(a) Technical inventions in Austria are protectable through:

Austrian Patents

Search and substantive examination.

Austrian Utility Models

Search, only formal examination and registration.

European Patents (EP) validated for Austria

To be applied for at the EPO, search and substantive examination, validation and translation in Austria necessary.

Unitary Patents (UP)

To be applied for at the EPO, Search and substantive examination, request for unitary effect (as of September 2024 protection in 17 EU countries)

Supplementary Protection Certificates

Supplementary Protection Certificates offer extended protection for authorized active ingredient/s of a medicinal product or for plant protection products that are covered by a patent (the underlying patent)..

The protection certificate comes into effect upon expiry of the maximum term (20 years) of the underlying patent. The term of the protection certificate is equal to the elapsed period between filing of the patent application and granting of the first marketing authorization in the EEA, less five years.

In order to submit an application, you must be the patent holder and/or authorization holder of an underlying patent for the authorized active ingredient/s of a medicinal product or for plant protection products.

(b) Brand protection in/for Austria

Austrian Trademark registered with the Austrian Patent Office

Trademarks can be any signs that can be represented (permanently and comprehensibly for all). The Austrian trademark is regulated in the Austrian Trademark Protection Law (MSchG).

Single or individual trademarks must be capable of distinguishing the goods or services of one company from those of other companies; they make the origin of the goods/services from one company/supplier recognizable and enable the goods/services to be associated with a company that stands for their quality. These trademarks are not intended to describe the goods or services in terms of their characteristics.

Association or collective marks are registered by associations/associations and identify the goods or services marketed by the association members in their capacity as members of the association/association.

Guarantee marks, on the other hand, characterize goods or services of third parties that have a quality controlled by the owner of the guarantee mark.

Possible types of trademarks for example: word, figurative, word/figurative, 3D, colour, sound, position, motion, multimedia, hologram.

EU Trademark registered with EUIPO The Community trademark is regulated in the EU Trademark Regulation. Possible types of trademarks: word, figurative, word/figurative, 3D, colour, sound, position, motion, multimedia, hologram.

Non-registered trade names, might enjoy protection by the Unfair Competition Act.

Names of physical or legal persons, including pseudonyms, are protected by the General Civil Act. If someone is denied the right to use their name or if they are affected by the unauthorised use of their name (alias), they can sue for injunctive relief and, if they are at fault, for damages.

Geographical Indication

Dependent on the type of geographical indication there are different protection options: only for qualified geographical indications and certain product groups: protection throughout the EU by means of entry in a register maintained and operated by the European Commission according to Regulation (EU) No. 1151/2012 and the relevant implementing rules; generally, for all types of geographical indication and all products/services: protection as a collective trademark of an exceptional nature (geographical collective trademark § 62(4) MSchG; protection according to the rules of the Austrian Federal Law against Unfair Competition (UWG).

(c) Other creations, technology and proprietary

Austrian Designs registered with the Austrian Patent Office

A design right protects the appearance of an industrial product. What is not protected however, is the idea or invention upon which the product is based, a product’s production method or the like. Design protection encompasses all features that are visible to the human eye such as shape, color, gloss, surface structure, ornamentation etc. application is formally examined.

EU Designs registered with the EUIPO

Shapes of goods or parts thereof, which are novel and have distinctive character.

Copyright

creations of literature, written works and drawings, architecture, music, dance, photographs, Motion pictures, databases, computer programs (e.g. source code).

Trade Dress

Under specific circumstances, goods and services with individual character enjoy protection by Austrian Federal Law against Unfair Competition (UWG).

Trade Secrets / Know-how

Protection of technical information that is sufficiently described and identified, has commercial value, is not generally known to the public, and is protected by adequate measures of secrecy. For trade secret protection Austrian Federal Law against Unfair Competition (UWG) in accordance with Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, is applicable.

Semiconductor topographies

Semiconductor protection is understood as the protection of the three-dimensional structures of microelectronic semiconductors. To put it even more simply, it refers to the protection of the internal structure of a microchip. The maximum term of semiconductor protection is ten years, dating from commencement of the protection. The protection commences on the date of the first commercial exploitation of the semiconductor product if an application is submitted to the Austrian Patent Office within the following two years. In the case of semiconductor products that have not yet been publicly exploited at the time of application, the protection commences upon the filing date.

