RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/183
23 June 2000
(00-2556)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Poland to Questions posed by the European Communities
and their member States, Japan, Switzerland and the United States
By means of a communication from the Permanent Mission of the Republic of Poland, dated
14 June 2000, the Secretariat has received the following responses to questions posed by the European
Communities;  Japan;  Switzerland and the United States in documents IP/C/W/172, IP/C/W/173,
IP/C/W/171 and IP/C/W/174 respectively.
_______________
THE EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. TRADEMARKS
1. Please give the definition of a sign under your national legislation and explain under which
conditions it can be protected.
At the present Trademark Law of 1985 the definition of a sign is given in Article 4, which
states the following:
"(1) For the purpose of this Law, a trademark shall be any sign capable of distinguishing
the goods or services of a given enterprise from similar goods or services of anotherenterprise.
"(2) The following, in particular, are considered as trademarks: words, designs,
ornaments, combinations of colours, plastic fo rms, melodies or other acoustic signals, and a
combination of such elements."
Under the new Industrial Property Law the definition of a sign is the following:"(1) Any sign represented or capable of being represented graphically may be considered
as trademark, provided that such sign is capable of distinguishing the goods of oneundertaking from those of other undertakings.
"(2) The following, in particular, may be cons idered as trademarks within the meaning of
paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional
shape of goods or of their packaging, as well as melodies or other acoustic signals."
Eligible for protection are registered trademarks as well as well-known (not registered) marks.IP/C/W/183
Page 2
2. Please confirm whether or not services are a subject-matter which can be protected in your
trademark law. Please confirm if signs, such as trade names, can be protected. Please describe if
elements such as sound, perfumes and containers can be protected.
Services are eligible for protection although service trademarks do not constitute a separate
individual type of marks.  The Law states in this respect that any reference in the Law to trademarks
also means service marks.
A trade name may constitute an element of a trademark and a trademark as such, provided
that it is of a distinguishing nature.  Three-dimensional signs (also containers) and sounds are also
capable of protection.  As regards smells (perfumes), no trademark of this kind has been applied for
protection in Poland so far.  In the context of the general definition in the new Law, registrability of atrademark concerning smell could be a subject of evaluation in case of it being presented in a
graphical form.  However, in such a case, establishing of individual characteristics of such sign and
evaluating it as to the similarity with other signs would give rise to some problems, since the
similarity should be evaluated by reference to the sm ell itself, rather than to its graphical presentation.
3. Please explain what the requirements of use are, if any, as a condition for a trademark
registration. Please explain the definition of use and the conditions of maintenance of a registration
in that respect.
Both the present Trademark Law and the new IP Law do not make the registration of a
trademark conditional upon its use.
Under the Trademark Law of 1985, the use of a trademark consists, in particular, of affixing
the mark to goods of the type registered or to their packaging, of marketing goods so marked, or of
affixing the mark on documents relating to the marketing of such goods or for the purposes ofadvertising in the Polish mass media.
Under the new IP Law, the use of a trademark consists of:(i) affixing the trademark to the goods covered by the registration or to the packaging
thereof and putting the goods on the market;
(ii) using the trademark on business documents handled in putting the goods on the
market or in rendering services;
(iii) using the trademark in advertising.
As far as maintenance of the registration is concerned, Article 28(1) of the Trademark Law
states that the right of registration lapses, if the right holder has not used the mark within a period of
three consecutive years in Poland.
Under the new IP Law the registration is maintained where a trademark is put to genuine use.
The right of protection for trademark lapses on failure to put to genuine use of the registered
trademark for the goods covered by the registration for a period of five successive years, unless
serious reasons of non-use thereof exist.
4. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Both under the present Trademark Law and under the new Industrial Property Law the term
of the right of protection is 10 years counted form the date of filing of a trademark application withIP/C/W/183
Page 3
the Patent Office.  The term of protection may, at the request of the right holder, be extended in
respect of all or of a part of the goods for subsequent ten-year periods.
5. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
Use by a third party with the authorization (licence) of the right holder or only for export
purposes is considered as the use of a trademark.  The use must be genuine, not seeming to be
genuine. Consequently, the new IP Law contains a clause to the effect that the use of a trademark is
not considered to be genuine, if the trademark is only used for advertising purposes, while the product
actually is neither made available on the domestic market nor manufactured for export purposes.
