Greek court applies doctrine of equivalents in numerical range
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Greek court applies doctrine of equivalents in numerical range

Sponsored by

patrinos-logo.png
laboratory-5601435.jpg

Constantinos Kilimiris of Patrinos & Kilimiris explains why a ruling by the Athens First Instance Single Member Court is an important addition to the body of case law on the doctrine of equivalents

While the doctrine of equivalents is well established as a legal theory in Greece, the number of decisions applying this is still not very large. In view of the above, any new decision is a welcome addition to building the respective Greek case law and clarifying the criteria applicable.

In this context the Athens First Instance Single Member Court was recently called to decide on a preliminary injunction (PI) application by an originator pharmaceutical company holding a patent protecting a pharmaceutical formulation, which was claimed on the basis of its excipients and its load of active pharmaceutical ingredients (API) presented in a numerical range. The claim expressly excluded two excipients.

The generic product at issue differed in that its API load slightly exceeded that of the patent claim and contained, in its coating, one of the excipients excluded in the claim.

While there was no issue of literal infringement, the court was asked to decide whether the above differences in the generic product were sufficient to avoid infringement under the doctrine of equivalents.

The court’s decision

The court ruled that the generic products at issue perform the same function, are directed to the same patients, and have the same therapeutic effect as the patented products.

Furthermore, it was held that the fact that the generic products’ API were outside the claimed range was an insubstantial differentiation since they were still well within the tolerance generally accepted by the regulatory authorities and substantially achieved the same therapeutic effect.

Finally, as regards the different excipient in the generic formulation, the court held that this was also an insubstantial differentiation since it was contained in the coating of the tablet, which, according to the decision, is a non-functional element that did not affect the release of the API, the therapeutic effect, or the overall function of the invention.

In summary the court found that the differentiating features were obvious and equivalent variants of the claimed features that did not place the generic product at issue outside the scope of the claims.

Apart from being another decision applying the doctrine of equivalents in Greece, this decision is also important because the court held that even numerical ranges in patent claims should not be determined by their strict verbal sense but, like any other claimed feature, can be interpreted taking into account the perception of the person skilled in the art considering the patent description as well as the regulatory bodies’ practice.

more from across site and ros bottom lb

More from across our site

Sources debate the implications of an opinion by Delaware’s chief judge Colm Connolly that lambasted the NPE IP Edge
Five partners reveal how delays in examining trademark applications are affecting their advice to clients and how they pitch new work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Partners at Quinn Emanuel explain how walkie-talkie and real-estate analogies helped them win over a jury at the Eastern District of Texas
The heads of Malaysian firm HHQ’s new technology practice group say they can be frontline advisers on the intersection between AI, blockchain, and IP
Darren Jiron, Finnegan’s managing partner in London, discusses the firm’s growth plans and misconceptions about US firm culture
The EMEA region research cycle has commenced - do not miss this opportunity to nominate your work from 2023!
A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility