In accordance with Article 63 paragraph 2 of the Act of 30 June 2000 – Industrial Property Law (the Act), the subject matter scope of a patent is determined by the patent claims contained in the patent description, while the description of the invention and the drawings may serve to interpret the patent claims.

In case law, there are two conflicting positions on the interpretation of patent claims. The first one speaks of a narrow interpretation of patent claims and requires taking into account only what is expressis verbis expressed in them. According to this concept, an expansive interpretation of patent claims is inadmissible due to the freedom of economic activity and the limitation of the general free use of the protected technical solution resulting from the granted patent (see the Judgment of the Supreme Administrative Court of 19 January 2011, in case II GSK 667/10).

The second position provides for the so-called expansive interpretation of claims, which is, however, subject to certain limitations (see the Supreme Court judgment of 21 November 2008, V CSK 213/08, LEX No. 558628). According to this view, in the event of doubts as to the scope of protection due to imprecise, imprecise formulation of claims, the Patent Office may, in the alternative, refer to drawings and description in order to clarify the doubts (A. Szajkowski, H. Żakowska-Henzler (in:) System Prawa Prywatnego, vol. 14A, pp. 492-494). This refers primarily to the so-called functionally equivalent means (equivalents) of claimed technical means.

Any interpretation of patent claims may therefore be made solely on the basis of the elements listed in Article 63, paragraph 2 of the Act, i.e. the description and drawings. The interpretation of individual terms of patent claims should be made from the perspective of an average specialist in a given field in accordance with their meaning accepted in a given field of technology.

What if the applicant assigns a meaning to individual terms (features) that deviates from the universal meaning or technical meaning consistent with a given field of technology? In such a case, can the Office consider that the solution does not meet the requirement of industrial applicability or cannot be implemented?

This issue was the subject of a judgment of the Voivodship Administrative Court in Warsaw (judgment of the Voivodship Administrative Court in Warsaw of 21 November 2013, VI SA/Wa 1085/13, not published) which indicated that if the applicant gives a specific meaning to an expression used in the patent claims adopted only for the purposes of the patent description, then the understanding given by the applicant should be accepted, despite the fact that on the basis of the given state of the art this concept may be interpreted differently. As the Court noted: “the applicant has the right to use the terms adopted by him and indicate their meaning in the meaning of the description of a given invention with one limitation, that the meanings of the terms used are understandable to an average specialist”.

This means that the applicant has the right to define individual concepts, which may differ from the technical meaning. However, if a given expression does not have its technical meaning and has not been defined by the applicant, its traditional linguistic understanding should be accepted.

The above may be a guide for applicants on how to formulate the content of the description of the invention. This issue is important primarily in proceedings for the granting of a patent or a protection right for a utility model, where the Patent Office examines the premise of the realization of the invention and its industrial applicability. The authority may refuse protection, considering that on the basis of the description of the invention it is not possible to reproduce the invention (for this purpose, the Authority analyzes the meaning of individual terms). However, the Patent Office should first examine, in accordance with art. 63 sec. 2 of the Act, whether the applicant has defined individual concepts on their own. Only later is it possible to interpret them on the basis of their technical or universal meaning – e.g. based on scientific and technical dictionaries or lexicons. It should also be remembered that it is not the applicant who has to prove the industrial applicability of the solution, but the Patent Office of the Republic of Poland is obliged to prove the lack of this feature. According to the provisions of § 32 of the regulation of the Prime Minister of 17 September 2001 on filing and reviewing applications for inventions and utility models (Journal of Laws of 2001, No. 102, item 1119, as amended), the Patent Office does not recognize the subject of the application as a solution suitable for industrial use, in particular if it finds it impossible to use it to obtain a product or to apply the described method in a technical sense. This issue is also important in disputes, e.g. for invalidation of these rights, where applicants may argue that the invention does not meet the statutory requirements for obtaining them.