B. GEOGRAPHICAL INDICATIONS
6. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
No protection is granted by the PPO for a trademark, the subject of which is protected as a
geographical indication.  Protection is also be refused for a trademark containing any element of a
geographical nature, if it would mislead the public as to the origin of the goods.  This is provided in
the new IP Law in the following way:
Article 131(4): A right of protection shall not be granted for a trademark which contains
geographical elements which, although literally true as to the territory, region or locality, in which the
goods originate, are of such a nature as to misl ead the public by false representing that the goods
originate in another territory famous of given goods.  In the case of homonymous geographical
indications for wines and beers, protection shall be accorded, provided that the Patent Office invites a
subsequent applicant, who has later filed his app lication, to alter his trademark so as to make it
distinguishable from the trademark earlier registered or applied for registration.
Additionally, Article 132(1)(ii) states that a right of protection shall not be granted for a
trademark in respect of goods of the same kind, if the trademark is similar to a registered geographical
indication, unless the applicant is entitled to use that indication and the grant of a right of protection
for the trademark is not supposed to excessively restrain other entitled parties from using the
registered geographical indication.
7. Please give the definition of a geographical indication in your legislation.
Geographical indication is indirectly defined in Article 8 of the Act on combating unfair
competition, according to which a geographical indication constitutes any sign, which directly orindirectly designates a country, a region or locality, from which the products or services originate.
Under the new Law the following constitute geographical indications:(i) names of regions used to describe products:
(a) originating in a specific territory;  and
(b) the properties of which are essentially or exclusively due to a particular
geographical environment with its inherent natural and human factors, and theproduction or processing of which takes place in that territory;
(ii) designations of origin used to describe products:IP/C/W/183
Page 4
(a) originating in a specific territory; and
(b) the properties or other characteristics of which are essentially attributable to
their geographical origin, that is the territory on which they are produced or
processed.
2. Geographical indications shall also mean designations used to describe the products
produced of raw materials or intermediate products coming from a defined area larger that the
production or processing area, provided that special conditions for the preparation of the raw
materials or intermediate products exist and there are inspection arrangements to ensure that
those conditions are adhered to.
3. Subject to the conditions referred to in paragraph 2, geographical indications shall
also be geographical designations which do not correspond to the true place, in which the
product originates, or other traditional designations, if they are normally used in respect of the
goods originating in a defined area.
The new Law additionally introduces a possibility of obtaining protection for geographical
indications by way of registration, which may prove more convenient for a right holder in case of
enforcing his rights.
8. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
According to the provisions of the Act on combating unfair competition, protection may be
granted for any sign directly or indirectly designating (for example with the use of a graphical
element) the territory, from which the products originate.  Additional and self-executing protection byway of registration is, under the new IP Law, applicable to word signs, which directly or indirectly
refer to the origin of the product, if the quality, reputation or other characteristics of the product are
attributable to this particular geographical origin.
9. Please describe whether or not additional protec tion is granted by your legislation to wines
and spirits and if such protection is granted, please describe how. Please mention other types of
products, if any, covered by this additional protection.
The new IP Law clearly provides that elements of a geographical nature may not be contained
in a trademark for wines or spirits, if the geographical indication concerned is untrue with the actual
origin of the goods.  Other types of products are not covered by such severe protection.  The
protection is supposed to be refused in case of an element of a geographical nature being misled to thepublic as to the true origin of the product (i.e. by making the impression that the product originates
from the territory, which is untrue); that is not going to be applicable in case of elements eligible for
being considered as fancy ones (for example, when the name "Sahara" is used in respect of refreshing
drinks).
10. Please explain how exceptions under Article 24 of the TRIPS Agreement are used in your
jurisdiction. Please provide examples of the use of the exceptions by courts or lists of names
considered as generic in your jurisdiction.
As genuine names the following may be referred to as typical: "Krakow sausage" or "Vienna
cheese cake".  It is possible to use in a trademark a name or a personal name of the right holder,
provided that the trademark is in its entirety easily distinguishable from those used in respect of other
products.IP/C/W/183
Page 5
C.I NDUSTRIAL DESIGNS
11. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations. Please explain how textile designs are protected.
The present regulations on the protection of ornamental design generally correspond, at least
as far as the definition is concerned, to the institution of industrial designs. In practice, the protection
of industrial designs provided for under the new IP Law, has been modified only in terms of the name
of the protected subject-matter.
Under the new Industrial Property Law (Article 102) the definition of the industrial design is
the following:
Any new, original and capable of multiple reproduction appearance of a product, which
manifests itself in particular in the shape, the features of the outside surface, colours, lines or
ornamentation, shall be an industrial design.  An appearance of a product dictated solely by its
technical function shall not constitute an industrial design.
Under the new Law, textile designs are directly eligible for protection (textile fabrics). Under
the present law on ornamental designs no designs of this kind have been applied for protection with
the Polish Patent Office.
