Q: Can you tell us about your team (eg, size, practice focuses and key individuals)?
A: WTS Patent Attorneys – Witek, Sniezko & Partners was founded in 2002. Our office consists of 10 patent attorneys and more than 20 full-time employees across our Warsaw and Wrocław branches. Moreover, we work with a group of almost 20 trusted translators and specialists, who are mostly academics.
Key individuals include our five partners, who are also the owners of the firm: Rafał Witek, Agnieszka Śnieżko, Anna Gdula, Anna Rożkowicz and Andrzej Witek.
The partnership specialises in the protection, evaluation and enforcement of patents, mainly related to life sciences, as well as in trademark and design cases.
We are professional representatives before the Polish Patent and Trademark Office, Polish courts, the EUIPO, the EPO and WIPO, where we help our clients to procure and enforce their IP rights, particularly patents and trademarks.
The firm has offices in Wrocław and Warsaw, as well as a Munich office, which opened in 2004.
Q: What are some of the advantages of working in a boutique?
A: WTS Patent Attorneys is an IP boutique specialising in life sciences. This strategy – which has been consistently maintained throughout the development of the firm – results from the educational profile of the founding partners. To quote Peter F Drucker, in a post-capitalist society, “an organization is a tool and as with any other tool, the more specialized it is, the greater its capacity to perform its given task”. Working in a boutique has allowed us to build a unique team of specialists – patent attorneys handling life-science inventions who can undertake any project in this field. As such, we can compete with much larger Polish law firms in these projects.
We constantly strive to develop the competences of our team. Each demanding project corresponding to our specialisation provides a unique experience. We participate in patent litigation in the field of pharmaceuticals, conduct due diligence of investment projects in the chemical industry and build IP strategies for technology start-ups.
Q: From a firm perspective, what was your highlight of 2019?
A: We welcomed three experienced patent attorneys who have since strengthened the Warsaw team. Moreover, two of our applicants obtained professional qualifications.
We also won the tender for providing services for the Warsaw University of Life Sciences – the oldest Polish life sciences university. The commercial successes of our clients (eg, Jagiellonian University) and the conclusion of patent infringement proceedings between two leading pharmaceutical companies were also important events in 2019.
Another was the granting of a patent protecting chemical synthesis technologies to PCC in Poland, the European Union and the United States, which was the subject of one of the largest investments in the Polish chemical industry. We also enjoyed success as IP representatives during due diligence, where the goal was to select the best bidder and to sign a licence agreement for the preparation of a bioethanol production line by a leading oil company. Finally, we prepared freedom-to-operate opinions for LG subcontractors, building one of the world’s largest car battery factories near Wrocław.
Q: In your opinion what are some of the key steps to prosecuting high-quality patents in Poland?
A: Obtaining a patent in Poland requires proper disclosure of the invention, as otherwise an application may be rejected or the patent may later be revoked. Particular attention should be given to applications related to natural sciences, which often claim a range of values of various quantities or concentrations. Here, it is essential to provide embodiments – at least at the extremities of those ranges. We sometimes observe that such patents are more easily granted by the EPO than by the Polish Patent Office; therefore, it is necessary to consider whether it is better to obtain protection in Poland using a patent already granted by the EPO. Then, after obtaining the patent, the owner should consider choosing the right group of specialists to successfully carry out the validation process. The right group should be fully aware of the importance of proper translation – not only of the claims defining the scope of patent protection, but also of the embodiments. At this point, it should be remembered that errors in the translation, even when corrected, do not allow rights holders to seek redress for the period in which the errors existed.
Left to right: Rafał Witek and Andrzej Witek, partners
Q: Given your focus on the life sciences sector, what are some of the big trends affecting patent practice in that space?
A: Biotechnology drugs are becoming increasingly popular in the pharmaceutical industry. Big Pharma has long been moving in this direction, but now generic companies are following suit by developing biosimilar drugs. This raises new challenges for us. Issuing an honest freedom-to-operate opinion for a biosimilar drug manufacturer is more difficult than in the case of small molecules. Far more aspects (eg, biotechnological manufacturing) must be considered and a reliable approach based on the structure of the active substance is not sufficient for small molecules. Developing a biosimilar product often requires patenting inventions. The old border between innovative and generic manufacturers is blurring. This also affects our practice, as we must be prepared for new customer needs.
