Patents & Utility Model
What we do
- Portfolio analysis and SWOT analysis
- Novelty / prior art and infringement searches
- Protection strategies
- Drafting and Prosecution
- Licensing, transfer, sale, exploitation agreements
- Manufacturing, distribution and logistics agreements
- Joint research, JV, NDA and non-competition agreements
- DRM management and bundling agreements
- Protection against infringements
- Compulsory licenses
What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?
Patents are enforced in civil courts, with the introduction of a pat- ent infringement lawsuit or injunction action. Patent infringement lawsuits filed after 1 January 2002 are judged by a special chamber of the commercial law sections of the Athens and Thessaloniki First Instance and Appeals Courts (for the whole country, depending on the seat of the defendant). These sections are competent for community trademark disputes and design disputes in general as well.
However, injunctions are not heard by specialised judges, but by judges that hear all types of disputes.
What is the format of a patent infringement trial?
A lawsuit must be filed at the competent multi-membered district court with a document introducing the infringement claim, contain- ing clearly and precisely all the particular facts and elements that constitute the infringement and also describing the violated patent right. Upon the filing of the lawsuit, a hearing date will be set. Under current practice, a hearing date is set for approximately one year after the filing date. The parties have the possibility to proceed and settle the infringement claim out of court at any time until the issu- ance of the decision and such a settlement may be certified by the court and is enforceable. When the lawsuit is being heard, a file with full legal arguments, evidence and up to three affidavits for each party must be filed by both the plaintiff and the defendant 20 full days before the date of the hearing. Counterclaims and responses to the other party’s arguments and evidence may be filed at the latest on the sixteenth day before the hearing. The hearing takes place with the oral examination of one witness for either party. Cross-examina- tion of the witnesses is allowed. Following this, a transcript of the taped witnesses’ examination is available and within eight working days of the hearing, the parties may file comments on the arguments raised by the witnesses during the oral hearing. As evidence, one may submit any kind of relevant documents, such as test results or expert opinions. Private experts may be freely used by the parties and are advisable in cases of complex chemical or biochemical patents. If the court considers it necessary, an interim decision shall be issued requesting a court-appointed expert to give an opinion on specific issues within a specified deadline. The disputed issues are decided by three judges, one of which is the rapporteur. A patent trial at first instance may typically last two to four years, while it will take longer if a postponement is granted, which would delay the procedure by 15 to 18 months. At second instance, a patent trial may last 14 to 18 months. Here again, if a postponement is granted, the procedure would be delayed for a further six to nine months.
Where a court expert is appointed, it is expected that the pro- cedure will be further delayed for one more year. As a general rule, at second instance, no witnesses are heard and the court of appeal judges the case based on the facts already presented at first instance. However, the court of appeal may issue an interim decision request- ing the presence of the parties and witnesses for examination.
What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?
Full proof of the circumstances and facts that substantiate the claim is necessary. For establishing infringement, the plaintiff must prove that there is a valid patent and the way in which the defendant is copying the object of the patent. For invalidity lawsuits, the plaintiff must prove the grounds of invalidity of the patent in question. For unenforceability of a patent, the party claiming such must prove any of the following:
- the deadline for bringing the infringement lawsuit or compensa- tion lawsuit for patent infringement has lapsed;
- the plaintiff has led the defendant to believe through acquies- cence that a lawsuit would not be brought;
- use by the defendant was made for non-professional or research purposes; or
- the patent was null.
Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?
The owner of the patent and any other patent right holder has the right to sue for patent infringement. The owner of a patent appli- cation may also sue, but the court will stay the proceedings until the patent is granted. The exclusive licensee may also sue, provided, however, that the patent licence is recorded at the Patent Office. A distributor of the patented goods is not entitled to sue because he or she has no legal rights on the patent. However, the distributor whose business is being harmed from the infringement may intervene in a lawsuit that has already been started in favour of the plaintiff (patent rights holder) and may thus become part of the proceedings.