Additionally to the protection provided for under the IP Law, industrial designs are eligible
for protection under the copyright law (provided that they meet the criteria of an artistic work).
12. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
Under the new IP Law, any act of making, putting on the market or importing, for commercial
purposes, of the products being counterfeit of that design shall be considered infringement of the right
in registration of the industrial design.  The present regulations on the protection of ornamental
designs fail to contain a provision to that effect, nevertheless importation is covered by a general
definition of the exclusive right.
13. Please mention whether or not your legislation provides for the right to issue a compulsory
licensing for industrial designs.
No.  There is no possibility to grant a compulsory licence for an industrial design neither
under the present nor under the new IP laws.
14. Please indicate for which period of time your legislation grants protection for industrial
designs.
According to the present regulations on the protection of ornamental designs, the term of
protection is five years subject to extension for further consecutive five-year periods.
The term of a right in registration under the new IP Law is 25 years counted from the date of
filing of an industrial design application with the Patent Office.IP/C/W/183
Page 6
JAPAN1
A. TRADEMARKS
6. Please explain how Polish Trademark Law provid es publication of trademark as stipulated in
Article 15.5 of the TRIPS Agreement.
At present, under the Law on Trademarks (Article 56), a trademark is published in the official
gazette "Communications of the Patent Office" immediately after the registration.
In the new Industrial Property Law of 17 March 2000, Article 143 provides additionally for
the publication of a trademark application.
B. GEOGRAPHICAL INDICATIONS
7. Please explain how additional protection is provided for geographical indications for wines
and spirits in Poland as stipulated in Article 23 of the TRIPS Agreement.
At present, protection for geographical indications for wines and spirits is provided in Poland
on general principles (i.e. in respect to any geographical indications) under:
Act of 16 April 1993 on combating unfair competition; andLaw of 31 January 1985 on Trademarks.New Industrial Property Law provides for more stringent requirements in respect of
trademarks eligible for registration – no elements of a geographical nature discordant with the true
origin of the goods may be used.  The law additionally provides for protection of geographical
indications by way of registration which meets all of the requirements of Article 23 of the TRIPSAgreement and is applicable in respect of any registered indication (not only to wines and spirits).
Until the new law comes into force, the TRIPS requirements will be applied directly by virtue
of the constitution.
                                                     
1 Japan withdrew its questions nos. 1 to 5 on copyright and related rights, as distributed in
document IP/C/W/173.IP/C/W/183
Page 7
SWITZERLAND
A. GEOGRAPHICAL INDICATIONS
Article 22 TRIPS Agreement  (Protection of Geographical Indications)
1. How does Polish law define "geographical indications"?  Does this definition cover visual
and symbolic signs?
The protection of geographical indications is at present regulated in:1. Act of 16 April 1993 on combating unfair competition (O.J. 47, item 211), which
provides for the prohibition to use false or deceptive indications of geographical origin of
goods or services on pain of civil and penal liability; where a given indication is protected inthe country of its origin, it is prohibited to use it also when accompanied by expressions such
as "kind", "type", "method" or the like.
2. Law of 31 January 1985 on trademarks (O.J. 5, item 17), which provides for the
prohibition to register a trademark (or invalidate the trademark already registered), if itcontains geographical or other elements that refer or designate a state or a region or
community within such st ate, in respect of goods (or services) that do not originate in that
territory, and if the use of the trademark may mislead purchasers as to the origin of the goods
and if the exclusion of the trademark from registration derives from international conventions.
Both legal acts are supposed to also cover visual and symbolic signs:
- in the Act on combating unfair competition – any false or deceptive sign, which
directly or indirectly indicates a state, a region or a community in which the goods
(services) originate;
- in the Trademark Law – any sign, which contains elements of a geographical nature
or others that designate a state, a region or a community.
The Act of 17 March 2000 – Industrial Property Law (which has as yet not become effective)
provides also for the protection of word geographical indications (Polish and foreign) by way of
registration with the Patent Office.  The registration obtained under the Law will constitute, inaddition to measures applied under the Act on combating unfair competition and under the Law on
Trademarks, a ground for immediate enforcement of claims for infringement of the right of
registration granted for a geographical indication.
B.P ATENTS AND PROTECTION OF UNDISCLOSED INFORMATION2
Article 31 of the TRIPS Agreement  (Other Use Without Authorization of the Right Holder)
1. Does your law make compulsory licences subject to the conditions enumerated in Article 31
of the TRIPS Agreement?