We are also getting closer to the use of gene therapy (ie, the use of stem cells or individualised therapy adapted to the genetic profile of a particular patient). Ensuring effective patent protection in this area is a growing challenge because we are approaching the limits of patentability under existing patent law.
Q: What advice would you give to a young patent lawyer starting their career?
A: As in any profession, it is important to start learning right away and from the best – so as not to waste our lives. A well-acquired practice in the first years of a career will be fruitful in the future. In today’s business environment, there is no place for small teams that think they know all areas of the law. That is why young people with specific interests should apply to the best specialists in a given field. Moreover, gaining an apprenticeship under more experienced colleagues should broaden a young patent attorney’s technical knowledge. A good patent law specialist has both patent and legal knowledge, supported by practice, with constantly updated technical knowledge – at least to the extent of understanding the inventor. Therefore, when choosing a workplace to gain initial experience, it is worth following the specialisation and successes of a law office – preferably one whose specialisation coincides with your own scientific interests.
Q: How much of your workload is from overseas clients?
A: Overseas clients account for 20% to 30% of our received orders, which are usually orders to validate EU patents in Poland. However, recently many orders have involved the validation of patents belonging to South Korean concerns with factories in Poland, which invest continuously in the production of goods for the EU market.
Interest in freedom-to-operate opinions is growing, especially among Chinese customers. Often, the interest in the Polish market results from a close cooperation between Chinese investors and companies that manufacture in Poland.
For example, we are responsible for validating a South Korean company’s EU patents, most of which have recently concerned electromobility. In 2019 the company decided on another investment in Poland – an electric car battery factory. We were asked for a freedom-to-operate opinion by a Chinese chemical company that, together with a Polish chemical company, wants to launch the production of chemicals used in the production of the batteries in Poland.
From the perspective of overseas clients, Poland seems to be an optimal point of entrance to the European market.
Q: What are the main priorities for your firm’s development over the next five years?
A: Our main goals for the next five years are further development – in particular, by expanding our team with patent attorneys who are educated in natural sciences. We are convinced that the company’s high specialisation will allow it to maintain a leading position in the patent market in this field.
The second challenge that we face is ensuring a proper balance between growth and the high quality of services that are specific to an IP boutique, whose nature we wish to maintain.
Next, we will monitor and try to adapt to new trends in client needs. We will likely have to increase our capacity to work on more patent and legal opinions, patent research and litigation in connection with the developing Polish economy. This success is also reflected in the modification of the Polish legal system through the creation of a patent court, before which we will represent the interests of our clients.
Q: What major trends do you think will shape the Polish and wider European patent markets in the next five years?
A: In Poland, the ability to maintain the current rate of economic development and pro-innovative state policy will have a critical impact on the patent market. Significant improvements in patent enforcement are expected in 2020, following the establishment of a specialised patent property court and major changes in patent prosecution and patent invalidations due to changes in national patent law. These favour innovative companies and create better conditions for this type of investment in Poland. Thus, we expect an increasing demand for patent services in Poland, for national applications and validations of EU patents, and for freedom-to-operate research, as well as an increased number of patent invalidation cases. If successful, the development of a specialised patent court should lead to an increase in patent litigation cases in Poland.
For similar reasons, on a European scale, the largest issue to affect the patent market will be the launch of the UPC. We expect this to result in an increased number of EU patent applications from overseas clients, especially from China.
Q: Finally, if you could make one change to the patent world, what would it be?
A: One change that would benefit everyone (ie, applicants and their representatives) would be introducing the possibility to create a worldwide patent. Companies wishing to protect their solutions globally have to invest significantly to conduct multiple independent patent proceedings. It is also frustrating for representatives to see how much the assessment of patentability – in particular, the inventive step – and the length of the application procedure vary in different countries. The dream seems to be achievable, as today many national patent offices cooperate at the stage of preparing search reports on patentability. Moreover, in the era of digitisation, we have never had such great tools for managing documents from anywhere in the world. Therefore, we hope that someday such a change will occur, as it would make life much easier for everyone.