The 10 May 2017 draft act of the Ministry of Science and Higher Education, amending certain acts in order to improve the legal environment for innovative activities, provided for the introduction of changes in the scope within which authors can be represented before the Polish Patent Office (PPO). The draft stipulated that, in cases related to submitting and considering applications and maintaining protection over inventions, medicinal products, plant protection products, utility designs, industrial designs, geographic signs and integrated circuit topography, attorneys in Poland (adwokat and radca prawny, hereinafter “advocate” and “legal advisor”) would also be able to represent the parties involved – previously, in such cases only patent attorneys or persons providing cross-border services in the meaning of the Act on Patent Attorneys of 11 April 2001 had been able to represent parties.

With this change, by way of the 5 August 2015 revisions to the law, in Article 236 par. 1 of the Industrial Property Law Act (IPL), advocates and legal advisors would enjoy the right to appear in cases relating to submitting and considering applications and maintaining protection over trademarks. Previously, advocates and legal advisors could appear before the PPO only in dispute proceedings, that is, those concerning the invalidation of a trademark protection right.

The rationale for the proposed change was the limited number of professional attorneys who deal with industrial property rights in Poland, given the relatively small number of patent and trademark attorneys. The authors of the draft pointed out that this poses a barrier to submitting and maintaining protection of such rights.

Opposition to the proposed changes was voiced by patent attorneys and by the PPO, both of which anticipated that the adoption of the act proposed in the draft of 9 May 2017 would have adverse consequences. In remarks to the draft, they argued that patent attorneys provide technical as well as legal assistance and that the nature of the services the proposed changes concern would mean that advocates and legal advisors would not be properly prepared to ensure that applicants are protected. The National Council of Patent Attorneys stated that the idea of insufficient access to professional assistance by patent attorneys was unfounded.

The PPO confirmed the justifiability of authorizing advocates and legal advisors to act in cases of trademark submissions as non-technical services, but objected to the concept of expanding such authorization to include other subjects of industrial property law. Summarizing the PPO’s remarks, the current regulations and authorizations of advocates and legal counsellors resulting from the IPL were deemed sufficient.

On 1 August 2017, an updated draft was presented that did not contain the extension of authorization that was contained in the draft from May. In the justification to the current draft, there is no mention of the reasons for which the controversial changes were removed. And so, it seems that the arguments raised by those against expanding the catalogue of authorizations of advocates and legal advisors in relation to submission procedures found support with the legislator, with the result that those amendments were removed from the draft.

By Michał Ziółkowski

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