                                                     
2 In consideration of reservations made by Poland during the 1997 review with regard to certain areas
of its intellectual property legislation at that time in force and under review as well as of the announcement byPoland in 1997 of new legislation being drafted and to enter into force soon, Switzerland would like to posethese follow-up questions to Poland in respect of its new legislation.IP/C/W/183
Page 8
In general, yes.  Under the present Law of 19 October 1972 on Inventive Activity compulsory
licensing is regulated in Article 49, which provides for a possibility of granting a compulsory licence
(in litigation proceedings), where:
- it is necessary to prevent or eliminate a state of national emergency; or- the patentee, without justified reasons, does not offer or prevent offering of the
products manufactured by means of the invention on terms meeting the social
demand (three years after the grant of the patent).
The above provision fails to directly provide for the requirement of making efforts to obtain a
voluntary licence, referred to in Article 31(b) , however, since 1 January 2000 the said Article is
directly applicable by virtue of the constitution.
2. What does Polish law consider as:
(a) "reasonable commercial terms"; and(b) "reasonable period of time"
under Article 31(b) TRIPS Agreement?
Lack of experience in this respect (no case law, no requests for the grant of a compulsory
licence) makes impossible to clearly define, what would in practice be considered as "reasonable
commercial terms" or "reasonable period of time" .  In the new Industrial Property Law of 17 March
2000, the requirement of Article 31(b) is met by imposing an obligation on a person requesting the
grant of a compulsory licence to prove that he has earlier made efforts to obtain a licence in goodfaith.  "Reasonable commercial terms" may be evaluated by reference to the market value of a licence
corresponding to the amount of a licence royalty, in case when a compulsory licence  is granted, while
"reasonable period of time" - by reference to efforts made in good faith.  The final consideration is left
to a body deciding in an individual case.
3. Does Polish law, in accordance with Article 27.1 in combination with Article 31 of the TRIPS
Agreement, recognize importati on as "working a patent" (and therefore preclude compulsory
licence)?
Both the present Law on Inventive Activity and Industrial Property Law to become effective
soon makes the grant of a compulsory licence conditional upon unavailability or inadequate
availability of the product on the market, irrespective of whether the product could be manufacturedin the country or be subject of importation.
4. Does Polish law prohibit the transfer of a compulsory licence, except its transfer together
with the part of the enterprise or its assets that enjoys such use as required in Article 31(e) of the
TRIPS Agreement?
Yes.  Both the present and the new laws provide for a possibility of a compulsory licence to
be transferred only together with the enterprise (or its part), in which it is worked.
Article 34 of the TRIPS Agreement  (Process Patents: Burden of Proof)
5. Does Polish patent law or procedural law provide for the principal of the reversal of burden
of proof in a process patent litigation?IP/C/W/183
Page 9
Yes.  Article 57(3) of the Law of 1972 on Inventive Activity states the following: "In the case
of a patent for a process for the manufacture of a new product, any product that can be obtained by
means of the patented process shall be presumed to have in fact been produced by that process".
Consequently, in any case of a process patent litigation it is for the defendant to prove that the process
actually used is not that covered by the patent.
This principle is maintained in the new Industrial Property Law in Article 64 which reads as
follows:
1.  A patent granted for a process of manufacture shall also cover products directly
obtained by means of that process.
2. In the case of new products, as well as where the right holder proves that he was
unable through reasonable efforts to identify the process of manufacture actually used
by another person, the product which may be obtained by means of the patented
process shall be deemed to have been obtained by that process.
3. In the case referred to in paragraph (2), in the adduction of proof to the contrary, the
legitimate interests of defendants in protecting their manufacturing and business
secrets shall be taken into account.
Article 39 of the TRIPS Agreement  (Protection of Undisclosed Information)
6. Does the Polish legislation ensure that undisclosed and confidential test data or other data
submitted by an applicant to the responsible state agency in the procedure for market authorization of
a pharmaceutical product is protected against disclosure and against unfair commercial use by a
competitor, for example by prohibiting a second app licant from relying on, or from referring to the
original data of the first applicant, when applying subsequently for market authorization for his own
product?
7. Does the Polish legislation provide for exceptions to this? If yes, under what conditions would
such exceptions apply?
Pursuant to Article 39.3 of the TRIPS Agreement any documentation and data submitted to
the Office for Registration of Pharmaceutical and Medicinal Products for the purposes of obtaining
registration and regulatory approval are kept confidential, they are protected against disclosure and
are not made available to third parties.
The Registration Commission verifies whether a given pharmaceutical or medicinal product
satisfies the requirements of quality, efficiency and safety.
These are common civil courts in Poland, which hear matters involving acts of unfair
competition according to the provisions of the Act of 16 April, 1993 on combating unfair competition.
