Greek court applies doctrine of equivalents in numerical range

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

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 SHARED ros bottom lb

More from across our site

AI
Leaders at four firms share their hiring approach, including whether AI knowledge is a must-have for new staff
McKool Smith and Licks Attorneys are acting in the dispute, which alleges infringement of patents covering video-related technologies
Legacy firm Allen & Overy agreed a high-profile tie-up with US firm Shearman & Sterling in May last year
News of Verizon settling its lawsuit with Headwater Research and a copyright setback for AI firm Perplexity at a New York court were also among the top talking points
IPH, which owns several IP businesses in the APAC and Canada, reported a 16.5% increase in revenue and 13% jump in profit after tax
With Ireland’s government re-engaging with the idea of a UPC referendum, it provides a chance to improve the system further
US-based company says appointment of Jorge Ordonez shows its momentum as a private-equity-backed platform expanding in the IP services market
The firm hired an IP litigation team during the reporting period and has entered the Managing IP rankings for trademark work
Masaki Mikami of Marks IP explains how he helped prove acquired distinctiveness to secure protection for 'Pocky' in Japan
Daralyn Durie discusses the ‘amazing’ opportunity of working on an AI case, the value of celebrating women, and how to build the next wave of talent
Gift this article