EFFECTIVENESS OF IP RELATED AGREEMENT UNDER POLISH LAW
When dealing with contracts that concern licenses or transfer of IP rights, such as right to a trademark, industrial design, utility model, patent or copyrights, the parties may want to facilitate concluding relevant agreement. For example, by “signing” it through the Internet through e-mail or other mean of digital communication (basic electronic form). The problem is that in accordance to Polish law certain agreements should be signed in writing to be effective. In other words “a written form”, as specified in Polish law, should be observed in order to effectively grant license (exclusive license – in case of copyrights) or transfer patent, industrial design, utility model, trademark rights.
The issues raised in this entry can be useful for companies signing an agreement under Polish law. This covers not only, in principle, cases of agreements between Polish companies but also international agreements which stipulate Polish law as applicable and governing law. Thus, when you’re managing a Polish law and sign IP related agreement with a foreign entity, it is worth verifying which law is indicated as applicable. It surely gravely affects the requirements that the contract should fulfill in order to be considered effective.
TRANSFER OF IP RIGHTS
Basically, under Polish law, all transfers of rights related to IP should be done in writing. This applies not only to the transfer of copyrights and industrial property rights, but also to related priority rights and rights to obtain a patent, register an industrial design or an utility model. If the parties establish only orally or digitally that certain rights are transferred, the transfer won’t be effective. If the buyer pays for the rights, the seller will still own them as the form of transfer was incorrect. Thus such transfer is considered null and void.
LICENSES
The situation is a bit different in case of license agreements. Licenses to use industrial property rights – patent, utility models, industrial designs, trademarks – needs a written form regardless if they are exclusive or not. This does not apply to copyrights in which case only an exclusive license should be done in writing. Non-exclusive licenses, on the other hand, can be granted via the Internet, orally or even per facta concludentia.
Something worth noting. When the parties don’t conclude in a written form an exclusive license to use copyrights it may not mean that the licensee obtained no rights at all. In particular that they have no rights to use copyright protected work at all as the exclusive license is null and void. One can argue that though the requirements for an exclusive license are not met, such agreement is still a sufficient confirmation that the licensor allowed the licensee to use copyright protected work. The difference is that the character of such license is not exclusive. In other words, the licensee may stipulate that though the reservation of exclusiveness is not effective, they still are a “non-exclusive licensee.”
OBSERVING A WRITTEN FORM REQUIREMENT
For observing a written form an exchange of electronic documents, even with some kind of electronic signature, is not sufficient. Polish Civil Law Code specifies that to execute a contract in written form the parties should exchange the originals of documents containing their declaration of intent, meaning – the contract, each of which contains a handwritten signature of a party to the contract.
In other words, in order to conclude a contract that needs to be done in writing each party should set a handwritten signature on a print of the contract and exchange with the other party the documents with their signatures. What is more, exchanging only their photos or scans may not be considered sufficient.
QUALIFIED ELECTRONIC SIGNATURE
The written form requirement can also be observed when a contract is concluded digitally and signed with an electronic signature. But this only applies to cases in which a qualified electronic signature was used. This electronic form, with the application of qualified electronic signature, is equivalent to the written form. Providers of qualified electronic signature services need to be verified and authorized by the state. They should fulfill the relevant requirements concerning safety and authentication of identity of users of their services. Some basic information about qualified electronic signature can be found on: https://www.biznes.gov.pl/en/firma/how-to-handle-official-matters-in-poland/handling-official-matters-via-biznes-gov-pl/how-to-handle-official-matters-and-sign-documents-online-at-biznes-gov-pl/trusted-profile-and-electronic-signature-signing-documents-sent-to-offices-via-the-internet
The list of companies that can provide you with a qualified electronic signature can be found on this webpage. Narodowe Centrum Certyfikacji/ NCCert / the National Certification Center: https://www.nccert.pl/uslugiE.htm
Article 78 of the Polishc Civil Law Code:
“§ 1. In order to observe written form for a legal act, it is sufficient to set a handwritten signature to a document containing a declaration of intent. In order to execute a contract, it is sufficient to exchange documents containing declarations of intent, each of which is signed by one of the parties, or documents, each of which contains a declaration of intent of one party and is signed by this party.”