When ruling in such cases, courts are supposed to apply, as from 1 January 2000, the TRIPSprovisions.  The Registration Commission is bound by courts' judgements in this respect.IP/C/W/183
Page 10
C. ENFORCEMENT3
Article 50 of the TRIPS Agreement (Provisional measures)
1. Do the judicial authorities in Poland have the authority to adopt, on the request of a right
holder, a provisional measure inaudita altera parte before an action leading to a decision on themerits of the case has been lodged?
[No reply provided]
2. Under Polish patent or procedural law, are there any restrictions for obtaining provisional
measures?   If so, what are these restrictions?
[No reply provided]
                                                     
3 In consideration of reservations made by Poland during the 1997 review with regard to certain areas
of its intellectual property legislation at that time in force and under review as well as of the announcement byPoland in 1997 of new legislation being drafted and to enter into force soon, Switzerland would like to posethese follow-up questions to Poland in respect of its new legislation.IP/C/W/183
Page 11
UNITED STATES OF AMERICA
A. GENERAL
1. With respect to each form of intellectual property covered by the TRIPS Agreement, including
plant variety protection, please describe the way, in which nationals of WTO Members are ensured ofnational treatment and most-favoured nation treatment.
In the field of industrial property protection Polish law ensures national treatment and most
favoured nation treatment for national s of WTO Members in twofold manner:
- by way of a direct regulation under which foreign natural and legal persons are
afforded the rights by the Polish law in accordance with the international agreements
to which the Republic of Poland is party (Article 4 of the Law on Inventive Activity,
Article 3 of the Law on Trademarks, Ar ticle 3 of the Law on the protection of
topographies of integrated circuits, Article 5(1) of the new Industrial Property Law);
- by way of special statutory regulations governing the rights of applicants and owners
of rights granted irrespective of whether they are Polish or foreign nationals.
One exception relates to mandatory representation (by patent agents) of foreign nationals in
proceedings before the Polish Patent Office, another one involves an obligation for Polish nationals to
apply an invention or a utility model for protection in Poland before seeking protection abroadnational security consideration).
B. COPYRIGHT AND RELATED RIGHTS4
2. Please provide a status report on the copyright legislation now pending in Parliament in
Poland, including a brief explanation of the changes  it will make to Poland's copyright regime.
This section was subject of the review in 1998.
3. Please explain in detail how US and other foreign sound recordings are afforded a point of
attachment qualifying them for protection in Poland.
This section was subject of the review in 1998.
4. Please explain in detail how Poland implem ents its obligations under TRIPS Article 14.6 to
provide protection to sound recordings that are still protected in their country of origin and that have
not had a full term of protection in Poland.
This section was subject of the review in 1998.
C. TRADEMARKS
5. Please describe in detail all of the provisions in Poland’s laws that ensure protection for
well-known marks and provide citations to those provisions.
The present Law on Trademarks ensures protection for well-known marks by way of
prohibition to register, or the invalidation of already registered, a trademark, if it is similar to a
trademark well-known (not registered) in Poland (Article 9(1)(ii) – "Registration of a trademark for
                                                     
4 These should be considered follow-up questions to the review of Poland's legislation conducted in
1998 (document IP/Q/POL/1).IP/C/W/183
Page 12
goods of the same kind shall not be permissible where (....)" (ii) it is similar to a trademark that is
well-known in Poland as a trademark for goods of another enterprise to an extent that it could mislead
purchasers as to the origin of the goods in ordinary economic activity.)  It is also possible for the user
of a mark that is well-known in Poland to enforce his rights (to seek the invalidation of the right
deriving from a registration obtained in violation of the trademark law, or that the use of the mark orof a similar mark by other enterprises for the same goods be prohibited, if there exists the risk of
purchasers being misled as to the origin of the goods).
Under the Industrial Property Law of 17 March 2000, protection for well-known trademarks
and trademarks having a good reputation ("famous", "renown") is provided, which is applicable to any
goods and services.
D. PATENTS5
6. Please provide a status report on the legislation regarding inventive activity now pending in
Parliament in Poland, including a brief explanation of the changes it will make to Poland’s patent
regime.
The draft of the Industrial Property Law already underwent three readings in Sejm, it was
discussed by the upper chamber of the Parliament – Senat, and now is awaiting voting, on a Sejm’s
plenary session, which is expected to take place in early June, on the amendments proposed for
introduction by Senat.  This is the last phase of the Parliamentary works on the draft.  After the voting
the draft is to be signed by the President of the Republic of Poland to become law.
