Poland Pologne Polen. Report Q193. in the name of the Polish Group by Agnieszka JAKOBSCHE and Katarzyna KARCZ

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1 Poland Pologne Polen Report Q193 in the name of the Polish Group by Agnieszka JAKOBSCHE and Katarzyna KARCZ Divisional, Continuation and Continuation in Part Patent Applications Questions I) Analysis of the current law 1) Are divisional, continuation or continuation in part applications, respectively, available under your national or regional law? Under the Polish national law the divisional applications are available. Continuation and continuation in part applications are not available. [Art.39(1)(2) of the Industrial Property Law of June 30, 2000]. 2) What is the justification behind allowing the filing of divisional, continuation and continuation in part applications in your law? The divisional applications are meant to enable prosecution of all the subject matter included in the parent application in the case where the parent application encompasses more than one invention. It is also a way to speed up the prosecution of a part of the application in the case when another part of it causes problems during the prosecution. 3) Under what circumstances and conditions may divisional, continuation and continuation in part applications (or combinations thereof) be filed in your national or regional patent system? A divisional application may be filed: either on the invitation of the Patent Office, in case when the original application does not meet the unity of invention requirement, or voluntarily, i.e. without the invitation of the Patent Office, even when the original application meets the unity requirement. the divisional application cannot include the subject matter that was not included in the parent application. The divisional applications shall be deemed to have been filed on the filing date of the original application. [Art.39(1)(2) of the Industrial Property Law of June 30, 2000]. 4) Are cascades of divisional, continuation and continuation in part applications allowed, i.e. is it possible to file a divisional, continuation or continuation in part application on the basis of another divisional, continuation or continuation in part application? Cascades of divisional applications are allowed. 1

2 5) At what time during the prosecution of the parent application may divisional, continuation or continuation in part applications be filed? In case when the Patent Office states that the application does not meet the unity of invention requirement, the applicant is invited to file a divisional application(s). Failure to file the divisional application within the fixed time limit shall result in recognizing the original application as relating to the invention first mentioned in claims, other inventions being considered to have been withdrawn. [Art.42(2) of the Industrial Property Law]. In case of voluntary filing of a divisional application, it may be filed until the decision on the grant (or refuse) of a patent has been taken. [Art.37 (1) of the Industrial Property Law]. 6) Is it a requirement for filing an application that is a divisional, continuation or continuation in part of an original application (or of another divisional, continuation or continuation in part thereof) that the original application (or the direct parent application, or both) is still pending at the time of filing of the divisional, continuation or continuation in part application? The requirement for filing a divisional application is that the direct parent application is still pending. In case of a sequence of more than two applications (parent and more than one divisional), the original application does not have to be pending at the date of filing the second and next divisionals. 7) Is it a requirement that the original application (or the direct parent application, or both) is still pending throughout the prosecution of a divisional, continuation or continuation in part application derived therefrom? No, the requirement concerns only the filing of a divisional application, and not its whole prosecution. 8) Are there any restrictions as to what may be included in a divisional, continuation or continuation in part application? There is one general restriction that the divisional application cannot extend the subject matter of the application as filed. [Art.37(1) of the Industrial Property Law]. Notwithstanding the Art.37(2) saying that: the alteration of patent claims resulting in the extension of the scope of protection originally sought may only be made until the time of publication of the application and is subject to Art.37(1), it is not completely clear, and has not yet been confirmed by the practice (the present Industrial Property Law being comparatively new), whether it is possible to broaden the scope of protection (beyond the one of the parent application) in a divisional application. 9) In particular, may the description and/or claims contain or claim matter that was not contained or claimed in the original application, or other application from which the divisional, continuation or continuation in part application derives? No. (see also art.37(1) and (2), mentioned above. 10) Is it possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter, to the extent the addition of new matter is allowed? 2