Plant Varieties

Plant variety protection is established by registration in the Plant Variety Protection Register. This is kept by the Federal Office for Food Safety. Once a year, the current register of protected varieties is published in the Sorten- und Saatgutblatt (Variety and Seed Gazette) (number 3 of the respective year).

Austrian / EP and UP Patent: 20 years from filing

Utility Model: 10 years from filing

Extension Supplementary Protection Certificates (SPCs): The maximum term of the protection certificate in Austria is five years dating from the time of coming into effect. Extension by a further 6 months is possible if the application is supported by studies carried out in line with a paediatric investigation plan.

Austrian and EU Trademark: unlimited lifetime possible but renewal is necessary every 10 years.

Austrian / EAU Design: 25 years from filing

Unregistered EU Design: 3 years from publication of design in the EU

Patent: Only the inventor and his successor in title shall be entitled to the grant of the patent. Employees shall also be entitled to the grant of a patent for inventions made during the term of their employment, unless there is an agreement between employer and employee according to which future inventions of the employee are to belong to the employer or the right to use such inventions is to be granted to the employer. In order to be valid, the agreement must be in writing, which requirement shall also be satisfied if the agreement is included in a collective agreement of the Labor Organization Law.

Trademark/ Design / Semiconductor Topographies / Plant Varieties: The registered applicant/owner

Copyright: The creator of the work. For software programs, the employer is entitled to an exclusive license of the work product by law. The copyright as such is not transferable but the creator or it’s legal successors may grant use rights. In certain cases, Austrian law recognizes the implied license for an employer to use an employee creation during employment using resources provided by the employer.

Trade Secrets: The company in which confidential information has been created.

Granted after substantive examination: Austrian and EP/UP patents

Registered: Austrian utility models, Austrian and EU trademarks and designs; Plant variety protection is established by registration in the Plant Variety Protection Register

A natural or legal person

Austrian Patent:

When filing an application, the description of the invention should be sufficiently detailed to allow a person skilled in the art to be able to carry out the invention on the basis of the description alone. If the applicants have their place of residence or a branch office in Austria, the patent may also be filed without representation. The application can be filed online, by delivery to the Patent Office and by mail – no email filing possible. Once the inventors have filed the application for their invention to be patented, the application and the invention are subjected to an examination. The result of the examination is notified in writing, in respect of which comments may then be submitted.

If defects are not remedied despite an invitation to do so or if the invention is not patentable, the application is refused.

The patent is granted once the decision to grant takes legal effect. Patent protection begins once the patent is registered and published in the Patent Bulletin.

Austrian utility model:

After the application for a utility model has been filed and the applications includes claims, the Austrian Patent Office examines the formal requirements and carries out a prior art search. It does not, however, examine novelty or inventive step – if the documents submitted meet the formal requirements, the utility model is registered in any case. The applicant receives a prior art search report approximately 6 months after the application has been filed.

A request for accelerated registration for an additional fee. In this case, the application is registered, and the utility model specification published immediately if the outcome of the formal examination is positive. The search report is only created and likewise published afterwards. Utility model protection begins once registration in the utility model register has been approved by the examiner and the registration published in the Utility Model Bulletin.

Austrian Trademark:

If the applicant has his residence or place of business in Austria, the trademark may also be applied for without representation. If the applicant is neither domiciled nor has a place of business in Austria, the applicant must be represented in the application procedure (either by a professional or a non-professional representative). If the applicant’s domicile or place of business is in the EEA or in Switzerland, an Austrian power of attorney for service is sufficient in any case. If the applicant does not have his place of residence or a branch office in Austria, a professional representative, duly authorised is necessary.

The trademark examination procedure essentially consists of two procedural steps: A Formality check and a Legal check. If the trademark meets the registration requirements, it will be entered in the trademark register under a serial number of registration and the applicant will receive a registration certificate. In addition, the trademark is published in the Austrian Trademark Gazette.

For trademarks with graphic elements (words with upper and lower case letters, special fonts, figurative elements, colours, etc.), trademark images must be submitted.

