Patents

Which are the rights conferred to the patent holder?

The patent holder has the exclusive right to exploit the invention during its validity term, among others, meaning to produce, use, offer for sale, sell, license or take advantage in any other way of this property (positive powers of patentee). Such property may include a product and/or a manufacturing process and/or a use or an application thereof.

Furthermore, the patent holder has the right to prohibit the production, use, import in the country or any other way of exploitation of the patent by an unauthorized third party (negative powers of patentee).

Which are the formal requirements for a national patent?

A patent may be granted subject to the following formal requirements:

• Submission of an application at the GPO including full particulars of the applicant;
• Τhe file must include a description, claim(s), a title and an abstract (mandatory); optionally, the file may include drawing(s).
• Payment of official fees;

Which are the material requirements for the grant of a patent?

The invention must a) be novel, b) involve an inventive step and c) be susceptible to industrial applicability. Two of the important criteria for assessing the patentability of a patent are: i) the state of the art with available teachings in the relevant technical field and ii) the notion of the so-called “person having ordinary skill in the art”, according to whom inventiveness can be assessed.

Are divisional patent applications available by the patent law and under which conditions?

If a patent application covers more than one inventions which, however, are interconnected, the applicant may file divisional applications until the date of grant of the patent title maintaining the filing date of the initial application.

What is a patent of modification and how can it be of importance to the patentee?

If an invention is a modification of another invention already protected by a patent (main patent), the patentee may apply for issuance of a patent of modification provided that the scope of protection of said patent has at least one claim in common with the main patent. No maintenance fees are due for the patent of modification which follows the fate of the main patent with regard to the duration of its validity and its possible cancellation.

How is the scope of patent protection defined?

Patent claim(s) are of essence for defining the scope of protection requested through the patent application. Said claim(s) refer to the relevant content of the description and – if available – of any drawings which explain the particulars of an invention. In this sense, the technical teaching corresponding to the invention must be clear and precise as well as practically reproducible in order to be protected as a patent.

What are the available legal means, if a patent application is rejected by the GPO?

A rejecting decision by the GPO being an individual administrative law act – e.g. in case of a petition for issuance of a supplementary protection certificate, SPC – may be challenged through a petition for cancellation before the Council of State (Supreme Administrative Court).

Is cancellation of a granted patent possible? If yes, how and on what grounds?

A granted patent is a sui generis private law right and as such it may be cancelled through a civil court decision upon filing of an ordinary civil action by any person having legitimate interest to such a request. Cancellation of a patent may be total or partial. Patent cancellation can be sought, if a) the applicant is not the inventor or a person entitled to become the patent holder; b) the invention is not patentable, e.g. it seeks protection for solely a mathematical method or is devoid of novelty or inventiveness; c) the invention lacks susceptibility to industrial applicability according to the person having ordinary skill in the art; and d) the patent was granted for a scope of protection going beyond that requested by the applicant.

How can a patent right be enforced against infringement in the Greek territory?

Greek patent law was harmonized (Law 3966/2011) according to the provisions of Directive 2004/48/EC. Consequently, cease and desist claims can be raised and - under circumstances - compensation can be requested against an infringer. In addition, publication of court decision may be ordered, court expenses can be awarded and precautionary measures may be sought by the patentee.

How are employees’ inventions protected and under what conditions?

Employees’ inventions belong to their employer provided that they were made in the framework of a contractual relationship agreed upon between the two parties for conducting research and for developing the involved invention. In case of a dependent invention (i.e. invention made by the employee using materials and/or data belonging to the employer’s enterprise) the employee is entitled to a 60% share and the employer to a 40% share of co-ownership of the right to the invention. In any other case apart from the above, the invention belongs to the employee.

Which are the ways of exploitation of a patent?

With regard to the exploitation of a patent right during a 20-years legal monopoly it is worth mentioning the following aspects:

• Licensing: it may be direct licensing or even cross licensing between two persons or entities who exchange the exploitation of their respective rights;
• Transfer of a patent: it may be effected e.g. by way of assignment, merger, inheritance and other;
• Favorable taxation and other incentives by the State may motivate patent exploitation;
• Financial planning can be supported by patented innovation;
• Improvement of corporate profile;
• Competitive advantage(s) in favor of the patentee as opposed to other market participants manufacturing products or using processes that are either unprotected or are not susceptible to patentability.

How and under what conditions can a compulsory patent license be obtained?

I. In case of imperative need to serve public health and/or national defense a compulsory license can be granted in favor of the State or of a legal entity of the public sector by virtue of a Ministerial Decree (art. 14 Law 1733/1987). Such license is granted provided that the patented invention has not been the object of manufacturing exploitation in Greece or the relevant production is not considered adequate in order to cover the domestic needs. Such cases might be an epidemic outburst (e.g. pharmaceutical inventions) or imminent armed conflict circumstances (e.g. inventions for weapons and ammunition). Before issuance of a relevant Decree the patentee and any interested third party are invited to express their 368 attitude. Financial compensation is reserved in favor of the patentee. In case of disagreement with respect to the granted amount of compensation the patentee may seek judicial protection (interlocutory proceedings).

