Global Patent Litigation 2021 - Helping businesses navigate the new normal - Dr. Helen G. Papaconstantinou ...
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Global Patent
Litigation 2021
Helping businesses navigate
the new normal
Greece
Dr Helen G Papaconstantinou and Partners Law Firm
Maria Athanassiadou
Dr Helen G Papaconstantinou and Partners Law Firm | Greece
Greece
By Maria Athanassiadou, Dr Helen G Papaconstantinou and Partners Law Firm
Q: How can patent owners best enforce their Q: Are mediation and arbitration realistic
rights in your jurisdiction? alternatives to litigation?
The first and quickest way of acting against an The Greek Code of Civil Procedure provides
infringer is to request a temporary restraining litigants in infringement cases the option of
order. This will be granted if the petitioner seeking an out-of-court settlement. Mediation and
proves the existence of a prima facie serious arbitration are also available means for resolving
infringement as a matter of exceptional urgency. IP rights disputes. Articles 867 and following of
Such request is filed concurrently with a the Code of Civil Procedure provide for the rules
petition for injunction and, if granted, is usually on arbitrations; however, neither mediation nor
effective until the hearing of the injunction arbitration have been sufficiently tested in Greece.
takes place. Within this framework, the patent The recently enacted Law 4512/2018 initiated
owner may request cessation of the infringing compulsory use of mediation in legal disputes
act and removal of the allegedly infringing that arise from patent, trademark and industrial
products from the market. The patent owner design infringements. This new law introduced a
may also take measures to preserve evidence compulsory initial mediation session before the
and has the right to information. The next step hearing of the case. This, along with proof of the
is the main infringement action, in which the lawyer’s compliance to the obligation to inform the
patent owner may request compensation and client in writing about the option of mediation, is
moral damages. now under the new legal provisions a prerequisite
For the most effective patent protection, for the admissibility of the lawsuit.
adopting a prevention strategy by establishing
an efficient watching system is key. This can
be achieved by filing a general request with Q: Who hears patent cases – for example,
the local customs authorities, which will individual judges, a panel of judges, a mix of
notify the rights holder or its representative on judges and technical experts, judges and juries?
interception of suspected infringing goods. Preliminary injunctions are heard before the Single
Member Civil Court of First Instance and main
Global Patent Litigation 2021 77
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Greece | Dr Helen G Papaconstantinou and Partners Law Firm
the assessment of the facts and in the outcome of
a case.
Q: Are validity and infringement dealt with
together in proceedings?
Greece has a bifurcated system. The law provides
for separate procedures before the competent
civil courts for patent validity challenges and
infringement actions. Consequently, full or partial
nullity declarations can be made by means of an
independent legal action or a counterclaim within
the framework of the infringement proceedings. In
practice, invalidity objections and nullity actions
Maria Athanassiadou are the most common defences for infringers.
Partner
m_athanasiadou@hplaw.biz
Q: Who may represent parties engaged in
Maria Athanassiadou is a partner at Dr Helen G a dispute?
Papaconstantinou and Partners Law Firm and heads Only lawyers (ie, attorneys at law) who are members
the patents and industrial designs department. of a Greek bar association may represent parties
She is an attorney at law with more than 25 years’ before the Greek civil courts, without restriction.
experience in intellectual property, focusing her The complexity of most patent disputes makes
practice on IP litigation, prosecution and counselling, it imperative that litigants entrust their cases
with a particular emphasis on patents, utility models, to lawyers who specialise in IP protection. The
supplementary protection certificates, industrial recent Presidential Decree 31/2019 established the
designs and trademarks. Hellenic Industrial Property Academy, whose aim is
She graduated from the University of Athens with to introduce a system of education at national level,
a law degree and holds a master’s in Spanish studies which will provide suitable training in the industrial
from the University of Barcelona. She is admitted to property field and will lead to the acquisition of
practise before the Supreme Court and the Council the title of ‘patent attorney’ or ‘certified patent
of State and is a member of the Athens Bar. She is consultant’. Certified individuals will have the right
an active member of the International Federation to act on behalf of their clients before the Greek
of Intellectual Property Attorneys, INTA and the Patent Office, but not before courts. The academy
Pharmaceutical Trademarks Group. has not yet started functioning, as it has still a long
way to go in terms of organisational matters.
infringement actions are heard before the Full Q: To what extent is forum selection possible in
Member Civil Court of First Instance. Greece has your jurisdiction?
two specialised EU trademark and patent courts Forum selection is important to ensure that
based in Athens and Thessaloniki. court proceedings take place before a court with
sufficient expertise in patent law. Patent owners
may wish to initiate court proceedings before
Q: What level of expertise can litigants expect specialised courts and not before the local courts.