3 The divisional application is deemed to have been filed on the filing date of the original application only if it contains no added matter which extend the original scope and disclosure. Consequently, the patent term of the divisional is the same as in the parent application. If the divisional application contains added matter, the original filing date is not granted. In such case the question of prior original publication may sometimes arise. 11) Is double patenting permitted or must the matter claimed in divisional, continuation or continuation in part applications be deleted from the claims of the original application, or other application from which the divisional, continuation or continuation in part application derives? The matter claimed in divisional applications must be deleted from the claims of the original application. 12) Does it matter in this respect whether the divisional, continuation or continuation in part application was filed in response to a restriction requirement issued by the patent granting authority? No, the requirements are identical in both cases either the divisional was filed in response to a restriction requirement or without such requirement. II) Proposals for adoption of uniform rules 1) In the opinion of your National or Regional Group, what are the advantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? From the applicant s point of view there is a lot of advantages of all the above types of continuation applications: in the case of a divisional application the applicant may have the claims which were divided out of the original application because of a restriction requirement, further prosecuted. It may also be a useful way of postponing the term to pay the fees for the additional inventions comprised originally in the parent application. Another advantage is that a part of the parent application may be issued as a patent, while another part of it, that is more difficult to be granted a patent, may be further prosecuted; in the case of continuation or continuation in part patent applications, the applicant may add claims if it is later discovered that a potentially patentable invention was not claimed in the original application, a patent may be quickly issued for an embodiment of the invention (narrower scope), while the broader scope is further prosecuted, the parent application may be kept pending for years in order to block the competitors, new examples may be added to support originally filed claims that were not supported in the parent applications. From the third parties point of view, the divisional patents may be easier to prosecute in the opposition and invalidation procedures. 2) In the opinion of your National or Regional Group, what are the disadvantages, for applicants and third parties, of allowing the filing of divisional, continuation or continuation in part patent applications? From the third parties point of view however, all the advantages indicated above may be regarded as disadvantages. Moreover, considering that in many databases and paper documents no clear link is indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom, the state of a specific invention (application) is hard to define and confusing for the third parties. 3

4 3) In the opinion of your National or Regional Group, should the filing of divisional, continuation or continuation in part patent applications, respectively, be permissible? The divisional applications are well established in the Polish law and are definitely necessary in the situation where there is also a unity of invention requirement. The only problem in the Polish practice is, as mentioned above, the lack of clear link between the parent applications and the divisionals. It seems that continuation and continuation in part application would be a useful tool for the applicants but only provided that: the possible number of continuations of one original application is limited to avoid abusing of the patent system and discriminating the third parties by the applicatns; the clear link is always indicated on paper documents and in the databases between original patent applications and all divisional, continuation or continuation in part applications derived therefrom. 4) If international harmonisation were to be achieved in respect of the rules governing divisional or continuation patent applications, what should be the common rules in respect of the circumstances and conditions in which divisional, continuation or continuation in part applications may be filed? requirements concerning the permissible contents of a divisional, a continuation and a continuation in part application; requirements with regard to filing the divisionals/continuations while the parent is pending or not; limitation of the number of continuation and continuation in part applications derived from one parent application; common rules ensuring publication of the information concerning the divisional, continuation and a continuation in part applications. 5) In particular, should a harmonised system permit the addition in a divisional, continuation or continuation in part application of matter that was not contained in the original application as filed? Not in a divisional and continuation, only in continuation in part applications and under specific conditions concerning the filing date and patent term to avoid the abuse of the patent system that might be discriminating to third parties. 6) Should it be permitted to use a divisional, continuation or continuation in part patent application to obtain new examination and decision of an application that contains claims that are identical or essentially identical with claims finally rejected in the course of the prosecution of the parent application? Should there be an exception where case law on the substantive conditions for patent grant of the patent granting authority has changed since the parent application was rejected? Would this possibility adequately take into account the interests of third parties in legal certainty? No, because it would result in a growing legal uncertainty and would also increase the backlog of patent granting authorities, which would in turn prolong the waiting time of all the applications to be examined; No, see above; This possibility would be very harmful to the interests of third parties and to the legal certainty. 4