The new Law makes the following changes to Poland’s patent regime:
1. it provides for the protection for inventions in all fields of technology (exceptions to
patentability no longer include products obtained by nuclear transformation, asprovided for in the Law on Inventive Activity);
2. it permits patent claims to be amended for the purpose of claiming enhanced
protection, which was not earlier available (up to the time of publication of the
application and provided that such alteration may not go beyond what has been
disclosed in the description of the invention as filed);
3. determines detailed conditions for granting compulsory licences along the lines of
Article 31 of the TRIPS Agreement;
4. it provides for the exception concerning th e exploitation of an invention (during the
life of a patent) for the purpose of generating data necessary for obtaining regulatoryapproval or registration requisite for certain products to be allowed for putting them
on the market; that is mainly applicable to pharmaceutical products and plant
protection products;
5. it introduces post-grant opposition system (with a six month period from the grant
given for making notice of opposition);
6. it provides for judicial review of Patent Office’s decisions , exercised by the Supreme
Administration Court.
                                                     
5 These should be considered follow-up questions to the review of Poland's legislation conducted in
1997 (documents IP/Q3/POL/1 and Add.1).IP/C/W/183
Page 13
7. Article 19 of the Law on Inventive Activity provides that any person with a legal interest can
request an advisory opinion regarding infringement from the Patent Office. Please explain the legal
status of such an advisory opinion. Can such opinions be appealed to a judicial body and, if so, how?
Article 19 of the Law on Inventive Activity provides for the establishment by the Patent
Office, in litigation proceedings, that a specified production or intended production is not of a kind as
to infringe another’s patent. In case of an action for infringement of a patent, the court may take such
establishment into consideration, not however being legally bound by it (what is taken into
consideration by the court, these are facts of the case rather than evidence produced by the plaintiff,
which is frequently purely hypothetical).  Advisory opinions can be appealed to the Board of Appeals
(composed, among others, of judges of the Suprem e Court) or to the Supreme Court by applying
extraordinary procedure.
The new Industrial Property Law of 17 March 2000 abandons the institution of advisory
opinions and in any case leaves matters of this kind to be decided by common courts.
8. Article 49(2)(ii) provides that, in the event a patentee refuses a voluntary licence to the owner
of a dependent patent, that latter can request a compulsory licence. Please explain how the conditions
of Article 31(l) are met under the Law on Inventive Activity. How many compulsory licences have
been issued under this provisions since the Law on Inventive Activity came into force?
Additional conditions for the grant of a compulsory licence in case of a dependent patent
(TRIPS Article 31.l) are directly met in the provision relating to cross-licensing, referred to insubparagraph (ii), i.e. in Article 49(1).2(b), which reads as follows: "The Patent Office may grant (...)
a compulsory licence (...), where:
1. (...);
2. it has been found that the exclusive right has been abused (...), in particular, where:
(a) (...);(b) the patentee, by refusing to conclude a licence contract, prevents the meeting of the 
social demand through the exploitation of the invention that is the subject-matter of a 
dependent patent; in such case, the holder of the original patent may demand that an authorization be given to him for the exploitation of the invention that is the subject-
matter of the dependent patent (cross-licence)."
Other conditions are met in the new Industrial Property Law in Article 82(2) and Article 85:
Article 82(2):  The grant of a compulsory licence for the exploitation of an invention in the
case referred to in paragraph (1)(iii) shall be conditional upon ascertainment that the exploitation of
the invention that is the subject-matter of the dependent patent, where the both inventions concern the
same subject-matter, involves an important technical advance of considerable economic significance.
Article 85:  A compulsory licence may only be tr ansferred together with the enterprise or with
that of its part, in which it is worked.  A compulsory licence relating to the earlier patent may only be
transferred to a third party together with the dependent patent.
Until the new law comes into force, the TRIPS requirements will be applied directly by virtue
of the constitution.IP/C/W/183
Page 14
As regards the number of compulsory licences issued since the Law on Inventive Activity
came into force, it was only one case of this kind reported in late 1970 (between Polish entities).
Since then, no single compulsory licence has been issued.
9. Article 50 of the Law on Inventive Activity appears to authorize compulsory licences for
already existing licences. Please explain in detail, how such licences would be granted and the
rationale behind Article 50.
Article 50 of the Law on Inventive Activity would be applicable in a situation of an invention
being exploited in Poland under a licence granted by the licensee of a voluntary licence and the sub-
licensee's failing to satisfy, to a necessary extent, the market demand for the product.  This would
constitute a matter in dispute between the licensee of a voluntary licence and a party applying for a
compulsory licence. In practice, no case of this kind has happened at all.
In the new Industrial Property Law there is no direct provision to that effect; this however
would not prevent a compulsory licence from being granted (on general terms), if such a situation
happened.
10. Article 68(2) provides that the General Public Prosecutor of the Republic of Poland may
request that a patent be declared null and void in the public interest. Please explain in detail the
circumstances this provision might be invoked and in dicate what Article(s) of the TRIPS Agreement
would permit such revocation.
