22 Oct
2020

Greece

Dr Helen G Papaconstantinou and Partners Law Firm

Q: How can patent owners best enforce their rights in your jurisdiction?

The first and quickest way of acting against an infringer is to request a temporary restraining order. This will be granted if the petitioner proves the existence of a prima facie serious infringement as a matter of exceptional urgency. Such request is filed concurrently with a petition for injunction and, if granted, is usually effective until the hearing of the injunction takes place. Within this framework, the patent owner may request cessation of the infringing act and removal of the allegedly infringing products from the market. The patent owner may also take measures to preserve evidence and has the right to information. The next step is the main infringement action, in which the patent owner may request compensation and moral damages.

For the most effective patent protection, adopting a prevention strategy by establishing an efficient watching system is key. This can be achieved by filing a general request with the local customs authorities, which will notify the rights holder or its representative on interception of suspected infringing goods.

Q: Are mediation and arbitration realistic alternatives to litigation?

The Greek Code of Civil Procedure provides litigants in infringement cases the option of seeking an out-of-court settlement. Mediation and arbitration are also available means for resolving IP rights disputes. Articles 867 and following of the Code of Civil Procedure provide for the rules on arbitrations; however, neither mediation nor arbitration have been sufficiently tested in Greece. The recently enacted Law 4512/2018 initiated compulsory use of mediation in legal disputes that arise from patent, trademark and industrial design infringements. This new law introduced a compulsory initial mediation session before the hearing of the case. This, along with proof of the lawyer’s compliance to the obligation to inform the client in writing about the option of mediation, is now under the new legal provisions a prerequisite for the admissibility of the lawsuit.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

Preliminary injunctions are heard before the Single Member Civil Court of First Instance and main infringement actions are heard before the Full Member Civil Court of First Instance. Greece has two specialised EU trademark and patent courts based in Athens and Thessaloniki.

Q: What level of expertise can litigants expect from courts?

The judges who serve in Greek specialised courts have received special training in IP matters during their studies at the National School of Judges before their appointment to the bench. Nonetheless, as they have only legal (and not technical) backgrounds, they have insufficient expertise to deal with complex technical issues. For this reason, expert opinions can play a key role in 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 are the most common defences for infringers.

Q: Who may represent parties engaged in
a dispute?

Only lawyers (ie, attorneys at law) who are members of a Greek bar association may represent parties before the Greek civil courts, without restriction. The complexity of most patent disputes makes it imperative that litigants entrust their cases to lawyers who specialise in IP protection. The recent Presidential Decree 31/2019 established the Hellenic Industrial Property Academy, whose aim is to introduce a system of education at national level, which will provide suitable training in the industrial property field and will lead to the acquisition of the title of ‘patent attorney’ or ‘certified patent consultant’. Certified individuals will have the right to act on behalf of their clients before the Greek Patent Office, but not before courts. The academy has not yet started functioning, as it has still a long way to go in terms of organisational matters.

Q: To what extent is forum selection possible in your jurisdiction?

Forum selection is important to ensure that court proceedings take place before a court with sufficient expertise in patent law. Patent owners may wish to initiate court proceedings before specialised courts and not before the local courts. According to legal theory and case law, the competence of the specialised courts in Athens and Thessaloniki is reserved for main patent actions (ie, main infringement actions and nullity actions against a patent), but not for temporary restraining orders or injunctions. The competent courts for preliminary proceedings are the local courts. The local courts’ lack of expertise in patent law may negatively affect the protection of patent owners’ rights. Therefore, patent owners generally try to file preliminary proceedings before the specialised courts in Athens or Thessaloniki.

Q: To what extent is pre-trial discovery permitted?

Greek law does not provide for pre-trial discovery. However, it gives the patent owner the right to take measures to preserve evidence and request the defendant to provide information (eg, invoices or the number of products that have been distributed) within the framework of a trial.

Q: To what extent is evidence written and oral at proceedings?

For the most part, evidence is in writing. An 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-instance court. The plaintiff must serve the lawsuit within 30 days (or 60 days if the defendant resides abroad) from filing. Parties must file their written arguments and evidence within 100 days (or 130 days when the defendant resides abroad) from the action and a reply to each other’s arguments 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 this term, the file is deemed as closed and, within another 15 days, the judge in charge of the case is appointed. The hearing of the case takes place within the next 30 days, without examination of witnesses in court, unless the bench decides that this is absolutely necessary.

Q: What role, if any, can expert witnesses play?