5 7) Should it be possible to extend the patent term in respect of matter contained in the original application by filing divisional, continuation or continuation in part applications, including divisional, continuation or continuation in part applications containing added matter? No, because it would be a way around the basic rule of the patent system, being the limited term of the patent monopoly. 8) In the opinion of your Group, would it be justified to limit the access to filing divisional, continuation or continuation in part applications primarily with the object of limiting the backlog of patent granting authorities? Limiting the backlog of patent granting authorities is one of the important reasons, because it influences the waiting time of all the applications to be examined. However this problem may be easily overcome by increasing the number of patent staff in the patent granting authorities and hence it should not be the only reason. 9) In the opinion of your Group, would it be desirable, in the interest of legal certainty of third parties, if databases of patent granting authorities ensured that a clear link was always indicated between original patent applications and all divisional, continuation or continuation in part applications derived therefrom? Yes, see also items 3 and 4. National and Regional Groups are invited to make any additional comment concerning divisional, continuation and continuation in part applications which they find relevant. Summary In Poland only divisional applications are available. If international harmonized rules governing divisional or continuation patent applications were to be achieved, they should take into account both the interests of the applicants and third parties. In particular, the common rules should limit the number of continuation applications derived from one parent application and should ensure that the information concerning the divisional and continuation applications as well as the link therebetween is readily available. Allowing the added matter that was not contained in the original application to benefit of the parent application s priority date in a continuation application does not seem appropriate. The same applies to extending the patent term in respect of the matter contained in the original application by filing divisionals or continuations as it would be a way around the basic rule of the patent system, being the limited term of the patent monopoly. Résumé En Pologne, seulement les demandes de division sont autorisées par le loi. Si les règles intrnationales harmonisées régissant les demandes de division et de continuation, devaient être atteintes, elles devraient prendre en compte aussi les intérêts des demandeurs que des tiers. En particulier, les règles communes devraient limiter la quantié des demandes de continuation derivées d une demande originelle et assurer que l information en égard aux demandes de division et de continuation aussi qu au lien entre eux soit toujours accessible au public. Il ne semble pas propre d accorder la date de priorité originale à une demande de continuation contenant la matière qui n était pas contenue dans la demande originale. 5

6 La même opinion se rapporte à l extension de la durée de vie du brevet en ce qui concerne la matière contenue dans la demande originelle, par dépôt des demandes de division et de continuation. Ce serait une voie de transgresser la règle fondamentalle du système des brevets, à savoir la durée limitée du monopole de brevet. Zusammenfassung In Polen besteht nur die Möglichkeit von Teilanmeldungen. Wenn bezüglich der Regeln für Teilanmeldungen von Patenten sowie Patentanmeldungen in Form der Continuation Anmeldung eine internationale Harmonisierung erreicht werden sollte, dann sollten bezüglich der Umstände und Bedingungen sowohl die Interessen der Anmelder als auch Dritter berücksichtigt werden. Insbesondere sollen die allgemeinen Regeln die Zahl der von einer Stammanmeldung abgeleiteten Patentanmeldungen in Form der Continuation Anmeldung einschränken und sie sollen es sicherstellen, dass sowohl die Information über Teilanmeldungen von Patenten sowie über Patentanmeldungen in Form der Continuation Anmeldung als auch über eine dazwischen bestehende Verbindung einfach erreichbar ist. Die Zulassung, dass in der Patentanmeldung in Form der Continuation Anmeldung für den hinzugefügten Gegenstand, der in der ursprünglichen Anmeldung nicht enthalten war, ein Gebrauch vom Prioritätsdatum der Stammanmeldung gemacht wird, scheint nicht richtig zu sein. Das Gleiche betrifft die Verlängerung der Patentlaufzeit bezüglich des in der ursprünglichen Anmeldung enthaltenen Gegenstandes durch Einreichung von Teilanmeldungen von Patenten sowie Patentanmeldungen in Form der Continuation Anmeldung, da dies die Umgehung der grundsätzlichen Regel bedeuten würde, welche die Begrenzung der Dauer des Patentmonopols darstellt. 6