BASIC ELECTRONIC FORM – DOCUSIGN ≠ A WRITTEN FORM / QUALIFIED ELECTRONIC FORM
One can use DocuSign to sign documents with an electronic signature. In other countries this solution may suffice, but in Poland, for example, transfer of copyright via DocuSign should be considered null and void. DocuSign webpage informs that eSignature in Poland is “court-admissable” and can be used in business in general. But that doesn’t mean that the eSignature fulfills legal requirements concerning the form of certain agreements. Please bear in mind that DocuSign service does not provide the qualified electronic signature.
The above is also mentioned on DocuSign webpage – https://www.docusign.com/how-it-works/legality/global/poland – where it is specified that for some types of agreements basic eSignature is not sufficient. In other words, signing a transfer of copyrights with DocuSign will not be effective. In terms of IP rights this concerns:
“license to industrial property rights (art. 76.1, art. 100.1, art. 118.1 and art. 163.1 of the Industrial Property Law) or exclusive license to copyrights (art. 67.5 of the Copyright Act)” and “transfer of industrial property rights (art. 12.2 of the Industrial Property Law) or transfer of copyrights (art. 53 of the Copyright Act).”
It is clarified that in such cases the Polish Law requires “QES” – Qualified Electronic Signature. Being more precise – it is not like those agreements need QES to be concluded effectively. The requirement states that the agreement should be in written form with handwritten signatures. Qualified Electronic Signature is a special, advanced type of eSignature that fulfills additional requirements concerning safety and is considered as an equal to normal handwritten signature. Therefore, an agreement with a QES is considered as concluded in a written form with all the relevant benefits.
RELEVANT POLISH LAW REGULATIONS – transfer of ip rights
copyrights
In accordance with article 53 of Polish Copyright Act: “A contract to transfer the author’s economic rights shall be made in writing under pain of nullity.”
In accordance with article 67 section 5 of Polish Copyright Act: “The exclusive licence contract shall be in writing under pain of nullity.”
patents, designs, utility models
In accordance with article 12 of Polish Industrial Property Law:
“1. The right to a patent for an invention, a right of protection for a utility model or a right in registration for an industrial design may be assigned or be subject to succession. 2. A contract for the transfer of the right referred to in paragraph (1) – patents, utility models, industrial designs – shall be in writing on pain of invalidity.”
In accordance with article 17 of Polish Industrial Property Law a transfer of a priority right to obtain a patent, utility model, industrial design should also be in writing on pain of invalidity.
In accordance with article 67 of Polish Industrial Property Law:
“1. The patent may be assigned or be subject to succession. 2. The transfer contract shall be in writing on pain of invalidity. 3. The transfer of a patent shall be binding on third parties as from the date of its entry in the Patent Register.”
This applies accordingly to utility models and industrial designs.
In accordance with article 76 paragraph 1 of Polish Industrial Property Law:
“The license contract – concerning patents – shall be in writing on pain of invalidity.”
This applies accordingly to utility models and industrial
trademarks
In accordance with article 127 of Polish Industrial Property Law a transfer of a priority right to obtain a right of protection for a trademark should be in writing on pain of invalidity.
As it is stipulated in article 162 of Polish Industrial Property Law: a transfer of right of protection for a trademark should be in writing on pain of invalidity.
Article 163 of Polish Industrial Property Law states that the license to use a trademark should be done in writing on pain of invalidity.
For more details on costs of protecting trademarks and industrial designs in Poland, please go to:
We’re currently preparing an english version of the said entries.
Romejko IP law office can help you with verifying the correct form of an IP agreement and ensure its effectiveness.
Przeczytaj również:
Cyryl Romejko specjalizuje się w sprawach związanych z własnością intelektualną, ze szczególnym uwzględnieniem problematyki rejestracji i ochrony znaków towarowych i wzorów przemysłowych.
