In a decision of November 2014, the Patent Office of the Republic of Poland refused M. K.’s request to reinstate the deadline for paying the fee for the second, five-year period of protection for her industrial design entitled “Roller blind cassette,” and subsequently, in a decision of June 2015, upheld the previous decision. In the justification for the latter decision, the Patent Office of the Republic of Poland stated that, according to the principle in Article 224(2) of the Polish Patent Act, fees for subsequent periods of protection should be paid in advance, no later than the day on which the previous period of protection expires. Exceptionally, such fees may be paid within six months after the expiration of the aforementioned period, simultaneously with the payment of an additional fee of 30% of the fee due. However, this additional period, under Article 224(4), sentence 2 of the Polish Patent Act, cannot be reinstated. Furthermore, the authority indicated that the original, final deadline for paying the periodic fee for the next – second, five-year – period of protection expired on May 11, 2009. However, taking into account the aforementioned provision, the fee for the next, second period of protection for this design, together with the additional fee of 30% of the fee due, could have n paid by the entitled party within six months, i.e., by November 12, 2009, which, however, did not happen. The entitled party paid this fee together with the additional fee on June 27, 2011, i.e., after the permissible deadline. To support its position that the aforementioned deadline cannot be reinstated regardless of the reasons for the omission, the Patent Office cited judgments of the Voivodeship Administrative Court in Warsaw of November 2, 2011, file reference VI SA/WA 237/06, and of October 31, 2006, file reference VI SA/WA 243/06.
Disagreeing with this decision, M.K. appealed the aforementioned ruling to the Administrative Court in Warsaw, alleging a violation of Article 243, paragraphs 1 and 6 of the Polish Patent Act by failing to apply it due to the existence of extraordinary circumstances in the case and failing to reinstate the requested deadline, as well as Article 12 of the Code of Administrative Procedure by violating the principle of expeditious proceedings – i.e., conducting the proceedings for 3 years. As a result, the appellant requested that both rulings be overturned and the requested deadline be reinstated, or alternatively, that the case be referred to the authority for reconsideration.
In response to the complaint, the Patent Office of the Republic of Poland requested that the complaint be dismissed as unfounded.
The Voivodeship Administrative Court in Warsaw, when considering the case, indicated that the provisions of Article 224, paragraphs 1, 2, and 4 of the Act on Industrial Property Rights (PWP) do not imply that the law allows for the reinstatement of the initial deadline for paying the fee for the period of industrial design protection. Subsequently, the Court stated that, when analyzing the aforementioned provisions, it should be noted that “entities that have not paid the periodic fee within the initial deadline may avoid the consequences associated with the failure to fulfill this obligation (Article 90, paragraph 1, point 3) by paying the fee within the additional deadline. Therefore, the additional deadline for paying the fee, provided for in Article 224, paragraph 4 of the PWP, performs a function similar to the institution of reinstating the initial deadline (see the judgment of the Supreme Administrative Court of April 13, 2007, file reference II GSK 304/06, the judgment of the Supreme Administrative Court of April 5, 201, in case file reference II GSK 405/10, Lex No. 992380).” Consequently, it was necessary to agree with the arguments of the Patent Office of the Republic of Poland.
Furthermore, in such a situation, the only legal remedy that allows the entitled party to avoid the negative consequences of missing the deadline for paying the annual fees for protection is – in accordance with Article 243, paragraph 6 of the PWP – to invoke circumstances of an extraordinary nature, in which meeting the deadline became impossible. However, in this context, the authority expressed its opinion in the content of the appealed decision, stating that the issue of suspending the deadline for paying the fees for the second period of industrial design protection due to extraordinary circumstances will be considered by the Patent Office of the Republic of Poland in a separate proceeding. In turn, the allegation of a violation of Article 12 of the Code of Administrative Procedure has no impact on the merits of the present case.
In this state of affairs, the Voivodeship Administrative Court in Warsaw, in its judgment of December 8, 2015 (VI SA/Wa 1998/15), dismissed the complaint in its entirety.
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