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22 December 2014
The patentability of computer software-related inventions has been the subject of lively debate in Europe for over 40 years. The European Union's attempt to clarify and harmonise standards of patent protection of such inventions failed, among other reasons, following strong resistance from Poland. Polish patent law does not expressly exclude computer-implemented inventions from patentability. However, the Polish Patent Office (PPO) has adopted a strict stance that computer-implemented inventions are not patentable. The PPO's approach differs from that of the European Patent Organisation (EPO), which acknowledges the patentability of computer-implemented inventions.
Poland has been a member of the EPO since 2004 and ratified the patentability requirements formulated in the European Patent Convention (EPC). Under Polish law, patents are granted for inventions regardless of the field of technology. In order to be patentable, an invention must:
Therefore, patentability criteria under Polish law are the same as those under Article 52 (1) of the EPC. Polish patent law does not provide a legal definition of an 'invention' or of the technical character of the invention.
EPO practice on the patenting of software-related inventions has evolved. Under the European patent system, the applicant may obtain patent protection for so-called 'computer-implemented inventions'. Contrary to EPO practice, the PPO has long refused to validate inventions related to digital electronics approved by the EPO. In particular, the PPO used to argue that computer-implemented inventions had no technical character and therefore were not patentable. The PPO acknowledges that an invention has a technical character if it modifies physical matter (ie, it has a technical effect on that matter). This interpretation differs from EPO practice. According to the case law of the EPO Boards of Appeal, technical character can lie in:
The Polish courts have generally upheld PPO decisions refusing to validate European patents on software-related inventions in Poland. However, recent Supreme Administrative Court rulings in patent cases have departed from the PPO's usual approach in determining the technical character of inventions related to digital electronics.
In its judgment of March 19 2012, the court ruled as follows.
This reasoning was repeated in the court's two next judgments on this subject.(3) The court supplemented its previous conclusions with the following arguments.
Recent patent cases provide important guidelines to follow with respect to the assessment of the technical character of an invention. The Supreme Administrative Court has focused its attention on the contradiction between the decisions of the EPO granting patents to computer-implemented inventions and the PPO's invalidation practice. However, Poland is not a case law country and Polish courts are not bound by previous court decisions. It will be worth watching carefully whether the PPO follows Supreme Administrative Court judgments in its future practice.
For further information on this topic please contact Szymon Gogulski or Agnieszka Sztoldman at Soltysiński Kawecki & Szlęzak by telephone (+48 22 608 7000), fax (+48 22 608 7070) or email (firstname.lastname@example.org or email@example.com). The Sołtysiński Kawecki & Szlęzak website can be accessed at www.skslegal.pl.
(1) See Vicom (T-208/84), July 15 1986; Koch and Sterzel (T-26/86), May 21 1987; IBM (T-1351/04), March 16 1989; Computer program product/IBM (T-1173/97), July 1 1998; Fujitsu Limited (T-1351/04), April 18 2007.
(4) Guidelines for Examination in the European Patent Office: www.epo.org.
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