Poland – Guide to Preliminary Injunctions in Patent Litigation

Introduction

Preliminary injunction procedure in patent cases has seen significant changes in Poland in recent years. On 1 July 2020 the dedicated intellectual property departments were created within five Regional Courts across Poland (Warsaw, Gdańsk, Poznań, Katowice, Lublin). The most prominent role was given to the IP department of the Regional Court in Warsaw, tasked with handling the most complex technical disputes, including all patent and Supplementary Protection Certificate (SPC) related cases. The primary goal of the IP courts was to increase technical expertise and specialization among the judges, and this has been gradually achieved since the introduction. On 1 July 2023 three further changes were made to the preliminary injunction procedure itself, concerning the review process and urgency (discussed in detail below).

The law of preliminary injunctions is generally in a good place for patentees and SPC holders in Poland, especially with the increasing specialization of the judges and deeper understanding of the patent cases. The changes introduced in 2023 made the proceedings more complex, but a preliminary injunction may be still secured effectively, especially if the validity of the relevant patent is not challenged in any pending proceedings.

 

Triggers for seeking a preliminary injunction in Patent/SPC matters

A product launch confirmed by a test purchase, or indications of imminent launch (specifically entry of the product onto the reimbursement list) are the most typical triggers for seeking a preliminary injunction in Poland. Similar to many European countries, the Polish courts universally agree that obtaining marketing authorization for a product is by itself not a sufficient indication.

It has always been necessary for a patentee to act quickly when seeking a preliminary injunction in Poland. A delay in submitting the request could negatively impact the chances of success based on the assumption that if a patentee itself did not seek a preliminary injunction promptly, then there was no urgency and need for immediate protection. This was formalized in 2023 and since then the patentee must submit the request for a preliminary injunction within six months of finding out about an infringement – otherwise the request is automatically refused.

 

Criteria for obtaining a preliminary injunction

There are two primary criteria that must be satisfied in order to obtain a preliminary injunction:

• Likelihood of infringement – the patentee must demonstrate with high probability that infringement has occurred (this is a lower threshold than in the main proceedings).
• Legal interest – an injunction must be necessary to prevent irreversible harm to the patentee (eg loss of the market share).

On 1 July 2023 three significant changes were introduced to preliminary injunction proceedings. First, preliminary injunction requests are now generally reviewed inter partes, although ex parte review is still attainable, if there is a justified need to review the request immediately (it is not specified when such a need occurs – this is assessed by the court ad casum) or where the request is aimed solely at seizure of the infringing goods. Second, the patentee must inform the court of any pending invalidity actions involving the relevant patent. If there are any, the court assesses the risk that the patent will be invalidated, which in turn may influence its view on the likelihood of infringement. Third, the patentee must submit a request for preliminary injunction within six months of finding about an infringement. These changes sparked controversy and are periodically under review.

Preliminary injunction decisions typically prohibit offering and marketing of the infringing products and may additionally authorize their seizure for the duration of the proceedings on merits. Seizures are carried out with the assistance of a bailiff. When deciding on the scope and method of injunction, the court strives to maintain the balance and secure the patentee’s interest, while not imposing an excessive burden upon the defendant.

A preliminary injunction may be sought before or during the main action proceedings, but the former is a standard in the patent cases. The court then sets a deadline to initiate the main action case, which is no longer than two weeks – otherwise the preliminary injunction automatically lapses.

 

Is a bond or cross-undertaking payable when filing a preliminary injunction application?

The patentee does not provide a bond or cross-undertaking when filing a preliminary injunction application. The court may issue a preliminary injunction with reservation that its enforceability will depend on payment of a specified deposit by the patentee, but currently this is not a common practice.

If the patentee’s claims are dismissed in proceedings on merits and the defendant suffered damages due to a preliminary injunction, the standard route for the defendant is to seek compensation in the separate proceedings. The defendant’s claim for damages expires if it is not pursued within one year.

 

Right to Appeal

Decisions on preliminary injunctions in patent cases may be appealed to the Court of Appeal in Warsaw. Once the decision is delivered, the appealing party must firstly submit a request for a written justification within seven days. Once a written justification is delivered, the appealing party has another seven days to submit an appeal against the decision. Appeals may be made on both factual and legal grounds. Submitting an appeal does not suspend enforceability of the decision, unless the court decides otherwise (but this is currently not a common practice).

Regardless of the appeal, the decision on preliminary injunction may also be modified or revoked at any time during the main proceedings (upon the defendant’s request), if the circumstances justifying the injunction have changed or no longer exist.

 

Recent Decisions/Developments

The recent decisions of the Regional Court in Warsaw strive to create a cohesive practice around the changes introduced in 2023, specifically how to approach assessment of likelihood that the relevant patent may be invalidated.

However, discrepancies are still evident – specifically, some judges consider that the risk can be scaled from 0 to 100% and that this is calculated by weighing and adding different risk factors – if the calculation adds up to more than 50%, then the risk is considered too high to grant a preliminary injunction (this approach is seen in the decision of 4 June 2024, XXII GWo 225/24). At the same time, other judges consider that the risk should be assessed on 0-1 basis – that it either exists, or not (this approach is seen in the decisions of 15 July 2024, XXII GWo 228/24 and the decision of 14 September 2023, XXII GWo 313/23).

The risk factors that are typically considered by the Regional Court in Warsaw are specifically:

• the number of pending invalidity proceedings (in the decision of 15 July 2024, XXII GWo 228/24, the court indicated that the risk assessment was influenced by the fact that “there are eight invalidity proceedings before the Polish Patent Office concerning the relevant patent, the oldest of which was initiated in 2022 – all proceedings are pending, four of which are at an advanced stage of the proceedings”);
• the territorial scope of the dispute – in the aforementioned decision XXII GWo 228/24, the court indicated as a risk factor the multitude of jurisdictions in which the dispute over the validity of the patent is pending: "in the present case, B. has been in dispute with generic drug manufacturers for a long time – not only in numerous EU countries, but also in countries not bound by the EPC";
• the invalidity decisions issued in other jurisdictions (and upholding such decisions in appeal proceedings) – this was indicated as a risk factor in the decision of 4 June 2024, XXII GWo 225/24 (in particular, the court invoked the invalidity decision of the Patents Court and the UK Court of Appeal’s judgment upholding that decision; similar approach is seen in the decision of 14 September 2023, XXII GWo 313/23).

 

Takeaways

Preliminary injunctions remain a flexible and effective remedy in Poland, tailored to provide immediate protection against the infringements. A key takeaway from the recent decisions of the Regional Court in Warsaw is that the court is still learning how to cohesively approach the risk assessment for patent invalidation. Cases where there are numerous pending invalidity actions against the relevant patent require a specific approach to convince the court that the patentee’s interests outweigh the risk of potential invalidation.

For further details about patent law in Poland, see our Patent Litigation Comparator Guide.