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In a recent decision, the Athens Full Member Court of First Instance (IP Division) ruled that the successor-in-title of a patent is not entitled to a claim for damages regarding the time period between the patent’s transfer agreement and the corresponding recording thereof in the patent register. In essence, the court dismissed the successors-in-title’s claim for damages for the abovementioned time frame due to lack of legal standing, making it clear that damages can only be sought for the time after a patent transfer has been recorded .

Pursuant to Article 12 paragraph 1 of the Greek Patent Law, the patent can be transferred by written agreement; the transfer is concluded upon the recordal of the written agreement in the patent register and, subsequently, its publication in the Official Gazette.

According to legal theory interpreting the above rule, it is evident that the written form of the assignment agreement is considered to be a constituent part of the agreement, meaning that any agreement not in writing  will  result in the invalidity of the entire agreement. Furthermore, it develops immediate and inter partes effect. On the contrary, the recordal and subsequent publication of the transfer agreement in the patent register and Official Gazette, respectively, are not considered constituent parts of the agreement, but serve as third party publicity. This means that the transfer agreement can be enforced against third parties only after its recordal and publication, as above indicated. No prior erga omnes effect is provided.

Moreover, as far as licence agreements are concerned, an even more strict wording is found in the law. According to Article 12 paragraph 3 of the Greek Patent Law, the written agreement for the grant of a licence shall be recorded in the patent register and published in the Official Gazette but shall enter into force on the date of its recordal in the Patent Register. In essence, it seems that in this case, both written form and recordal are considered to be essential in order for the licence agreement to be valid.

In view of the above, it is important to record transfer and licence agreements in a timely fashion in the patent register, in order to avoid unpleasant surprises later in the course of litigation.

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More from across our site

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tong and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role
The French finance minister told António Campinos the timing of an EPO event in Lisbon could be seen as interference in the EUIPO leadership race