From the Editorial Board

Along with the growth of the economy and culture of innovation, it is pivotal for companies to protect their intellectual property (“IP”) as an important and valuable asset. Before decisions relating to protection are made, the solutions that could potentially be considered as IP must be recognised and well-identified within the organisation.

For this reason, enterprises should implement an innovation program for their personnel to develop innovative potential, build innovation culture, and, most importantly, adequately reward the most innovative employees.

The Polish act on industrial property law (“IPL”) being in force provides a solution aimed at protecting the so-called rationalisation projects. According to the IPL, any technical solution that is susceptible of utilisation and is not a patentable invention, a utility model, an industrial design, or a topography of integrated circuit may be recognised by an economic entity as a rationalisation project. The conditions of acceptance and remuneration for creating such projects should be laid down in regulations on rationalisation activities.

It is for the company to determine: (i) what kind of solutions made by whom may be recognised by that entity as rationalisation projects, (ii) the manner in which the rationalisation projects are to be handled, and (iii) the rules for remunerating the creators of the projects in question.

In the draft of the new Act on Industrial Property Law, which aims to replace the current Act of 30 June 2000, the basis of relevant provisions for the regulations on rationalisation activities is eliminated. The rationale for removing these provisions is the assumption that the company interested in rewarding such activities may do so even without a basis in the act of law.

This removal, however, has further-reaching consequences and may potentially lead to additional interpretational doubts regarding the right of the creator to be remunerated.

According to Article 22 of the IPL, unless the parties agreed otherwise, the creator of an invention, a utility model, or an industrial design shall be entitled to remuneration for the exploitation by an economic entity of his invention, utility model, or industrial design, where such an entity enjoys the right to exploit it or the right to a patent, the right of protection, or the right to registration under Article 11.3 and 5 or Article 21.

Articles 11 and 21 clearly indicate that the right to be remunerated refers only to the creators of a patentable invention, a utility model or an industrial design. This right does not cover creators of solutions not capable of protection, who may be remunerated according to the rules set by their employer in the regulation on rationalisation activities.

Deletion of the relevant provisions being a basis for the regulations on rationalisation activities will surely lead to far-reaching complications for employers, especially if the equivalent of the above cited Article 22 regarding the creator's claim for remuneration does not set a clear distinction between the creators of solutions capable of being protected (e.g. patentable solutions) and those not eligible for such protection.

At this point, it must be clearly stated that the right of the creator to be remunerated should not be dependent on the grant of protection (unless the relevant intellectual property office establishes that the statutory requirements for the grant of a patent/right of protection of a utility model/right in registration in industrial design have not been satisfied), as this could lead to a situation in which companies would not apply for protection merely in order to avoid the obligation to pay the remuneration.

This is obviously not the correct strategy, as it is in the foremost interest of an innovative company to adequately remunerate the creators of an innovative solution, bringing profit to the company. Whether to reward employees for developing solutions that are not capable of protection, yet have a certain value, should be left for the employer to decide.

What is definitely clear is that companies that understand the value of their IP should keep all the information regarding the innovative solutions created inside the company well-structured and organised. This is crucial, not only to enable companies to adequately reward their employees, but is all the more important if the company's strategy is to protect the innovative solutions as confidential knowledge. If the solution is not clearly identified as an asset worth protecting, that is the easiest way to lose it. The most practical solution to control the management of the solutions created by employees in the company is through corporate innovation programs.

Monika Kaczmarska

Manager/Intellectual Property Department

PKN ORLEN S.A.

Lubelski Węgiel “Bogdanka” S.A. (the Company) can boast of its successful 40-year market presence. This operational timespan helped develop a coherent system of remunerating and protecting employee innovation, including the protection of exclusive rights, through the Polish Patent Office.

One of the many ways to grow a business is to look for new solutions, both by drawing on the experience of others, and by constant revision of one's own achievements. The Company has a long tradition of active support for employee innovation. Above all, innovations are sought amongst the operational activities of the facility, which allows optimal results for internal needs. Solution refinement and expansion takes place in an environment directly intended for consequent use. Specific conditions of the environment influence innovation. Thus, each in-house solution is dedicated to specific conditions, tailored to concrete needs, and is able to surpass on-the-shelf solutions available on the market.

A system in which employees are financially rewarded for innovative ideas leads to mutual advantages. If employees maintain an ongoing professional commitment and interest in outcomes, they can discover the potential for innovative solutions to problems – which is desirable and valuable to the employer. Thanks to additional remuneration, employees are better motivated to seek out-of-the-box solutions.

A number of arrangements are in place in the Company to regulate and simplify the filing and processing of innovations. These include Rules of Procedure for handling innovation projects, as well as services offered by the Research and Development Department, whose qualified staff supports innovators in the creation and implementation processes. The Company also maintains an ongoing relationship with patent attorneys for the purpose of securing protection of exclusive rights on a broader scale. The innovation division has developed over the years, and the mechanisms it proposes to the staff are geared towards implementing new solutions for operational practice. At the same time, the system in place is constantly under review so that the whole process is transparent and coherent, while at the same time being developer-friendly and supportive at every stage of project development.

Employee innovation can be of diverse qualities, ranging from new uncomplicated equipment that solves simple everyday work issues to extensive plans for construction work or mining machinery, developed in detail for specific underground conditions. In this context, another dimension of the Company's industrial property rights-related activity is worthy of a mention. Solutions that prove innovative, that involve inventiveness, or that exhibit foreseeable industrial applicability are filed with the Polish Patent Office as inventions and utility models. Over the years, relevant practices for securing the Company's industrial property rights have been developed. This, in particular, pertains to those solutions that are marketable and, in addition to the internal benefits, they provide income from solution sales or licensing.

We operate in a legal system where it is hard to imagine that intellectual property is left unprotected. It has long been recognised that intellectual property is just as important and valuable as material assets, and they can all be subject to turnover. From the employer's point of view, it is important to motivate and reward employees who devote extra time and effort to create new or improved solutions. This approach helps build teams that actively seek novel solutions, enriching the Company's potential. This is a win-win approach.

An amendment to the Industrial Property Law is expected in the near future. The applicable regulation that has been in force since 2000 will be replaced by a more complex regulatory act, which will significantly affect the scope and possibilities of protecting innovative output by companies of comparable size to Lubelski Węgiel “Bogdanka” S.A. Of considerable concern is a planned fundamental change with regard to utility model protection, under which this category will be exempt from substantive control by the Polish Patent Office. The arbitrariness of the content of patent registration, susceptibility to bad faith filings, and the time-consuming procedure for asserting one's rights will constitute a burden that will first and foremost affect entrepreneurs. Our concerns in this regard were expressed during the consultations on the content of the planned act. The outcome of the legislative process will certainly have an impact on the Company's decisions in the field of intellectual property protection.

Maria Hładyniuk-Gązwa

patent attorney

The statements resulting from the previous experience of the representatives of the three State Treasury companies listed above have one common denominator. Everyone points to the exceptional importance of employee creativity in the field of inventiveness and rationalizing innovation in the activities of these large enterprises.

The above-presented experiences and expectations regarding the use and protection of intellectual property in business demonstrate the complexity of problems related to IP application, thus opening a wide perspective on potential cooperation between science and business to develop optimal solutions for IP practice.

On behalf of the Editorial Board

Rev. Professor Włodzimierz Broński

Editor-in-Chief