II. A compulsory (non-contractual) license can be granted to any interested third party (art. 13 Law 1733/1987) under the following conditions:

• A formal request is addressed to the patentee for granting a patent license announcing the third party’s intention to seek a relevant court decision thereto. Such request has to be communicated to the patentee the latest one (1) month prior to court action;
• Issuance of a court decision, provided that the above mentioned official request was rejected by the patentee without invoking substantiated reasons for not having exploited
• its invention as yet at all or to an adequate degree;
• The invention was not exploited altogether or was exploited in a considerably limited range within a period of three (3) years as of the date of grant or four (4) years as of the filing date of the application for grant of a patent.
• The third party requesting a compulsory patent license must put forward evidence of its capability to exploit the involved invention.

III. A patent holder (petitioner) may request a court to grant a non-contractual patent license over an earlier patent right (art. 13 par.4 Law 1733/1987), if the following presuppositions are met:

• The petitioner’s invention is related to the invention of the prior patent;
• The exploitation of the petitioner’s invention is not possible without infringing upon the rights of the prior patent holder(s); and
• The petitioner’s invention constitutes an important progress as compared with the invention protected by the prior patent. Once the Court has sustained the petitioner’s request, the holder of the earlier patent may in exchange request the court to grant a compulsory license with respect to the invention protected by the later patent.

Are there so-called first filing requirements for patent applications filed by Greeks and/or for inventions made by Greeks?

Patent law explicitly provides for the mandatory requirement to first file a European Patent application or a PCT application at the Greek Patent Office (Receiving Office):

• if the applicant is a Greek citizen; and
• if no priority is claimed based on an earlier patent filing in Greece. This latter case concerns patent applications filed by Greek citizens to protect inventions connected with the national defense (art. 3 par. 2 of Presidential Decree No. 77/1988 for EP applications and art. 3 par. 2 of Presidential Decree 16/1991 for PCT applications in connection with art. 1 and 2 of Law 4325/1963 about inventions concerning national defense).

According to said provisions patent applications falling within the scope of national defense are handled separately and, if confirmed, confidentially by the Ministry of Defense.

There is no explicit regulation governing aspects of first filing requirement at the Greek Patent Office (Receiving Office) for European patent applications or PCT applications filed in the name of applicants seated abroad but having at least one Greek citizen as (co-)inventor. It is only by way of interpretation that one could come to the conclusion that said patent application must first be filed with the GPO. There is no relevant case law concerning this specific circumstance (Greek inventor, not applicant). Furthermore, the GPO’s practice has never applied the law 4325/1963 (inventions concerning national defense) on patent applications with a Greek inventor covering inventions other than those connected with national defense. On the other hand, one should take into account the theoretically severe criminal law consequences of a piece of law despite the fact that it has remained inapplicable over decades now, but could arise in the future.

In this respect it is also noteworthy that there is no foreign filing license possibility provided for by the Greek patent law.

What is a Supplementary Protection Certificate (SPC)?

EU Regulation 469/2009 for medicinal products and Regulation 1610/1996/EC for plant agents provide for the issuance by national patent offices of Supplementary Protection Certificates under specific conditions, granting patent protection for up to 5 years after expiration of the 20-years term of the basic patent. If these conditions are not met, the GPO will not grant said titles. The SPC’s ratio is to allow the patent holders to recover part of their investments for a period that elapsed until issuance of a market authorization for a product covered by their basic patent. Specifically for pediatric pharmaceuticals (Regulation 1901/2006/EC), the holder of an SPC title is rewarded with a further 6-months extension of the SPC term, provided that the requirement of studies referred to in the agreed pediatric investigation plan (PIP) has been fulfilled (see more under GLD’s chapter on SPCs).

In the absence of EU law provisions SPC’s with or without a pediatric extension are protected in the Greek territory according to national patent law which is applicable mutatis mutandis.

What is a Utility model (UM)?

The UM provides for a solution to a technical problem of somehow lower complexity than a patent. It confers protection to three-dimensional object such as tools, kitchen utensils, devices, components and the like.

Which are the substantial requirements for the grant of a UM Certificate?

The three-dimensional object can be protected with a UM if it is new and is susceptible to industrial applicability.

What is the protection term of a UM?

The UM can be protected for up to 7 years subject to payment of annuities.

What are the advantages for filing a European Patent Application?

Choosing to file a European Patent Application is connected with advantages such as: a) central filing and examination procedure at the European Patent Office (EPO), thus avoiding the need to have a granted EP examined anew on a national level; b) time and cost effectiveness; c) legal certainty due to uniform practice of the EPO and extensive case law of the Board of Appeal; d) once granted by the EPO, the holder of a European Patent has the possibility of obtaining protection in those countries members of the European Patent
Convention (EPC) which are of commercial and/or strategic interest (business plan).

Infringements of the Greek phase of a European patent are protectable through an ordinary civil action and possibly interlocutory injunction before competent courts.

What are the advantages of filing a PCT application?

Filing an international patent application (PCT) with the World Intellectual Property Organization (WIPO) is advisable for those who require protection in countries not covered by the EPC. Such handling enables the applicant to have ample time for assessing the value of its invention, for improving its initial application taking into account the international preliminary search report and for adapting the geographical breadth of protection to its business and export needs.

It is noteworthy that, specifically for PCT applicants who are Greek citizens with residence in Greece, a strong reduction of the filing fees down to 10% (i.e. € 116.30) of the regular fee (i.e. € 1,163) is offered due to the prevailing economic circumstances in the country.

Given WIPO’s administrative role for PCT applications, a patent title is only granted by national or regional offices subject to a relevant procedure. A PCT application must first enter the EP phase before being validated in the Greek jurisdiction.