Supreme Court demands thorough reasoning on novelty criteria

In a major dispute over DVD production royalties, the Greek Supreme Court has held that the Appeals Court’s reasoning – having accepted the European patent holder’s claim – was insufficient. According to the Supreme Court, the Appeals Court did not adequately explain why these particular patents were considered new.

The defendant had disputed the validity of the European patents and filed prior art and other documents (eg, technical expert opinions) to establish that the patents were not novel, since they obviously derived from the state of the art that existed when they were filed. The Supreme Court determined that the Appeals Court’s decision erroneously implemented the law, since it failed to make an in-depth reference to the reasons why the patents were considered to exceed the normal technological progress at the time of their filing.

Under Greek law, patents are granted only to inventions that meet certain essential legal conditions:

• novelty;
• the existence of an inventive step; and
• susceptibility to industrial application.

An invention is considered ‘new’ if it does not form part of the state of the art. According to the principle of universality, this could mean anything that is publicly available anywhere in the world, conveyed through a written or oral description, before the application’s filing date. Because of this, determining the new element begins at the manufacturing process. The product is novel if it differs from similar products because it includes essential new features at this initial stage or if the final result shows a significant improvement on previous versions. Regardless of whether a product’s improvement concerns the mode of production, the final result, reduction in production costs or all of the above, it can still be considered new – so long as the product is not a simple adaptation of already known methods with no significant improvement.

An invention is considered to involve an inventive step if it does not devolve – in an obvious way – from existing art according to the judgement of an average person who is skilled in the art. In other words, a solution to a technical problem should not be within this person’s capabilities, nor should it appear as an obvious link in the chain of technological progress. It should appear as something that exceeds normal technological progress and results in a solution of a technical problem that was not foreseeable. An already known solution solving a different technical problem is an invention, but only if it was not technically expected to solve this problem. The combination of several technical processes aiming to solve a technical problem in a single way is also considered an invention, but only in cases where this combination is unclear to someone skilled in the art. An invention, finally, is considered suitable for industrial application if it can be produced or used in any field of productive activity.

Patent invalidity in Greece

Courts can declare patents invalid on various legal grounds, such as when a substantive condition required for the grant is missing. Any third party with a legitimate interest in nullity or defensive infringement proceedings can challenge a patent’s validity. In the context of nullity proceedings, following a court’s decision, a patent is declared invalid erga omnes, which affects the patent from that point onwards. On the other hand, when the patent’s validity is challenged as a defence in infringement proceedings, the court’s decision is not universally enforceable.

In the case at hand, the court determined that:

• the Appeals Court “does not mention the methods by which it compares the particular solution, nor exactly what "results" the particular technology achieved, which could not be achieved with the methods that were available until then”;
• while there were novel elements based on collected evidence, the court’s decision “does not refer to the “relevant research" data regarding the solution and the level of technique, which existed and was known anywhere in the world, so that from their comparison it can be safely deduced that no other description of the invention was published (or known to the general public) before the particular date, anywhere in the world”; and
• while it claims that innovation brings significant improvements to the relevant sector, the decision “does not mention the "disadvantages" of the previous method, nor quantitative and qualitative data, to justify its judgment, failing also to justify the superiority of the method compared to the closest methods that were used to solve similar technical problems”.

Based on these insufficient assumptions, the Supreme Court cancelled the appellate court’s decision and remanded the case back for reconsideration.

According to the Supreme Court’s interpretation of the law, Greek courts dealing with patent cases should be precise and detailed when determining whether an invention meets the substantial patentability criteria set out in the law, and why. Parties in patent infringement cases should ensure that they provide the court with sufficient evidence (eg, technical expert reports and any documentation relating to the prior state of art) together with detailed technical analysis and comparative studies of the disputed patents and relevant prior art, so judges can provide a thorough reasoning on whether a patent should be considered novel.