plaintiff's patent was upheld by the Regional Administrative Court in Warsaw, but due to the filing of a cassation appeal against this judgment, it is not final. This fact is of great importance, because, as a result of the consideration of the plaintiff's cassation appeal, the verdict of the Regional Administrative Court and, consequently, the decision of the Polish Patent Office may be overturned. This is because the Supreme Administrative Court may not only dismiss the complaint but may also consider it and refer the case back to the Regional Administrative Court in Warsaw for reconsideration. The Supreme Administrative Court may also, if the cassation appeal is upheld, issue a reformatory judgment and, overturning the appealed ruling, recognize the complaint if it determines that the merits of the case are sufficiently clarified. On the other hand, if the case goes back to the Regional Administrative Court, the court has a wide range of rulings at its disposal, as specified in law. (…) Therefore, it must be emphasized that since the decision of the Polish Patent Office on patent invalidation did not acquire validity in view of the non-final decision of the Regional Administrative Court, there was no final challenge to the credibility of the plaintiff's claim.”
IPC decision of 20 April 2020, No. XXII GWwp 25/15

The patent invalidation proceedings at the level of the Polish Patent Office as the first instance authority usually take around one year. However, due to the complexity of a case or patent limitation motion, the time of the invalidation proceedings may significantly increase. Consequently, case examination by the administrative courts at the appeal and cassation appeal level usually also takes more than one year.

How time costly can it be?

Polish law provides that the court should examine the application for a preliminary injunction without delay, no later than within a week from the date of receipt of the application. As a rule, the court examines the case in a closed hearing. The one week deadline is a recommended time frame, which means that potential non-compliance does not render the order issued ineffective.

Based on our experience, in some cases granting a preliminary injunction is rather a matter of weeks, whereas in other cases the preliminary proceedings may be extended to several months, especially when the infringing party learns about the proceedings and presents their own statement including a private expert’s opinion. Due to the limited access to the court orders granting preliminary injunctions, there are no official statistics on the most likely time frame for such proceedings. Additionally, it is important to remember that, when granting an injunction in preliminary proceedings, the court sets a time limit to initiate the main proceedings. This deadline may not exceed two weeks.

Involvement of the infringer in the preliminary proceedings

Currently, there is no special regulation on preliminary injunction proceedings in IP cases. In principle, according to the general rules, such proceedings are of ex-parte character, i.e. the opponent (alleged infringer) is not involved until the court order is served upon him/her. However, what we observe is that IPC often elects to inform the opponent about ongoing proceedings and requests them to provide a response to the patent holder’s application within a set time frame. Hence, in practice, it depends on the court whether these proceedings will be of ex-parte or inter partes character.

Practice shows that protective letters may increase the chances of inter partes proceedings.

The mechanism of protective letters is not regulated by the law, so it is up to the court whether such opinions would be taken into account while deciding upon granting a preliminary injunction. A protective letter, if filed prior to the right holder’s request for a preliminary injunction, does not formally initiate any court proceedings. In practice, IPC registers the protective letters that have been filed in its journal of correspondence. If the court subsequently receives a request for a preliminary injunction, further action on the protective letter may (but does not have to) be taken by the judge who examines the case. One of the three outcomes is possible:

• the judge disregards the protective letter as having been filed before the formal commencement of the proceedings;
• the judge becomes familiar with the content of the protective letter - without including the letter in the case files and without disclosing this information to the right holder;
• the judge becomes familiar with the content of the protective letter – and orders that the letter be included in the case files and that the right holder be informed of the fact.

It is not clear whether the right holder may file a request regarding access to the information on filed protective letters before the initiation of the preliminary injunction proceedings. However, given the very early stage, i.e. before commencement of the preliminary injunction proceedings, such a request would be rejected by the court.

What’s likely to happen in the future? New provisions on preliminary proceedings in IP cases

Currently, the Polish Parliament is debating amendments to the Polish Code of Civil Procedure. The legislative proposal requires the court to hear the opponent (potential infringer) before granting a preliminary injunction. However, there are some important exceptions to this rule: (i) if an immediate court order is necessary, the hearing of the infringing party would not be required; and also in a situation (ii) where, due to the form of the preliminary injunction, the injunction is enforced by a bailiff or involves appointing an administrator over an enterprise (e.g. a bailiff will be engaged in the proceedings if the seizure of goods is ordered).

Pursuant to the written grounds of the proposed amendment, this change is planned to be introduced to combat abuse of the preliminary injunction proceedings by entrepreneurs who use this measure to eliminate competitors on the market. This reasoning mirrors the recent approach of the District Court in Warsaw, which is careful to grant preliminary injunctions, recognizing the significant impact on the financial situation of the infringing parties. However, no official statistics regarding the number of dismissed cases have been published. The Polish legislator decided to take into account the specific character of IP cases especially given the long duration of court proceedings. It is seen unfair and ineffective not to hear the infringing party until the appeal stage. One of the goals of the proposed changes is to unify the  current practice of judges examining IP cases.

The legislative proposal says that the new law will enter into force 3 months after its promulgation. In principle, the new provisions will apply immediately. In cases already initiated and not concluded before the new law comes into force, actions performed in accordance with the provisions of the amended law in its current wording will remain in force.

The above analysis is based on both case law and existing practice, including information expressed by active judges currently adjudicating in IPC in Warsaw.