Request by the General Public Prosecutor that a patent be declared null and void may be
based on the same substantive grounds as that of any other person, where the patent was granted in
breach of law.  It is not necessary for the Public Prosecutor to demonstrate his own legitimate interest,
but he may support his intervention with the public interest consideration (in general).  No single case
of this kind has occurred in practice.
The TRIPS provisions do not provide for any limitations on groups of persons eligible to seek
invalidation of a patent granted;  TRIPS only requires providing for judicial review of decisions taken
by the Patent Office and this particular requirement is satisfied in the new Industrial Property Law of
17 March 2000, and so far – by way of Office's decision by the Board of Appeals and a possibility of
applying the institution of extraordinary procedure.
11. Articles 121 through 123 of the Law on Inventive Activity provides criminal penalties for
certain activities related to patents and patenting. Please provide statistics for 1998 and 1999
regarding actions taken under this section, including the penalties imposed.
D. PROTECTION OF UNDISCLOSED INFORMATION6
12. Please describe in detail the manner in which the Government of Poland implements the
obligations of TRIPS Article 39.3 to ensure that undisclosed and other data submitted to obtain
marketing approval for pharmaceutical and agricultu ral chemical products is protected against
unfair commercial use and is protected against disclosure.
Pursuant to Article 39.3 of the TRIPS Agreement any documentation and data submitted to
the Office for Registration of Pharmaceutical and Medicinal Products for the purposes of obtainingregistration and regulatory approval are kept confidential, they are protected against disclosure and
are not made available to third parties.
                                                     
6 This should be considered a follow-up question to the review of Poland's legislation conducted in
1997 (documents IP/Q3/POL/1 and Add.1).IP/C/W/183
Page 15
The Registration Commission verifies whether a given pharmaceutical or medicinal product
satisfies the requirements of quality, efficiency and safety.
These are common civil courts in Poland, which hear matters involving acts of unfair
competition according to the provisions of the Act of 16 April, 1993 on combating unfair competition.When ruling in such cases, courts are supposed to apply, as from 1 January 2000, the TRIPS
provisions.  The Registration Commission is bound by courts’ judgements in this respect .
F. ENFORCEMENT7
13. Please explain how the Polish civil enforcement regime satisfies the obligation in TRIPS
Article 50 to afford a civil  ex parte search remedy both in the law and as applied in practice. Please
cite to the statutory provision and give examples where such remedy has been afforded in both IP and
non-IP cases. Please cite to the statutory provision and give examples where such remedy has been
afforded in both IP and non-IP cases.
Polish intellectual property law provides for the use of provisional measures in order to
prevent an infringement of intellectual property rights.  General regulations in this respect are
provided in the Code of Civil Law of Procedure.
In order to secure claims a court may issue an interlocutory order on request (Article 730
CCLP) or ex officio  (Article 732(1) CCLP).  In a request for an interlocutory order, a written
statement of grounds is to be submitted (Article 737(1) CCLP).
The court issues an interlocutory order if the claim is found justified and non-application of
the security is likely to deprive the holder of his satisfaction.
Detailed regulations on the application of provisional measures within the meaning of the
TRIPS Agreement are provided for in the following legal acts:
Act on Copyright and Neighbouring Rights – the court may secure a claim at the request of
the party having a legal interest therein.  The applicant is expected to make plausible that failure to
secure the claim may deprive the right holder of his satisfaction.  The court may make the taking of adecision on securing the claim dependent on making an appropriate deposit (Article 80(1)(iii), (2) and
(4));
Act in Trademarks stipulates in Article 20(3) th at in cases involving infringement of rights of
registration the court may order the seizure of goods, packaging and any other objects bearing theregistered trademark or a trademark similar to it, and the seizure of any means used for advertising
and for marking the goods with such signs;
Additionally, in cases involving protection of geographical indications and undisclosed
information, the provisions of the Act on counteracting unfair competition in respect of interlocutoryorders apply.  Article 21(1) of the Act provides that an entity, whose interest has been threatened or
harmed may request issuance of an interlocutory order by the court prohibiting sale or other
transactions involving the goods in issue or dissemination information related thereto (advertising).
The court examines the request for securing the claim immediately.
14. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial designs, patent, layout design of integrated-circuit, and trade secret
enforcement for each of the years 1998 and 1999, in cluding the number of cases filed; injunctions
                                                     
7  These should be considered follow-up questions to the review of Poland's legislation conducted in
1997 (document IP/Q4/POL/1).IP/C/W/183
Page 16
issued; infringing products seized; infringing equipment seized; cases resolved (including settlement);
and the amount of damages awarded.
