In view of the multitude of exclusive rights granted by patent offices around the world, the question arises more and more often whether the use of some of such rights against competitors cannot be treated as an abuse of law – if we look at the essence of monopoly. This question does not only apply to patents, but also to trademarks or industrial designs.
A positive answer to such a question in specific circumstances may determine the victory or loss of the owner of a given right in a court case. If the court finds that invoking a given right against another entrepreneur in a specific case is not justified – they will dismiss the claim. Such a situation does not mean that the patent ceases to be an exclusive right effective erga omnes, but only that in a given situation the court found that the exercise of the right (for various reasons) does not deserve protection.
How to understand the use of a given right against another entrepreneur?
Well, it is essentially a situation in which, for example, entrepreneur X holds a patent and demands that entrepreneur Y cease (most often) the production or sale of a certain product, because this product has certain characteristics that have been reserved by a patent reserved for X. Thus, X claims the right to be the only one (within the territory of patent protection) who can sell such products and derive profits from it. To put it simply: the lack of consent of company X granted to Y to use the invention that Y used in its product means that we are (as a rule) dealing with an unlawful act.
The essence of patent protection
The essence of the patent protection system is to grant the exclusive right to use
the invention (analogously – any other right), and thus to enable the holder to benefit from a temporary monopoly. This happens in exchange for the fact that the patent decided to disclose his invention in the patent description, and he did not have to – because he could have kept this knowledge as his know-how, but then he would not have received the patent. Something for something. Such an invention (if it passes the research procedure) will therefore obtain a patent for a maximum of 20 years (as a rule), and after this period, it will become a “public good”, available to anyone interested.
We are dealing with a slightly different situation in the case of registration of trademarks or industrial designs, because everyone can see what a mark or industrial design is. There is no question of any compromise or dilemmas such as – to reveal or not to disclose. Therefore, the easiest way to illustrate the institution of abuse of law is to use the example of patents.
The idea of patent law is to stimulate innovation, taking into account the values that this innovation is supposed to serve, BUT – the reality shows that we are not always dealing with a solution that:
- it actually deserves such protection – in such a case, we have an instrument at our disposal in the form of annulment proceedings;
- Although it is protected by a properly granted law, it should not always enjoy material protection.
Let’s focus on case b) – although case a) is also a graceful topic for deeper reflection, but there is no room for it here.
The essence of abuse of law – what do the regulations say?
In Polish law, there is a principle according to which “one may not make use of one’s right in a way that would be contrary to the socio-economic purpose of this right or to the principles of social coexistence” (Article 5 of the Civil Code). What does that mean? Well, it is the court that assesses, on the basis of the knowledge available to it, whether in the case in which it has to adjudicate, the plaintiff’s claims really deserve protection. Otherwise, the court may find that the plaintiff acted in violation of the principles of social coexistence and dismiss the claim. The court adjudicates in accordance with the principles of logic and life experience, assessing a given case after a comprehensive consideration of all relevant circumstances (facts), supported by evidence presented by the parties throughout the trial. This is where the power of judgment and wise (courageous) decision lies.
Taking into account the existing regulations, as well as having learned from experience, we are of the opinion that Polish courts have full competence to recognize that there are situations in which demanding protection by entrepreneurs against (allegedly) illegal activities is not an action within the limits of the law. Any situation of this kind should be assessed with a great deal of caution. This is because the justification of the claims indicated by the plaintiffs in the statement of claim (often more than 50 pages of a document) does not always correspond to the strength of the arguments.
The truth is that the demands of owners of industrial property rights often focus on the fact that since their rights are “absolute” and the legislator has given them this right, they can eliminate everyone and everything that appears on their “radar” from the market. However, this should not be the case. Each situation is different and should be evaluated.
How can we assess whether we are dealing with an abuse of law?
Explaining the essence of patent abuse, it is indicated that it is such conduct that does not serve the exercise of the right, and in the given circumstances causes effects contrary to the socio-economic purpose of such a right. It sounds quite complicated, but in fact it is often about assessing whether, despite the fact that a given right formally exists, the defendant has the right to defend himself against its use against him. It happens (and not rarely) that the protected solution was not (on the date of filing) new, did not have an individual character, or did not deserve protection for other reasons.
A gross case of abuse of law is acting in bad faith. This is most often seen in the case of exercising the right to a trademark that has been applied for protection by one of the former partners of the company, because the provisions of the articles of association did not regulate this important issue.
It also happens that a given mark is a descriptive mark, and the plaintiff tries to prohibit, for example, the sale of a product marked with such a mark, even though other entrepreneurs have the right to use such a mark. This is particularly evident in the case of trademarks, which, for example, only inform about the features, properties or purpose of the goods. Such signs do not identify any specific entrepreneur, so they do not perform the basic function of a trademark.
In the case of a patent, on the other hand, abuse may occur when actions are taken to unjustifiably extend the temporal or objective scope of the patent, i.e. beyond a justified and reasonable need, mainly to block competing products from entering the market.
New possibilities – assessment of the likelihood of invalidation of the law
Finally, it is worth mentioning that the Polish legislator has noted the large disproportion of the parties in court disputes and the potentially significant ailments of the defendants in the situation where the court grants security for the plaintiffs’ claims for the duration of the trial.
This is a situation in which the owner of a given right uses the largest “sections” to initiate proceedings for securing claims, often before filing a lawsuit, hoping that the court will order, for example, the seizure of products in which such an entitled person perceives infringements. This often happens also without hearing the other party – the defendant. Such security can exclude from trading to a certain extent an entrepreneur (who has been charged with violating the law) for years! It varies – sometimes such a security is used to stop clearly illegal activity and stop the extent of the damage, but sometimes it is simply a market game, often the result of an abuse of the law.
The regulations in force since 2023 require the court, when analyzing an application for interim relief of the entitled person’s claims, to consider the likelihood of invalidation of an exclusive right initiated in another proceeding as part of the assessment of whether the claim has been substantiated. Therefore, in the case where the company against which such an application has been filed defends itself by commencing proceedings for invalidation of a given right before the Polish Patent Office (or other authority), the court is obliged to examine and determine whether there is a likelihood of invalidation of the right in question, and if it assesses such probability as high – it should dismiss the application for interim relief, indicating the lack of legal interest of the person entitled to obtain the injunction. It is a very powerful instrument and very demanding for the judge, who does not always have full knowledge of (in particular) the “power” of the invention for which a patent has been granted. However, this is an expression of care to maintain the balance of the two parties in the process so that there is no abuse of rights just because the plaintiff theoretically has the right to do so.
Our constant appeal to the courts, which often face challenges in difficult patent cases – for reason and courage above all else!
Author: Helena Gajek
