Patents in Europe 2011/2012 Lappa
By Eleni Lappa, Drakopoulos Law Firm, Athens 1. What are the most effective ways for a European patent holder whose rights cover your jurisdiction to enforce its rights in your jurisdiction? Historically, the enforcement of patent rights in has been a challenging issue. One of the key factors to bear in mind is vigilance through local units and representatives in order to ensure that infringements are brought to the patent holder s attention quickly and that swift action is taken. This is important because, in general, a patent infringement claim will be brought alongside an unfair competition claim, and the latter requires the prompt initiation of court proceedings. Although the previously applicable six-month prescription period was extended to 18 months more than a year ago, promptness in taking action is still always advisable. 2. What level of expertise can a patent owner expect from the courts in your jurisdiction? The Greek courts have developed some practical expertise in patent matters, although the set-up of the court system still far from enables a clear focus on patent issues from the judiciary. As such, although an IP court department has existed since 2006, there is still no patent court department within it. It is hoped that in future, the courts will acquire expertise through practice. Therefore, the safest approach is for a patent owner to expect to have to deal with all aspects of its patent, including validity (ie, novelty, inventive step and industrial application), when challenging infringement before the courts. 3. How do your country s courts deal with validity and infringement? Are they handled together or separately? In, the civil courts have jurisdiction over both nullity and infringement actions for patent rights (as opposed to trademark rights, where jurisdiction is split between the administrative and civil courts, respectively). It is not uncommon for an infringer to put forward an invalidity objection or even a nullity action as a counterclaim purely as a defence tactic. Even if that does not occur, although unlikely, the court may touch on the validity of the patent at the heart of the infringement action. As there is no separate court sector with jurisdiction for patent nullity and infringement actions, the advantage of this particular system is the avoidance of delay, as in most cases actions for nullity and infringement of the same patent are consolidated and heard in a single proceeding. 4. To what extent is cross-examination of witnesses permitted during proceedings? A typical court hearing involves the examination of one witness per adversary. The court hearing primarily focuses on the questions addressed to each side s witness by its own counsel, followed by crossexamination by the other side. Lawyers representing the parties do not argue the case orally, but rather via their writs and pleadings. The court panel may also ask questions (especially the court rapporteur and the presiding judge) if certain issues remain unclear to the court. The proceedings are short, and therefore the questions raised and the answers put forward by witnesses play a significant role in the process. 5. What role can and do expert witnesses play in proceedings? Due to the court s lack of specialisation in Patents in Europe 2011/2012 57
patent matters, the use of expert witnesses has repeatedly proven to be of paramount importance in such proceedings. Aside from the court hearing witnesses, the parties can submit sworn affidavits from expert witnesses (either Greek or foreign), provided that the other side is given sufficient and timely notice. If the expert witness is truly an authority on the subject, the courts will likely be influenced, and in any case they will rely heavily on the expert witness testimonies to fully consider the matter. 6. Is pre-trial discovery permitted? If so, to what extent? Greek law makes no provision for pre-trial discovery. In fact, adversaries try to keep their cards close to their chests until the last minute and often use the element of surprise in the court proceedings if feasible. 7. Do the courts in your jurisdiction apply a doctrine of equivalents? The courts follow Article 17(6) of the Patent Law (1733/1987), whereby if the same result is proven to be achieved, then by default the same or equivalent method or process is deemed to have been applied to achieve that result. 8. Are certain patent rights (eg, those relating to business methods, software and biotechnology) more difficult to enforce than others? Under Article 5(2) of the Patent Law, the following do not qualify as inventions: Scientific theories and mathematical methods. Aesthetic creations; designs. Rules and methods for exercising mental activities, games and financial activities. Computer software programs and data presentation. In addition, in order to be considered patentable under the Patent Law, a patent right must meet the criteria of novelty, inventive step and industrial application, which is applicable in most jurisdictions. As is not a substantive examination jurisdiction, these criteria come into play whenever enforcement issues arise and become the subject of judicial scrutiny in order to ensure that a granted patent is an enforceable patent right. 9. How far are courts bound by previous decisions in cases that have covered similar issues? As is not a common law jurisdiction, precedent although important has no binding effect. However, over the past 10 to 15 years the Greek courts have tended to welcome decisions on the same issue from other jurisdictions, particularly those with more advanced or specialised patent courts. They also consider any such decisions from other Greek courts. It is always a good strategy to cite any past decisions on the same issue. 10. Are there any restrictions on who parties can select to represent them in a dispute? As has no registered patent attorneys, there are no restrictions on using regular attorneys. Nevertheless, due to the complexity of the issues involved and the lack of regular attorney specialisation on patent issues, the best policy is to retain specialist patent agents or attorneys who are familiar with international jurisprudence and other resources, and can address the key issues effectively. 11. Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases? Yes. As there is an effort to direct IP matters through the specialist IP court department set up some years ago, the Greek courts have not yet acquired the substantive expertise in patent matters to be found in other jurisdictions. Therefore, they are keen to consider judgments on the same issue from other jurisdictions. 12. How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? Defendants commonly delay proceedings by requesting postponements; under the Greek court system, such requests are granted more often than not if it is the first time that such a request has been made. Plaintiffs always have the opportunity to oppose such requests, especially if witnesses from overseas are due to attend hearings. 13. Is it possible to obtain preliminary injunctions? If so, under what circumstances? Preliminary injunctions are granted in urgent cases where the judge can establish a prima facie actionable claim for the petitioner. Given the complexity of patent issues, the main problem is that a certain amount of preparation is required in order to initiate preliminary injunctive relief proceedings, and in most cases the courts tend to be sympathetic to the circumstances 58 Patents in Europe 2011/2012