Polish courts do not deep detailed statistics as requested above.  There are only general data
available on the number of cases and they are the following:
In the field of copyright.
Year Actions
initiatedActions
completedClaims
admittedAmicable
solutionsClaims
refused
1998 183 138 37 11 15
1999 161 164 58 19 24
In the field of industrial property protection:
Year Actions
initiatedActions
completedClaims
admittedAmicable
solutionsClaims
refused
1998 118 145 28 18 35
1999 109 114 28 13 18
15. Please provide statistical information related to criminal enforcement in the area of copyright
piracy and trademark infringement for each of the years 1998 and 1999, including the number of
raids, prosecutions, convictions, and the amount of fines and/or jail terms (including whether the fines
were paid and whether the jail term was actually served or was suspended) and any other information
establishing that the criminal system operates ef fectively to deter copyright piracy and trademark
counterfeiting.
See above.
16. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in Poland, particularly initiatives to criminal enforcement.
In respect of criminal enforcement new initiati ves are undertaken within  the framework of the
new Industrial Property Law.  The proposed provisions in this respect are the following:
Article 317
Anyone who usurps another's authorship or mi sleads another party as to the authorship of
another's person inventive project, shall be liable to a fine, limitation of freedom or imprisonment for
a period of up to two years.
Anyone infringing in any other way, for profit-making purposes, rights of the creator of an
inventive project, shall be liable to a fine, limitation of freedom or imprisonment for a period not
exceeding one year.
Article 318
Any person who, not being entitled to be granted the exclusive right, files another's invention,
utility model, industrial design or topography of an integrated circuit in order to be granted a patent, a
right of protection or a right in registration, shall be liable to a fine, limitation of freedom or
imprisonment for a period of up to two years.IP/C/W/183
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The same penalties shall incur anyone disclosing information on another's invention, utility
model, industrial design or topography of integrated circuit or otherwise preventing another party
from being granted a patent, a right of protection or a right in registration.
If a person bound to keep the obtained information in secret has committed the act referred to
in paragraph 2 unintentionally, he shall be liable to a fine.
Article 319.
Anyone marking goods with a counterfeit trademark for the purpose of placing them on the
market or placing on the market goods bearing such trademark, shall be liable to a fine, limitation of
freedom or imprisonment for a period of up to two years.
A person committing the above acts unintentionally shall be liable to a fine.The perpetrator who has made the offence referred to in paragraph 1 his continuing source of
proceeds or commits that offence in respect of the goods of handsome value shall be liable toimprisonment for a period from six months to five years.
Article 320
In case of conviction for the offence specified in Article 319(3), the court shall decree the
forfeiture, to the benefit of the fiscus, of the goods proceeding from the offence as well as the
materials, tools and technical means, which have served or have been intended to serve for the
purpose of committing the offence;  if such materials, tools or technical means do not belong to the
perpetrator, the court may decree the forfeitu re thereof to the benefit of the fiscus.
In case of conviction for the offence specified in Article 319(1), the court may decree the
forfeiture, to the benefit of the fiscus of the goods proceeding from the offence as well as the
materials, tools and technical means, which have served or have been intended to serve for the
purpose of committing the offence, even if they do not belong to the perpetrator.
In case of decreeing the forfeiture referred to in paragraphs 1 or 2, Article 195 of the
Executive Penal Code shall apply accordingly, the forfeiture of whatever goods has been decreed.
Article 321
Anyone marking goods not protected by a patent, a right of protection for a utility model or a
right in registration for an industrial design, for a topography of an integrated circuit, or for ageographical indication, with statements or signs calculated to give the impression that the goods
enjoy such protection, shall be liable to a fine or detention.
Anyone putting on the market, or preparing or stocking for that purpose the goods referred to
in paragraph 1, or providing by announcements, comm unications or otherwise, information calculated
to give the impression that the goods enjoy legal protection, while being aware of their being falsely
marked, shall be liable to the same penalties.
Article 322
Anyone putting on the market goods bearing a trademark accompanied by a discriminant
which is intended to make a false impression that he goods enjoy such protection, shall be liable to a
fine.
Article 323IP/C/W/183
Page 18
In organizational entities, the liability referred to in Articles:  317(2), 318, 319, 321 and 322
shall incur a person running or managing an entity, unless the division of responsibilities implies the
liability of another person.
Article 324
Prosecution of persons committing the offences referred to in Articles:  317, 318 and 319(1)
and (2) shall be initiated at the injured person's request.
Cases involving the acts referred to in Articles:  321 and 322 shall be decided under the
provisions governing the procedure applied in cases concerning petty offences.
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