SPECIALIZED IP COURTS – does the IT industry need them?
A few months ago, separate proceedings regarding Intellectual Property cases were introduced into the Code of Civil Procedure. The new regulations came into force on July 1, 2020. This was a response to numerous postulates of entrepreneurs, representatives of collective copyright management organizations as well as postulates of the doctrine concerning the introduction of specialized courts in the field of Intellectual Property, themselves resulting from the far-reaching specificity and growing number of such cases. The changes have been introduced in order to accelerate and improve the substantive side of evaluation of such cases, as well as to standardize the case-law. Whether that will actually happen, only practice will show. These amendments are to significantly affect entities operating in various industries, e.g. IT, for which Intellectual Property law is undoubtedly an important element of running a business.
Which cases are brought to the new courts?
These are defined by the introduced concept of “intellectual property matters”. The new, specialized courts will not only deal with cases concerning industrial property rights, as well as copyright and related rights, but also cases regarding other intangible rights, as well as matters related to combating and preventing unfair competition and to protecting personal rights (in certain cases).
Importantly, for a case brought to court to become an “Intellectual Property case”, no infringement has to occur at the stage of bringing an action. The regulations unequivocally indicate that whenever there is a reference to an infringement of Intellectual Property rights, it shall also be understood as being a very real threat of such an infringement (Art. 47994 of the Civil Code Procedure).
Where to file an Intellectual Property lawsuit?
The courts that deal with Intellectual Property cases are the District Courts in Warsaw, Gdańsk, Poznań, Katowice and Lublin. Importantly, two courts of appeal have been established to deal with Intellectual Property cases – in Warsaw and Poznań. The District Court in Warsaw has also gained special competencies: it is now solely competent in disputes concerning, e.g., computer programmes and trade secrets of a technical nature, and so it is now where most of the disputes concerning the IT industry will be evaluated.
Along with the growing importance of computer programmes in business transactions, the necessity to ensure their proper protection against infringements also increases. The results of the programmer’s work may be considered as a piece of work and thus will be protected by law. The judgments issued under the Copyright and Related Rights Act are equivocal. A specialized court constitutes an opportunity to improve the quality of judicial practice and streamline proceedings.
Legal representation by a professional attorney
Another change in Intellectual Property matters is the introduction of mandatory representation of parties by attorneys, legal advisers or patent attorneys. This is generally referred to as ‘compulsory representation by lawyer’. The above does not apply to proceedings where the value of the dispute does not exceed 20,000 PLN and to cases of less complexity if the court releases the party from obligatory representation.
Consequently, entities from the IT industry can count on the professional assistance of attorneys specializing in Intellectual Property matters. Since these matters or those related to IT issues are usually very complex, the modification as introduced deserves approval.
Specific legislative instruments
As part of separate proceedings in the field of Intellectual Property, the following three legal instruments have been introduced to secure or obtain evidence: a request for securing evidence, a request for disclosing or transferring evidence, or a request for information disclosure.
Securing evidence in cases before Intellectual Property courts may bring about associations with securing evidence under Art. 310 of the Civil Code Procedure. This new measure aims to obtain evidence of an infringement of Intellectual Property rights which would be impossible – or very difficult – to obtain other than from the infringer. The purpose of the introduced regulation is only to physically collect material from which evidence can be taken. For example, the subject of the dispute may be a password-protected computer programme created by several people. Such a programme could be modified during proceedings by one of the authors by removing items which might be the Intellectual Property of other people. The person requesting the securing of evidence will have to substantiate his claim, substantiate legal interest in securing the evidence, and define the evidence and the method of securing it.
In turn, a request for disclosing or transferring evidence may be filed by a plaintiff who has substantiated his claim, demanding that the defendant disclose or transfer evidence that he is in possession of financial and commercial documents in particular.
The introduced provisions have also standardized the request for information (information access claims). Until now, this mechanism was regulated in the Act on Copyright and Related Rights and in the Industrial Property Act.
At the request of the entitled party who has demonstrated reliable premises indicating the infringement, the court may, before commencing infringement proceedings or during the proceedings, until the first instance hearing is closed, request the infringing party to provide information, if it is necessary to pursue a claim. The request for information may concern: information about the company, place of residence or seat and address of producers, manufacturers, distributors, suppliers and other previous possessors from or on behalf of whom goods were purchased or sold, services used or provided, as well as envisaged wholesalers and retailers of these goods or services; information on the number of produced, manufactured, shipped, received or ordered goods or services provided, as well as the charges received in return for goods or services and, in particularly justified circumstances, other information that is necessary to prove the value of the claim.
Since July 2020, cases in the field of Intellectual Property are heard solely by specially-appointed courts, and a technical court in Warsaw has been established to deal with the most complex IT cases. Changes in the judiciary are undoubtedly necessary. However, some of the introduced provisions are subject to criticism. The number of appointed courts is quite small; for example, no IP court has been established in Kraków or Wrocław, which are large cities with many technology companies and large court centres where Intellectual Property cases are equally numerous. The Ministry of Justice has announced that the list of Intellectual Property courts may gradually increase, but it is not yet known when exactly this will happen. The ongoing reform is undoubtedly a positive step and should contribute to the improvement of the speed and efficiency of examining Intellectual Property proceedings, since IT industry-related issues are often very complicated. Thanks to specialization in the justice system, IT companies will henceforth be able to protect their rights more effectively.
Monika Gaczkowska, associate, WOLF THEISS
Last Updated on March 2, 2021 by Karolina Ampulska