An accused infringer has the possibility to introduce a lawsuit for the recognition that he or she is not infringing (declaratory judgment) in any case when an accusation of infringement has been made or even before such an accusation. The decision of such a lawsuit would be enforceable between the parties to it and would constitute a prec- edent only between the parties and their successors in title.
To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?
A person can be liable for inducing or contributing to patent infringe- ment to the extent that his or her actions are substantially important to the occurrence of the infringement. If one performs only some of the elements or steps of a patent claim, but all together multiple parties practise all the elements, each individual may be liable for its contribution to the infringement, provided that the particular step performed is an essential step.
Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing the same patents?
Multiple parties may be joined as defendants in the same lawsuit. For this, each defendant should have to contribute to the infringement of the same patent in any way, regardless of if they are related or not. As such they may be a producer and a seller of the same infringing items, producers of different parts of the same infringing product or method or different, unrelated infringers of an infringed patent. It is not necessary that the defendants are accused of infringing the same patent, but a reasonable link needs to exist so as to give the court grounds for allowing multiple defendants.
To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?
Activities that take place abroad are not relevant to infringement in Greece. However, one can thus show a pattern of actions of the infringer, which will be useful for the plaintiff to use.
To what extent are ‘equivalents’ of the claimed subject matter liable for infringement?
To decide a patent infringement case, according to legal theory judges may use two approaches: either the judge tries to ascertain the object and the general principle of the invention and establish its field and the limits of protection of the patent, and then tries to establish if the technical rule followed by the infringer falls within the limits of the invention, or the judge ascertains the object of the invention and then tries to ascertain if the infringer uses similar means to those of the infringer (in this case, the judge does not try to establish the general principle of the invention).
The courts have taken differing positions on this issue and are rather strict in applying the doctrine of equivalents in infringement actions. However, if a party to a dispute presents a well-based claim of equivalent effect, especially when the patent specification and claims also provide a basis for protection for equivalent means and materials, the courts may well accept such.
What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?
Pre-trial discovery is not permitted by Greek law. An equivalent would be the possibility for the court to order that either of the par- ties provide certain documents or disclose certain information to the other party. Following the special request of one party (filed in either the injunction or the normal procedure) the court may order that one party provides certain documents or discloses certain information to the other party. This request should include the reasons of the request and a description of the specific documents requested, as precisely as possible. However, this procedure is strict in its prerequisites and also does not give the possibility to the requesting party to inspect premises.
After the recent implementation of the EU Enforcement Direc- tive, in the pre-trial phase and before the injunction action hearing or before the court hearing in the main proceedings (a so-called normal procedure lawsuit), the plaintiff has the right to request from the court information on the origin and distribution networks of the goods or services that infringe his or her patent right. This evidence can be requested from the infringer or any other person who:
- was found in possession of the infringing goods on a commercial scale;
- was found to be using the infringing services on a commercial scale;
- was found to be providing on a commercial scale services used in infringing activities; or
- was indicated by the person referred to in point (i), (ii) or (iii) as being involved in the production, manufacture or distribution of the goods or the provision of the services.
If a court order of that type is violated by the party, then it is obliged to pay a pecuniary penalty up to E100,000.
What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?
When a lawsuit is filed, a hearing is set in approximately 12 to 14 months, according to current backlogs. After the hearing a decision is expected within six to 15 months, according to current practice. An interim decision that appoints a court expert is expected within four to six months. After the court expert has expressed an opinion, a new hearing will be set for final deliberation.
In the appellate courts a hearing is set five to seven months from filing and a decision issued within four to seven months from the actual hearing date, according to current practice.
What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?
The costs of a patent infringement lawsuit before and during the trial or the costs for an appeal would depend on the complexity of the case and on the nature of the infringed patent rights, the extent and time needed for elaboration, possible multiple hearings, etc.
What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?