There is no set formula for calculating damages and the chosen calculation depends on the court s discretionary judgment and the claim put forward by the plaintiff surrounding a patent infringement matter. 14. How much should a litigant plan to pay to take a case through to a decision at first instance? This depends on the case and cannot be assessed arbitrarily. In comparison with other jurisdictions, is considered to be one of the least expensive jurisdictions for filing suit against an infringer. 15. Is it possible for the successful party in a case to obtain costs from the losing party? Yes. Based on the applicable provisions, the winning party is almost always guaranteed to secure its court fees for the matter if they are claimed appropriately in the action. 16. What are the typical remedies granted to a successful plaintiff by the courts? The typical remedies are: An injunction, which may be temporary or permanent (depending on the circumstances) and may also be enforceable immediately or not (depending on the claim submitted). A fine for violation of a court order, which is measured per infringing item found, calculated in regard to a monetary amount requested by the plaintiff and assessed by the court. Seizure of infringing items and possible retention by a court-appointed garnishee, which may also be the plaintiff s legal representative. Publication of the court order in the press (if so requested by the plaintiff) at the defendant s cost and under the plaintiff s supervision. 17. How are damages awards calculated? Is it possible to obtain punitive damages? Damages in patent infringement cases are usually calculated either as the applicable equivalent of royalties or as loss of profits. There is no set formula for calculating damages and the chosen calculation depends on the court s discretionary judgment and the claim put forward by the plaintiff. 18. How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? It is not uncommon for courts to grant permanent injunctions that are immediately enforceable if there are circumstances that require this, particularly in relation to irreparable harm and damage. 19. How long does it take to obtain a decision at first instance and is it possible to expedite this process? The length of time needed for proceedings at first instance depends on the caseload of the court at the time when the matter proceeds to a hearing. An injunction petition proceeding takes a few months, while a main infringement action may take more than a year, depending on possible postponements. The process can be Patents in Europe 2011/2012 59
expedited by requesting an earlier court hearing, if available. 20. Under what circumstances will the losing party in a first instance case be granted the right to appeal? How long does an appeal typically take? An appeal is possible only for the decision on the main action (and not for the injunction, which may be stayed in certain circumstances). The right to appeal the main action decision is not subject to the granting of a relevant right to appeal; provided that there are grounds to appeal, the interested party may do so and the appeal court will examine ex officio whether the appeal has grounds. The adjudication of an appeal court proceeding takes more than 18 months. 21. Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation? In the main infringement action, and provided that the proceeding is before the three-member court of first instance (this depends on the legal grounds for the action), the Code of Civil Procedure requires the parties to attempt mediation before the hearing. This takes the form of the plaintiff requesting to meet with the defendant and filing with the court a report on the outcome of the meeting before the hearing. If the meeting has a successful outcome and the parties settle, the safest option is to enter a consent award judgment with the court that is, the court will confirm the settlement agreement in the form of a court order, which is then enforceable as such. 22. In broad terms, how pro-patentee are the courts in your jurisdiction? Although there are no official statistics, from practical experience there are grounds for suggesting that the Greek courts tend to be pro-patentee; however, even on an ex officio basis, they always examine the validity of the patent which forms the legal basis of the action. Although this is not always a pro-patentee approach, it stems from the fact that Greek national patents are not subject to substantive examination before granting. Overall empirical data indicates that the Greek courts are often pro-patentee. 23. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it to do so? To date, 16 of the 38 European Patent Convention member states have signed up to the London Agreement, but is not one of them. It seems unlikely that will sign up to the London Agreement in the foreseeable future. 24. Are there any other issues relating to the enforcement system in your country that you would like to raise? Efforts should be made to streamline the process of protecting patent rights in the Greek courts by instituting an exclusive division within the IP court department for the adjudication of patent matters. This will help to advance the knowledge and sophistication of the Greek courts, and will also enhance the credibility and reliability of procedures to enforce patent owners legitimate rights. Eleni Lappa graduated with an LLB (hons) from Kingston University, United Kingdom and has a combined knowledge of the UK, US and Greek legal systems, having worked for a considerable time in all three jurisdictions in various positions and firms. She has extensive experience in IP law and international alternative dispute resolution. Ms Lappa has been an active member of the International Trademark Association for several years and an elected Institute of Trademark Attorneys overseas member; she is also a member of the European Communities Trademark Association and the Pharmaceutical Trademarks Group. For the past decade, she has been involved in various international IP law publications. She advises major multinational corporations on infringement matters in respect of patents, trademarks and unfair competition, and has extensive experience in Uniform Domain Name Dispute Resolution Policy matters. In 2009 Ms Lappa joined Drakopoulos Law Firm as a partner. Eleni Lappa Partner elappa@drakopoulos-law.com +30 210 6836 561 Drakopoulos Law Firm www.drakopoulos-law.com 60 Patents in Europe 2011/2012