Expert witnesses may provide sworn affidavits. If the judge decides that an oral hearing is necessary, one expert witness may testify orally before the court. Given that the judges dealing with patent matters have only legal (not technical) backgrounds, the role of expert witnesses in the procedure is of paramount importance. Where complex issues are involved, such testimonies may prove to be decisive to the outcome of the case.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

Greek law generally accepts the doctrine of equivalents, according to which due account must be taken of any element that is equivalent to an element specified in the claims. However, the case law is not very sophisticated in this respect.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

Certain rights that are considered patent rights in other jurisdictions are exempt from protection under Greek patent law (eg, software 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 lack of technical training of Greek judges, as well as lack of extensive case law in complicated technical fields.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Precedential decisions are not binding on the Greek courts. However, Greek judges take the established case law into consideration and tend to stay in line with it.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Although Greek courts are not bound by decisions 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 realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Until recently, defendants had scope to cause significant delays of proceedings. The introduction of the relatively new Civil Procedure Rules has greatly limited the opportunities for defendants to obtain postponements. However, the appointment of technical experts can cause delays of 18 months or more.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

For a petitioner to be granted a permanent injunction, it must prove the existence of serious and urgent infringement. The petitioner must also prove the novelty and inventive step of the invention if the defendant raises objections in this respect.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

In main infringement action proceedings, parties may expect the issuance of the court decision within six to eight months from the hearing.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

The costs involved in taking a case through to a first-instance decision are not easy to estimate, as they depend on the complexity of the case, the duration of the proceedings, potential involvement of technical experts and possible translation costs. However, it is worth noting that litigation costs in Greece are considerably lower compared to other EU member states. Nevertheless, the costs of preliminary proceedings and main patent proceedings can be roughly estimated to a range between €20,000 and €50,000, but higher fees should be expected in complicated cases where several technical experts are involved and close cooperation between client and counsel is necessary for an extended period.

Q: To what extent are the winning party’s costs recoverable from the losing party?

According to the Civil Procedure Rules, the losing party must pay the winning party’s legal fees, as determined by the court. Historically, this amount has often been calculated on a very conservative basis, not covering all attorneys’ fees. However, since EU Directive 48/2004/EC was implemented into Greek law, the courts are obliged to determine the actual legal fees. If the plaintiff seeks compensation, the related court costs may be much higher, depending on the requested amount, and may reach approximately 1.1% thereof.

Q: What remedies are available to a successful plaintiff?

The typical remedies granted to a successful plaintiff are:

  • a temporary or permanent injunction;
  • compensation for damages; and
  • seizure and/or destruction of the infringing goods.

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 a summary of the decision in the Greek daily press.

Q: How are damages awards calculated?

The patent owner may request compensation (ie, based on reasonable licensing fees) and moral damages, but not punitive damages. To obtain compensation or moral damages, the plaintiff must prove the negligence of the infringer. In Greece, three factors determine the compensation claim:

  • the actual loss;
  • the defendant’s unfair profits; and
  • reasonable licensing fees.

However, proving the exact amount of the damage or enrichment is often considerably difficult. Where the patent owner cannot collect enough evidence, it may request the infringer to provide information such as invoices or the quantity of distributed products. In addition to the compensation claim, a patent owner may request moral damages; however, the amount of moral damages is difficult to estimate.

Q: Under what circumstances will courts grant permanent injunctions?

The court will grant a permanent injunction if the petitioner shows that its patent is new and inventive and that the defendant is infringing it. Unfortunately, no data is available regarding the outcome of compensation actions in Greece.

Q: Does the losing party at first instance have an automatic right of appeal?

All final decisions of the first-instance courts are open to appeal within 30 days of notification to the losing party in case of Greek nationals or 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 its publication. The losing party may contest all aspects of the judgment that relate to legal issues or incorrect findings regarding the facts of the case. The right to appeal is provided only in main infringement action proceedings; preliminary injunction decisions cannot be appealed.

Q: How long does it typically take for the appellate decision to be handed down?

The timeframe for appeal proceedings is on average 18 months but may be longer, depending on the circumstances.

Q: Is it possible to take cases beyond the second instance?

The losing party may appeal a second-instance decision before the Supreme Court within 30 days of notification to the losing party in case of Greek nationals or 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 its publication.

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, because European patents are granted after substantial examination by the EPO regarding novelty and inventive step.

Q: Are there other fora outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

There are no other fora outside the Greek court system for asserting patents.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The newly introduced compulsory initial mediation session in legal disputes arising from patent infringement is certainly a significant change that will affect patent litigation and will hopefully contribute to the reduction of the workload of Greek courts. This session, along with proof of the attorney’s compliance to the obligation to inform the client in writing about the option of mediation, is, under the new legal provisions, a prerequisite for the admissibility of the lawsuit.

Dr Helen G Papaconstantinou and Partners Law Firm

2 Coumbari Street

Kolonaki

Athens 10674

Greece

Tel +30 210 362 5757

Fax +30 210 362 6742

Web http://www.hplaw.biz

Maria Athanassiadou

Partner

[email protected]

Maria Athanassiadou is a partner and co-founder at Dr Helen G Papaconstantinou and Partners, Law Firm and heads the patents and industrial designs department. She is an attorney at law with more than 20 years’ experience in intellectual property, focusing her practice on IP litigation, prosecution and counselling, with a particular emphasis on patents, supplementary protection certificates, utility models , industrial designs and trademarks.

She graduated from the University of Athens with a law degree, is admitted to practise before the Supreme Court and the Council of State and is a member of the Athens Bar. She is an active member of the International Federation of Intellectual Property Attorneys, INTA and the Pharmaceutical Trademarks Group, and regularly contributes to various trademark, design and patent publications.