There are two possible grounds for appeal: that the law was violated or that the evidence was not fully and justly appreciated. Either or both of these grounds will suffice.
To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business- related tort?
If the specific facts in a particular case may form the basis for a com- petition violation, unfair competition or a business-related tort, then it is possible that the patent holder is exposed to liability for such a violation, irrespective of the validity of the patent.
To what extent are alternative dispute resolution techniques available to resolve patent disputes?
Arbitration is recognised by law as a means to resolve disputes between private individuals or entities. Therefore, as far as the patent infringement dispute is a dispute between individuals, it is possible to use arbitration, namely on the issue of compensation. Regarding invalidity, recent jurisprudence has considered that this is a matter of public interest, thus, invalidity should always be decided by a court of law and any private settlement or arbitration in this respect is not considered valid as such.
Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
A patent can be obtained for inventions other than those that are unpatentable by law. Software inventions are explicitly not patent- able by law although the existence of a technical effect may assist in patenting those aspects of a software-related invention that have a technical effect. It is somewhat difficult to have business methods rec- ognised as patentable unless a technical effect can be demonstrated. Surgery and therapeutic methods of the human or animal body, as well as diagnostic methods applied to the human or animal body, are also explicitly not patentable by law.
Who owns the patent on an invention made by a company employee, an independent contractor or multiple inventors? How is patent ownership officially recorded and transferred?
If, according to the employment contract, a company employee has as the object of his or her labour the performing of inventive activity, the invention belongs to the employer.
If the employee has no contract on inventive activity but only used the employer’s resources to perform the invention, the employee must first communicate to the employer the intention to file a patent application. The employer may then choose to be co-owner of the invention by 40 per cent (which percentage is set by law), the other 60 per cent belonging to the employee. If the employer does not respond within four months, the invention shall belong entirely to the employee.
The ownership of a patent for an invention made by an inde- pendent contractor depends on the employment contract. When there are multiple inventors or patent owners, the patent rights are divided equally between all inventors, unless there is a writ- ten agreement between the inventors deciding different percentages. Patent ownership is officially recorded at the Greek Patent Office. Transfers are recorded at the Patent Office and are valid towards third parties from recordal. Documents pertaining to the recognition of inventors (when the patent owner and inventor differ), and also patent ownership transfer documents, should be legalised (apostilled).
How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?
The validity of a patent can be challenged if: the patent owner is not one of the following – inventor, assignee, beneficiary; the invention is not patentable (if it is lacking any of the follow- ing: novelty, an inventive step or industrial applicability, or its subject matter cannot be patented by law); the description of the patent is insufficient, so that the invention cannot be carried out by a person skilled in the relevant art; or the subject matter of the patent goes beyond the content of the protection as claimed in the application.
The civil courts that are competent for patent infringement issues are also competent for challenging the validity of a patent.
Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?
There is an absolute novelty requirement for patentability. The excep- tions are if disclosure of the invention took place within six months before filing the patent application either: by an unlawful act at the expense of the applicant (breach of confidentiality agreement); or by presentation of the invention in a recognised exhibition (in which case such presentation must be stated when filing the pat- ent application).
What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?
If a person skilled in the art could, without much effort, come to the same solution for the same problem based on the existing prior art, then the patent shall not be inventive and shall be considered to be obvious.
Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?
A patent infringement lawsuit may be denied if it is exercised in bad faith or against common practices, or is against the social and economic purpose of a right. This is also called an abuse of right (article 281 of the Civil Code). According to jurisprudence, this may be the case where a long time has elapsed while the patent owner was aware of the infringement and did not react. The time needed here is less than the time for the prescription of the right but there should be additional circumstances, such as when the infringer is made to believe that the patent owner will not assert its rights and for this reason has entered into investments.
There are specific deadlines to file an infringement lawsuit, namely five years from knowledge of the infringement, or of the damage and of the identity of the party responsible for the infringement.
Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?
