Patents and Trademarks
Key information on patents and trademarks in Greek pharma. Prepared in association with Calavros Law Firm, a leading global law firm, this is an extract from The Pharma Legal Handbook: Greece, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
Currently, inventions of pharmaceutical products can be protected in Greece either
- by national patents, granted by Hellenic Industrial Property Organization (Greek acronym OBI) in line with Law 1733/1987 (as amended and in force) or
- by European patents granted centrally by the European Patent Office (EPO) in line with Regulation (EU) No 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, which establishes the issuance of European patents under the rules and procedures laid down in the Convention on the Grant of European Patents of 5 October 1973, as revised on 17 December 1991 and on 29 November 2000 (hereinafter referred to as EPC).
The procedure for granting a national patent before OBI includes the following stages:
- Filing of the application
- A 4-month term from the filing date for any corrections to be made or omissions to be supplemented
- An examination, conducted by OBI in order to confirm whether the invention is “new” and involves an inventive step drafting of the search report or search report will written opinion
- A 3-month term from the date of notification of the search report, for the applicant to comment on the search report
- Drafting of the final search report or final search report including written opinion
- Grant of the patent
The European procedure has not superseded the national grant procedures. So when seeking patent protection in one or more EPC contracting states one can choose between following the national procedure in each state for which he/he seeks protection and taking the European route, which in a single procedure confers protection in all contracting states.
A European patent is granted after an examination designed to establish whether the European patent application and the invention to which it relates comply with the patentability requirements of the EPC. These requirements are the basis not only for the granting of a European patent, but also for the assessment of its validity by national courts. In addition, under the EPC the extent of the protection conferred by the European patent is determined uniformly for all the contracting states.
The granting procedure is conducted by the EPO’s Receiving Section, search divisions and examining divisions. Once a European patent has been granted, there follows a nine-month period in which third parties are entitled to file a reasoned notice of opposition; and at the end of the resulting opposition proceedings, either the patent is maintained as granted or as amended or it is revoked. The decision taken in the opposition proceedings applies to all designated contracting states and can also be appealed before the EPO’s boards of appeal.
A trademark in Greece can either be registered
- at national level before the General Secretariat of Commerce and Consumer Protection of the Greek Ministry of Economy and Development in accordance with Law 4072/2012, as amended by Law 4155/2013, or
- at EU level as an ‘European Union trade mark’ (EUTM) at the European Union Intellectual Property Office (EUIPO) in line with Regulation (EU) 2017/1001 as supplemented by Commission Delegated Regulation (EU) 2018/625.
National and EU TMs coexist and are complementary to each other. The same trade mark can be registered at EU and/or national level through the filing of the relative application before the General Secretariat of Commerce and Consumer Protection of the Greek Ministry of Economy and Development. The EUTM system consists of one single registration procedure that grants the owner an exclusive right in all 28 EU countries.
2. What agencies or bodies regulate patents and trademarks?
At national level, the Hellenic Industrial Property Organization (OBI) is the only competent institution for the protection of inventions and industrial designs. The Ministry of Economy and Development’s General Secretariat of Commerce and Consumer Protection is the central authority for trademark protection.
On a European level, European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO) are the competent bodies regulating European trademarks and patents respectively.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
A patent is a legal title with duration of 20 years that can be granted for any invention having a technical character provided that it is new, involves an ‘inventive step’, and is susceptible to industrial application. An invention is considered “new” if it has not been known to the public by any means (written or oral or in any other way), before its filing date, involves an inventive step if, in an expert’s opinion, it is not based on the existing state of the art in any obvious manner and it is capable of industrial application where it can be produced and used in any field of industrial activity. It grants the owner the right to prevent others from making, using or selling the invention without permission. The invention may relate to a product, a process or an industrial application.
In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state. If its subject-matter is a process, protection is extended to products directly obtained by that process. A published European patent application provides provisional protection which is no less than that conferred by a contracting state for a published national application and which must at least include the right to reasonable compensation in the event of wrongful infringement. The standard term of a European patent is twenty years as from the date of filing. Provided that the annual renewal fees are duly paid, patents remain in force for the maximum term.
Moreover, patents of medicinal products can be additional protected by being granted a supplementary protection certificate (SPC), in accordance with Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products. SPC constitutes an intellectual property right that serve as an extension to a patent right. It applies to specific pharmaceutical products that have been authorized by regulatory authorities. It aims to offset the loss of patent protection for pharmaceutical products that occurs due to the compulsory lengthy testing and clinical trials these products require prior to obtaining regulatory marketing approval.
An SPC can extend a patent right for a maximum of five years. A six-month additional extension is available in accordance with Regulation (EC) No 1901/2006 if the SPC relates to a medicinal product for children for which data has been submitted according to a Paediatric Investigation Plan (PIP). PIPs are required to support the authorization of medicines for children. They ensure that enough data is collected on the effects of the medicine on children. The extension compensates for the additional clinical trials and testing that PIPs require.
According to article 53 of ECP, European patents shall not be granted in respect of:
- inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
- plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
- methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
The same rules apply for the registration of patent on a national basis, according to article 5 of Law 1733/1987.
A trade mark is a sign which distinguishes the goods and services of one company from those of another. As indicators of business origin, trademarks can be words, logos, devices or other distinctive features, or a combination of these.