from courts? According to legal theory and case law, the
The judges who serve in Greek specialised courts competence of the specialised courts in Athens and
have received special training in IP matters Thessaloniki is reserved for main patent actions
during their studies at the National School of (ie, main infringement actions and nullity actions
Judges before their appointment to the bench. against a patent), but not for temporary restraining
Nonetheless, as they have only legal (and not orders or injunctions. The competent courts for
technical) backgrounds, they have insufficient preliminary proceedings are the local courts. The
expertise to deal with complex technical issues. For local courts’ lack of expertise in patent law may
this reason, expert opinions can play a key role in negatively affect the protection of patent owners’
78 Global Patent Litigation 2021
www.IAM-media.comDr Helen G Papaconstantinou and Partners Law Firm | Greece
rights. Therefore, patent owners generally try to be taken of any element that is equivalent to an
file preliminary proceedings before the specialised element specified in the claims. However, the case
courts in Athens or Thessaloniki. law is not very sophisticated in this respect.
Q: To what extent is pre-trial discovery permitted? Q: Are there problems in enforcing certain types
Greek law does not provide for pre-trial discovery. of patent relating to, for example, biotechnology,
However, it gives the patent owner the right to business methods or software?
take measures to preserve evidence and request the Certain rights that are considered patent
defendant to provide information (eg, invoices or rights in other jurisdictions are exempt from
the number of products that have been distributed) protection under Greek patent law (eg, software
within the framework of a trial. and business methods). In any case, the factor
that is most likely to give rise to difficulties in
the enforcement of certain patent rights is the
Q: To what extent is evidence written and oral at lack of technical training of Greek judges, as
proceedings? well as lack of extensive case law in complicated
For the most part, evidence is in writing. An technical fields.
introductory writ is filed with the court and served
on the defendant. The civil action starts with the
filing of the lawsuit with the competent first- Q: To what extent are courts obliged to consider
instance court. The plaintiff must serve the lawsuit previous cases that have covered issues similar to
within 30 days (or 60 days if the defendant resides those pertaining to a dispute?
abroad) from filing. Parties must file their written Precedential decisions are not binding on the
arguments and evidence within 100 days (or 130 Greek courts. However, Greek judges take the
days when the defendant resides abroad) from established case law into consideration and tend to
the action and a reply to each other’s arguments stay in line with it.
and evidence must be filed within a further 15-
day period. Witness testimonies are submitted in
the form of sworn affidavits. With the expiry of Q: To what extent are courts willing to consider
this term, the file is deemed as closed and, within the way in which the same or similar cases
another 15 days, the judge in charge of the case have been dealt with in other jurisdictions? Are
is appointed. The hearing of the case takes place decisions from some jurisdictions more persuasive
within the next 30 days, without examination of than those from others?
witnesses in court, unless the bench decides that Although Greek courts are not bound by decisions
this is absolutely necessary. from other jurisdictions, they tend to take them
into consideration in similar cases – especially the
case law of German, UK and French patent courts.
Q: What role, if any, can expert witnesses play?
Expert witnesses may provide sworn affidavits.
If the judge decides that an oral hearing is Q: What realistic options are available to
necessary, one expert witness may testify orally defendants seeking to delay a case? How might a
before the court. Given that the judges dealing plaintiff counter these?
with patent matters have only legal (not technical) Until recently, defendants had scope to cause
backgrounds, the role of expert witnesses in the significant delays of proceedings. The introduction
procedure is of paramount importance. Where of the relatively new Civil Procedure Rules has
complex issues are involved, such testimonies may greatly limited the opportunities for defendants to
prove to be decisive to the outcome of the case. obtain postponements. However, the appointment
of technical experts can cause delays of 18 months
or more.
Q: Is the doctrine of equivalents applied by courts
in your jurisdiction and, if so, what form does it
take? Q: Under what circumstances, if any, will a court
Greek law generally accepts the doctrine of consider granting a preliminary injunction? How
equivalents, according to which due account must often does this happen?
Global Patent Litigation 2021 79
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For a petitioner to be granted a permanent • a temporary or permanent injunction;
injunction, it must prove the existence of serious • compensation for damages; and
and urgent infringement. The petitioner must • seizure and/or destruction of the infringing
also prove the novelty and inventive step of the goods.
invention if the defendant raises objections in
this respect. In many cases the courts may threaten the losing
party with a monetary penalty for every breach of
the judgment. They may also permit publication of
Q: What is the realistic timescale to get a decision a summary of the decision in the Greek daily press.
at first instance from the initiation of proceedings?