An accused infringer can use as a defence the claim that he or she was already exploiting or had prepared to exploit the invention as the product of his or her intellect at the time of filing of the asserted patent (or its priority date) and should thus be allowed to continue to use the object of his or her intellect. However, such use may only be for the needs of his or her enterprise and thus may be transferred only together with the business of the prior user (article 10(3) of Law 1733/1987).
What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature?
Under the provision that patent infringement is deliberate, the plain- tiff may choose among the following monetary remedies provided by law:
- compensation of damages (including actual losses and lost profits and moral damages, if possible to substantiate);
- account of profits made by the infringing exploitation of the patent; or
- the payment of an amount equal to lost royalties – this amount needs to be substantiated and proved by the plaintiff.
Punitive damages are not granted by law, unless they are contractu- ally agreed between plaintiff and defendant in the form of a penal clause in a contract. The amount of damages claimed must be fully and clearly substantiated by the plaintiff and shall be the damages actually suffered by the plaintiff, or profits actually won by the defendant.
Damages may be sought for the last five years before serving the lawsuit. The accrual of interest starts from the time of serving the lawsuit.
Following the implementation of the EU Enforcement Directive, compensation options and factors to be taken into account by the judge have been specified: the patent owner must prove that there is intention or severe negligence by the infringer in order to request compensation. In the calculation of the damages to be awarded, the court may either: take into account all appropriate aspects, such as the negative economic consequences, including lost profits that the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice or damage caused to the right holder by the infringement; or it may, in appropriate cases, set the damages as a lump sum, based on elements such as the amount of royalties or fees that would have been due if the infringer had requested authorisation to use the intellectual property right in question.
To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?
A temporary injunction may be obtained against future infringement as long as imminent danger of the infringement is demonstrated. The court deciding on an invention decides on probability. A final injunction may be obtained only against present infringement and full evidence of the claim must be submitted.
A decision is effective against third parties other than the infringer (namely its suppliers or customers) only when it is issued following a lawsuit directed against them, too. The decision’s effects are intra partes.
To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?
The importation of infringing goods may be blocked by use of cus- toms intervention. A request for such customs intervention may be filed at the Greek customs authority or a single request may be filed for the whole EU at any EU country’s competent authority and may also cover Greece, based on the EU Customs Regulation (Council Regulation (EC) No. 1383/2003 of 22 July 2003 concerning cus- toms actions against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights). It is important to note that in the case of an EU-wide request, certain formalities need to be performed for the customs’ intervention decision to be in force in Greece:
- a contact person with proxy must be appointed for Greece; and
- the documents of the request with supporting annexes must be translated into Greek.
In practice, customs authorities may proceed to block suspected infringing goods either on their own initiative or following a specific request by the patent owner. Then, the patent owner’s representative is invited by customs to obtain a sample of the blocked goods and must present a written report stating whether the blocked goods are counterfeit and the reasons for that. The reasons named may be both technical and commercial. Then the importer and the intended recipi- ent of the goods are invited to state whether they agree to the destruc- tion of the goods. If this approval is expressed, the infringing goods proceed to destruction. If no approval is stated, the patent owner must proceed to the courts that are competent for patent disputes and an injunction action must be issued to confirm the temporary blocking of the goods. A normal procedure civil lawsuit must be filed for the destruction of the goods to be ordered.
Under what conditions can a successful litigant recover costs and attorneys’ fees?
The court usually adjudicates a nominal amount as court expenses. In the past, there was a very specific way to request attorneys’ fees from the other party according to law: the fees were calculated as 2 per cent of the value of the dispute for the lawsuit plus 1 per cent of the same value for the written arguments. However, this calcula- tion is no longer possible due to recent changes and attorney fees are subject to agreement.
Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?
The basis for asking for compensation for a patent infringement is that the infringement is intentional. Depending on the circumstances, one could ask for higher damages (namely also moral damages).
What is the time limit for seeking a remedy for patent infringement?
