In March 2013, the Patent Office of the Republic of Poland dismissed the proceedings in this case. According to the authority, the appellant company does not have a legal interest in seeking the invalidation of the contested design registration, as it is also the owner of the registration of its own industrial design. There is no provision that would allow the owner to derive a legal interest in requesting the invalidation of its own right. The cited circumstances only justify the existence of a factual interest, but not a legal one. Referring to Article 6 of the Act on Freedom of Economic Activity, the authority indicated that the appellant did not demonstrate a connection between this provision and its legal and material situation. The contested right restricts the freedom of economic activity, but of other entities, not the appellant company.
Disagreeing with this decision, F. sp. z o.o. filed a request for reconsideration of the case, indicating a violation of Article 22(1) and (2) of the Act on the Protection of Industrial Property and describing the actions of J.M., who filed a request with the court to initiate mediation proceedings, which constitutes a source of the company’s legal interest.
In a decision issued in December 2013, the Patent Office of Poland upheld its previous decision, largely maintaining the position taken in the previous decision, namely that the company, as the entitled party, is also the appellant, which confirms the lack of legal standing.
The company again disagreed with the arguments of the authority and, as a result, appealed the latest decision of the Patent Office of Poland, alleging that it violated substantive law by misinterpreting and improperly applying the relevant provisions, as well as procedural law by issuing a decision based on a wrongly established, incomplete, and incorrectly assessed state of facts.
The Voivodeship Administrative Court in Warsaw, in examining the case, did not agree with the arguments presented in the decision of the Patent Office of the Republic of Poland, which stated that the appellant did not have a legal interest in the proceedings concerning the application for the invalidation of the disputed industrial design. In this case, the authority incorrectly applied the provisions of Article 105 § 1 of the Code of Administrative Procedure (KPA) in conjunction with Article 252 of the Act on Industrial Property (PWP). The Court referred to another, very similar case, in which the Supreme Administrative Court ruled in its judgment of October 30, 2013 (II GSK 904/12). According to the Court, in that case, the patent holder is entitled to file an application for the invalidation of their own patent. The Supreme Administrative Court considered the statement that there was no legal basis for the appellant, as the patent holder, to have a legal interest in requesting the invalidation of their patent, to be unfounded, which is of significant importance for the present case due to its relevant application. In ruling on the present case, the Voivodeship Administrative Court stated that “in the present case, the Patent Office therefore incorrectly concluded that the holder of the industrial design registration does not have a legal interest in filing an application for the invalidation of the industrial design under Article 117 in conjunction with Article 89(1) of the Act on Industrial Property. In other words, the premise that the appellant is obliged to pay remuneration to the creator of the design, who, according to the appellant, developed an employee-created invention, was also incorrectly assessed.” According to the Court, the very fact of paying remuneration, which in turn is conditional on the existence of the right arising from the registration, confirms the existence of a legal interest in seeking the invalidation of the right arising from the registration (this is confirmed by the Supreme Administrative Court in its judgment of March 28, 2012, case file number II GSK 321/11). Consequently, the Court found that the holder of the industrial design (patent) is entitled to file an application for the invalidation of their own right.
In light of the above, the Voivodeship Administrative Court in Warsaw, in its judgment of September 18, 2014 (VI SA/Wa 722/14), overturned both decisions of the Patent Office of the Republic of Poland and ruled that they are not subject to enforcement.
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