On July 1, 2020, the Act* entered into force. In addition to introducing further amendments to the provisions of the Code of Civil Procedure, the legislator added a new section regulating separate proceedings in intellectual property matters, specifically section IVg. This Act also established special courts that deal exclusively with intellectual property matters.

In today's post, let's take a closer look at the special action introduced in Section IVg, which is regulated by Article 479 [129] of the Code of Civil Procedure. This is a type of action for declarations. According to the cited article, a plaintiff may file an action for a declaration that actions undertaken or intended by them do not constitute an infringement of a patent, additional protection right, protection right, or registration right.

The idea behind this regulation is to enable entities to take action to obtain a court ruling stating that the absolute rights of others have not been violated. This provision therefore serves a preventive function. This solution eliminates legal uncertainty as to whether our actions will harm the rights of another person. It also protects the plaintiff from incurring high costs preceding the investment process, which may later prove completely unnecessary, and protects them from potential claims from the person whose rights may have been violated.

The introduction of this institution into the legal system is not new and does not provide a new legal basis for filing a lawsuit. Article 189 of the Code of Civil Procedure already introduced the possibility of filing a lawsuit to establish the existence or non-existence of a specific legal relationship, and invoking this provision requires demonstrating a legal interest, which has often caused problems. Currently, Article 189 of the Code of Civil Procedure applies mutatis mutandis to the regulation provided for in Article 479 [129] of the Code of Civil Procedure, which itself defines a legal interest in §2.

According to the above-mentioned standard, the plaintiff's legal interest exists if:

• the defendant considers the actions to which the claim relates to an infringement of a patent, additional protection right, protection right and registration right, or
• the defendant did not confirm within the time limit duly set by the plaintiff that the activities did not constitute an infringement of a patent, additional protection right, protection right or registration right.

The defendant under the discussed regulation is the entity holding exclusive rights, i.e. the entity that has been granted the exclusive right to use a specific legal asset (e.g. an invention, utility model, trademark).

The determination may relate to activities that are planned for the future, currently underway, or activities that have already been completed.

Article 479 [129] of the Code of Civil Procedure also clarifies what is meant by the term " duly determined time limit ". Pursuant to the Act, a duly determined time limit:

• is in writing,
• it cannot be less than two months from the date of delivery of the letter to the entitled person,
• its content includes:
  • a precise indication of the actions he intends to undertake and which may constitute an infringement of a patent, additional protection right, protection right or registration right,
  • information to what extent a violation may occur,
  • requesting the entitled person to expressly confirm that the actions he intends to take do not constitute an infringement.

It is worth noting that a request for a determination under Article 479 [129] of the Code of Civil Procedure applies to infringement of intellectual property rights, i.e., to establish the absence of infringement of a patent, additional protection right, or protective rights. However, this provision cannot be applied to claims seeking the establishment of other categories of intellectual property rights, such as those arising from copyright law or database rights under the Database Protection Act.

This solution is so new that it is difficult to determine whether it will achieve the intended goals and whether it will become popular enough among entrepreneurs to use it.

This alert is for informational purposes only and does not constitute legal advice.

*ACT of February 13, 2020 amending the Act - Code of Civil Procedure and certain other acts1), Journal of Laws of 2020, item 288, 875, of 2021, item 187

|

|