Pursuant to article 7 of Regulation (EU) 2017/1001, the following shall not be registered as European trademarks:
a. signs which do not conform to the requirements of Article 4;
b. trademarks which are devoid of any distinctive character;
c. trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
d. trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
e. signs which consist exclusively of:
- the shape, or another characteristic, which results from the nature of the goods themselves;
- the shape, or another characteristic, of goods which is necessary to obtain a technical result;
- the shape, or another characteristic, which gives substantial value to the goods;
f. trademarks which are contrary to public policy or to accepted principles of morality;
g. trademarks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;
h. trademarks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property (‘Paris Convention’);
i. trademarks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;
j. trademarks which are excluded from registration, pursuant to Union legislation or national law or to international agreements to which the Union or the Member State concerned is party, providing for protection of designations of origin and geographical indications;
k. trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional terms for wine;
l. trademarks which are excluded from registration pursuant to Union legislation or international agreements to which the Union is party, providing for protection of traditional specialities guaranteed;
m. trademarks which consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with Union legislation or national law, or international agreements to which the Union or the Member State concerned is a party, providing for protection of plant variety rights, and which are in respect of plant varieties of the same or closely related species.
Concerning the national trademark, article 123 of Law 4072/2012 repeats the above (a)-(g) conditions as grounds for absolute refusal of trademark registration. In addition, the following cannot be protected as trademarks:
- Signs that consist of the flags, emblems, symbols, escutcheons, signs or hallmarks of Greece or any other state covered by Article 6ter of the Paris Convention for the Protection of Industrial Property;
- Signs of great symbolic value and special interest, particularly religious symbols, representations and words.
- Signs comprising geographical indications for wine and alcoholic beverages and geographical indications or appellations of origin for agricultural products that have been already registered according to the EU legislation regarding the same type of product.
- Finally, a trademark cannot be registered if it has been filed in bad faith.
4. How can patents and trademarks be revoked?
At EU level, pursuant to Article 138 of the EPC, a European patent may be revoked with effect for a Contracting State only on the grounds that:
- the subject-matter of the European patent is not patentable under Articles 52 to 57;
- the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed;
- the protection conferred by the European patent has been extended; or
- the proprietor of the European patent is not entitled under Article 60, paragraph 1.
If the grounds for revocation affect the European patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part.
The above grounds for revocation apply accordingly for national patents pursuant to article 15 of Law 1733/1987.
At EU level, article 58 of Regulation (EU) 2017/1001 provides for certain conditions under which a European trademark can be revoked. More specifically the rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
- if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
- if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered;
- if, in consequence of the use made of the trade mark by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
It should be noted that according to paragraph 2 of said article where the grounds for revocation of rights exist in respect of only some of the goods or services for which the EU trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only.
At national level, pursuant to article 160 of Law 4072/2012, a national trademark can be revoked, in whole or in part, for the same reasons provided for a European trademark. The effect of the decisions ordering the revocation of a trademark commences only when the relevant decisions become final.
5. Are foreign patents and trademarks recognized and, if so, under what circumstances?
Regulation (EU) 1257/2012 establishes the uniform protection of the European patent within participating member states. Pursuant to article 5 of said Regulation the European patent with unitary effect shall confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of the participating Member States in which it has unitary effect, subject to applicable limitations. Furthermore, according to article 7 a European patent with unitary effect as an object of property shall be treated in its entirety and in all the participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which, according to the European Patent Register:
- the applicant had his residence or principal place of business on the date of filing of the application for the European patent; or
- where point A does not apply, the applicant had a place of business on the date of filing of the application for the European patent.
In certain Member States, it may be required to ratify the EU patent through the deposition before the competent national authority of an official translation of the claims and the design of the patent, along with the relative fees, in line with their national law on patents. In Greece, according to article 23(5) of Law 1733/1987 the holder of an EU patent must deposit to OBI an authorized greek translation of the text on the basis of which EPO granted the EU patent. Attention must be paid to the fact that if the previous conditions are not met, the EU patent does not produce its effects to Greece [article 23(6) of said Law]. Lastly, article 9 of said Law establishes an international priority procedure to be followed regarding applications that have been submitted abroad.
Pursuant to article 1 of Regulation (EU) 2017/1001 an EU trade mark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union.
Furthermore, in accordance with article 177 of Law 4072/2012 a foreign trademark shall enjoy protection in Greece upon registration with the competent Greek authority, namely Administrative Trademark Committee of the Hellenic General Secretariat of Commerce and Consumer Protection.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
According to article 14(11) of Regulation (EC) No 726/2004, without prejudice to the law on the protection of industrial and commercial property, medicinal products for human use which have been authorized shall benefit from an eight-year period of data protection and a ten-year period of marketing protection, in which connection the latter period shall be extended to a maximum of 11 years if, during the first eight years of those ten years, the marketing authorization holder obtains an authorization for one or more new therapeutic indications which, during the scientific evaluation prior to their authorization, are held to bring a significant clinical benefit in comparison with existing therapies.
In line with the above, medicines enjoy an extended data and marketing protection, along with the possible granting of supplementary protection certificate (SPC), in line with Regulation (EC) No 469/2009 (for further information on SPC protection see above).
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
The relevant Greek legislation does not provide for any further limitations on detaining patent or trademark protection of any types of medicines or devices other than those generally stipulated above under Question 60.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
Pursuant to article 12 of Law 1733/1987, the licensor may declare before OBI that he consents to the granting of a licensing agreement upon compensation. The declaration is valid for two years and is registered with the national patent register, is published in the special report of industrial property and is recorded on the patent.
License agreements must be executed in writing and may be recorded on the petition of either the licensor or the licensee, duly authorized by the licensor. There is no need for the Administrative Trademark Committee to examine and approve license agreements. License agreements that have not been registered are not invalid. However, according to the leading opinion, registration is necessary in order for the licensee to claim and enforce its rights against third parties.