In main infringement action proceedings, parties
may expect the issuance of the court decision Q: How are damages awards calculated?
within six to eight months from the hearing. The patent owner may request compensation (ie,
based on reasonable licensing fees) and moral
damages, but not punitive damages. To obtain
Q: How much should a litigant budget for in compensation or moral damages, the plaintiff must
order to take a case through to a decision at first prove the negligence of the infringer. In Greece,
instance? three factors determine the compensation claim:
The costs involved in taking a case through to a • the actual loss;
first-instance decision are not easy to estimate, • the defendant’s unfair profits; and
as they depend on the complexity of the case, the • reasonable licensing fees.
duration of the proceedings, potential involvement
of technical experts and possible translation However, proving the exact amount of the
costs. However, it is worth noting that litigation damage or enrichment is often considerably
costs in Greece are considerably lower compared difficult. Where the patent owner cannot collect
to other EU member states. Nevertheless, the enough evidence, it may request the infringer
costs of preliminary proceedings and main to provide information such as invoices or the
patent proceedings can be roughly estimated to a quantity of distributed products. In addition to the
range between €20,000 and €50,000, but higher compensation claim, a patent owner may request
fees should be expected in complicated cases moral damages; however, the amount of moral
where several technical experts are involved and damages is difficult to estimate.
close cooperation between client and counsel is
necessary for an extended period.
Q: Under what circumstances will courts grant
permanent injunctions?
Q: To what extent are the winning party’s costs The court will grant a permanent injunction if
recoverable from the losing party? the petitioner shows that its patent is new and
According to the Civil Procedure Rules, the losing inventive and that the defendant is infringing it.
party must pay the winning party’s legal fees, as Unfortunately, no data is available regarding the
determined by the court. Historically, this amount outcome of compensation actions in Greece.
has often been calculated on a very conservative
basis, not covering all attorneys’ fees. However,
since EU Directive 48/2004/EC was implemented Q: Does the losing party at first instance have an
into Greek law, the courts are obliged to automatic right of appeal?
determine the actual legal fees. If the plaintiff All final decisions of the first-instance courts
seeks compensation, the related court costs may be are open to appeal within 30 days of notification
much higher, depending on the requested amount, to the losing party in case of Greek nationals or
and may reach approximately 1.1% thereof. within 60 days of notification in case of foreign
nationals. If no official notification takes place,
the decision may be appealed within two years of
Q: What remedies are available to a successful its publication. The losing party may contest all
plaintiff? aspects of the judgment that relate to legal issues
The typical remedies granted to a successful or incorrect findings regarding the facts of the
plaintiff are: case. The right to appeal is provided only in main
80 Global Patent Litigation 2021
www.IAM-media.comDr Helen G Papaconstantinou and Partners Law Firm | Greece
infringement action proceedings; preliminary jurisdiction? If so, under what circumstances
injunction decisions cannot be appealed. might it be appropriate to use them?
There are no other fora outside the Greek court
system for asserting patents.
Q: How long does it typically take for the appellate
decision to be handed down?
The timeframe for appeal proceedings is on Q: Are there any other issues relating to the
average 18 months but may be longer, depending enforcement system in your country that you
on the circumstances. would like to raise?
The newly introduced compulsory initial
mediation session in legal disputes arising from
Q: Is it possible to take cases beyond the second patent infringement is certainly a significant
instance? change that will affect patent litigation and will
The losing party may appeal a second-instance hopefully contribute to the reduction of the
decision before the Supreme Court within 30 days workload of Greek courts. This session, along
of notification to the losing party in case of Greek with proof of the attorney’s compliance to the
nationals or within 60 days of notification in case obligation to inform the client in writing about
of foreign nationals. If no official notification takes the option of mediation, is, under the new legal
place, the decision may be appealed within two provisions, a prerequisite for the admissibility of
years of its publication. the lawsuit.
Q: To what extent do the courts in your
jurisdiction have a reputation for being pro-
patentee?
The lack of official data does not enable a precise
reply to this question. However, practice indicates
a pro-patentee tendency in the Greek courts.
Further, nullification of validated European
patents is rare in comparison with national patents, Dr Helen G Papaconstantinou and Partners
because European patents are granted after Law Firm
substantial examination by the EPO regarding 2 Coumbari Str, Kolonaki
novelty and inventive step. Athens 10674
Greece
Tel +30 210 362 5757
Q: Are there other fora outside the court system Fax +30 210 362 6742
in which it is possible to assert patents in your Web www.hplawfirm.com
Global Patent Litigation 2021 81
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