The time limit is five years from knowledge of the infringement by the rights owner, or from the damage and identification of the party that is responsible for the infringement. On the other hand, an inva- lidity lawsuit may be brought at any time during the lifetime of a patent.
Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?
It is not compulsory to mark patented products. However, when pat- ent marking is done, this should not be a false declaration regarding the existence of a patent (or patent application). Any false declaration is a criminal offence and is punished as such by personal detention and a fine.
Are there any restrictions on the contractual terms by which a patent owner may license a patent?
There are no specific restrictions on the contractual terms for patent licences, other than the general provisions of contractual law and competition law.
Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?
The following prerequisites must all apply for a compulsory licence to be issued with a court decision, following a relevant request to the competent court: three years from the patent grant or four years from the patent application have passed; the invention has not been exploited in Greece, or if it has been, the production of goods does not meet local demand; and * the third party has notified the patent holder, one month before filing the relevant request at the court, of its intention to ask for a compulsory licence.
The patent owner has certain defences, such as arguing that there were reasons for the non-exploitation. Regarding the terms of the compulsory licence, such as the amount and terms of payment of royalties and the exclusivity or not of the licence, the law says that an opinion may be sought from the Patent Office, which is not binding for the court. On this issue, because the reasons for deciding on the licence terms would very much depend on the market situation in the specific sector, it seems more appropriate to present a documented case study instead.
How long does it typically take, and how much does it typically cost, to obtain a patent?
A Greek patent application is issued usually 18 to 24 months after its application. The official fees to be paid for filing a patent appli- cation of 10 claims is e350 with an additional e30 per additional claim starting from the eleventh claim onwards. Annuity fees are paid from the third year onwards until the 20th year and the early amount for annuities payment increases with the number of years of protection.
Are there any procedures to expedite patent prosecution?
In a Greek national patent application, one may give up the right to have a deadline of four months for completing irregularities in one’s application file, thus speeding acceptance of the patent application.
What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?
The invention for which a patent is sought must have been disclosed in a specification, in a manner enabling a specialist in the art to perform the invention. In the description, the closest prior art must be identified, and its shortfalls should be described with the underly- ing problem. The invention should then be described as the way of solving the problem. At least one example should be included in the specification. Due care must be taken so as to disclose enough of the invention but not too much so that the specification is not limiting on the scope of the invention. The specification must be followed by at least one claim, which gives the scope of the patented invention and of the patent rights.
Must an inventor disclose prior art to the patent office examiner?
There is no obligation on the inventor to disclose prior art to the patent examiner.
Is it possible to appeal an adverse decision by the patent office in a court of law?
An adverse decision of the Patent Office, which is considered an administrative act, may be appealed at the Supreme Administrative Court (Council of State). However, because the Greek Patent Office does not perform substantial examinations but only formal examina- tions, any rejections would be for formal reasons.
Does the patent office provide any mechanism for opposing the grant of a patent?
The Greek Patent Office conducts only an examination of the for- malities on patentability, and the search report is provided for infor- mation purposes only and does not lead to the rejection of patents. By law, invalidity of a patent may only be decided by the civil courts. Invalidity may be sought with a separate lawsuit, the acceptance of which has the result that the patent is invalidated with effect against all (intra omnes). Invalidation may also be sought by means of an objection of the defendant in infringement proceedings, in which case the acceptance of such a claim will lead only to the rejection of the infringement lawsuit (intra partes effect).
Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?
The first to invent has priority. If more than one person makes the same invention independently, priority belongs to the first to file for the invention or the first that has international priority according to the Paris Convention. It is presumed that the applicant of a patent application is also the inventor. Disputes between applicants for the same invention are resolved in the civil courts.
Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?
Once a patent is issued, it may be modified only with issuance of a court decision. A court may amend the patent claims, in that it may restrict their scope. There is no provision for the re-examination of granted patents.
How is the duration of patent protection determined?
A patent is protected in Greece for 20 years, starting from the patent filing day.