The entitled party, R.Z., did not uphold the opposition, stating that the cited patent application could not challenge the novelty of the disputed industrial design, as it was made public in April 2013, i.e., 6 months after the filing of the disputed design. Additionally, the lid does not correspond to the cap according to the cited application. The entitled party also pointed out that H.B. did not demonstrate that the item indicated in the cited patent application, which differs from the disputed design, was exhibited at the trade fair.
In a decision from August 2014, the Patent Office of the Republic of Poland dismissed the opposition. The justification stated that the authority did not address the issue of extending the opposition to include Article 117(2) of the Patent Act (infringement of property or personal rights), as extending the opposition during the proceedings is not permitted. Furthermore, the authority stated that the disputed design met the novelty requirement, even if it were acknowledged that the solution subject to the patent application “Set of two protective caps for cans” was made public in Warsaw in September 2012, due to the fact that the differences between the cited prior art are significant enough that they cannot be considered immaterial, as these features distinguish the compared solutions from the prior art, which means that the disputed industrial design cannot be considered identical to the publicly available cited design
Disagreeing with the aforementioned decision, H.B. appealed it to the Voivodeship Administrative Court in Warsaw, requesting its annulment as being inconsistent with the law and the evidence gathered, with the aim of having the case reconsidered. The basis of the appeal were the provisions of the Code of Administrative Procedure (KPA) in conjunction with the provisions of the Act on Industrial Property (PWP), and the violation included the failure to thoroughly clarify the factual circumstances of the case, the failure to consider and examine the evidence presented by the party raising the objection, which consequently led to the issuance of a flawed decision based on the erroneous finding that the disputed industrial design was novel.
In response to the appeal, the Patent Office of the Republic of Poland requested that it be dismissed, citing the arguments presented in the appealed decision.
The Regional Administrative Court in Warsaw, in examining the case, stated that the authority correctly did not address the extended grounds for objection contained in the letter submitted after the objection, as the Act on Industrial Property Rights does not provide for such a possibility. Citing the position of the Supreme Administrative Court, the court indicated that “extending the scope of the objection in the contentious proceedings initiated by its submission directly leads to exceeding (circumventing) the deadline for submitting a reasoned objection and deprives the entitled party of the opportunity to respond to the objection before the case is referred to contentious proceedings. Therefore, indicating new legal grounds for the objection during the contentious proceedings is inadmissible, and the new grounds for objection are not subject to consideration by the Patent Office, as was the case in this matter (judgment of the Supreme Administrative Court of June 11, 2014, case file no. II GSK 592/13).” Furthermore, the Regional Administrative Court indicated that the objection could be justified if a comparative analysis of the two opposing solutions showed that they were identical. However, the Patent Office of the Republic of Poland correctly assessed that the disputed industrial design differs from the subject of the patent application indicated by the appellant.
In light of the above, the Regional Administrative Court in Warsaw, in its judgment of March 11, 2015 (VI SA/Wa 3830/14), dismissed the complaint.
Fill out the form and we will get back to you within the next … with a preliminary quote.