Austrian Design:

After filing it is first examined whether it is a design and whether formal defects exist. If the defects can be overcome, a request is made to remedy the defects. If neither an illustration nor a design specimen is submitted with the application or if accessories partially obscure the subject-matter of the IP right, there is an irremediable deficiency. In this case, there is only the option of a new application. In the application procedure, it is not examined whether the design is new, has individuality or whether earlier rights exist. It is also not examined whether the design is solely due to its technical function or whether the applicant is entitled to the design. In the legality test it is examined whether the design is contrary to public policy or morality. From the day of registration on on, the design protection exists. The registration shall be published in the Musteranzeiger, entered in the Register and a design certificate shall be issued to the applicant.

Austrian Patent: 12 to 24 months

EP / Unitary Patent: 24-36 months

If no office actions are issued:

Austrian Utility Models: 11-15 months

Austrian Trademarks: 3 – 4 weeks

EU Trademark:  5 to 6 months (fast track 4 months)

Austrian Design: 3 months

EU Design: 2-4 weeks

EP Patent application: ”third-party observations” – third parties may bring further arguments against patentability to the office’s attention.

Austrian patent applications:

Anyone may inspect the files relating to published patent applications and patents granted thereon. Third parties shall be entitled to inspect the files relating to unpublished patent applications only on approval by the applicant. The approval of the applicant shall not be required for any person against whom the applicant has cited his patent application. After publication of a divisional application, any person may inspect the files of the earlier application without the approval of the applicant.

Observations by Third Parties: Following publication of the application any third party may present observations concerning the patentability of the filed invention.

Austrian Patent Application: Decisions passed by the Technical Department and by the Legal Department may be contested by appeal. Against the decisions (interim and final decisions) of the Appeal Department no appeal may be made to the High Administrative Court. Against final decisions of the Appeal Department appeal may be lodged with the Supreme Patent and Trademark Chamber.

Austrian Trademark Application: The decisions of the legal department can be appealed at the Higher Regional Court of Vienna (Oberlandesgericht Wien).

In proceedings before, the EUIPO or the EPO, the applicant can appeal a refusal to grant or register the IP right he had applied for.

Austrian Patent:

The minimum cost of a patent application, including granting and publication, is 550 Euro.

In order to maintain the patent, an annual fee must be paid from the sixth year onwards, which increases from 104 Euro to 1,775 Euro in the twentieth and final year.

Austrian Utility Model:

The minimum cost of a national utility model application with up to ten claims, including registration and publication, is 330 Euro.

In order to maintain the utility model, an annual fee must be paid each year (from the fourth year onwards), which is from 52 Euro to 470 Euro in the 10th year. There is the option of making a two-stage, lump-sum payment.

Austrian Trademark:

Application costs single trademark

on paper: 300 Euro

online: 280 Euro

The renewal fee for a individual Mark is 700 Euro

Austrian Design: Costs for individual design application

on paper: 87 Euro

online: 82 Euro

additionally per class: 15,50 Euro

Costs for collective design application

on paper: 147 Euro

online: 142 Euro

For the maintenance of a design (maximum 25 years), a renewal fee must be paid every five years, which amounts to 130 Euro per design for individual designs and 88 Euro per design for collective designs.

Europäische Patente

European Patent Office: https://www.epo.org/en/applying/fees

Europäische Marken:

EUIPO: https://www.euipo.europa.eu/en/trade-marks/before-applying/fees-payments

Europäische Designs:

EUIPO: https://www.euipo.europa.eu/en/designs/before-applying/fees-payable-direct-to-the-euipo

In general, if the annual fee or renewal fee is not paid in time the patent, trademark or design expires. During a grace period of 6 months, it is possible to pay the annual/renewal fees plus a surcharge for late payment. If also this grace period is missed, a restoration of rights can be requested, if the applicant/owner, due to an unforeseeable or unavoidable event, was unable to observe a time limit set, the non-observance of which results in the loss of rights as a direct consequence, shall be entitled to the restoration of rights. A failure based on minor errors shall not impede the restoration of rights.

Registered or granted IP rights can be transfer through a contract. In case of copyrights only use rights can be granted.

Austrian Patent: The right arising from a patent application and the patent right shall be inheritable. Both rights may be transferred to others, either wholly or in proportionate shares, by a legal transaction, by a court decision or by a transfer mortis causa.

Austrian Trademark: Regardless of a change in ownership of the company, the trademark can be transferred for all or part of the goods or services for which it is registered. If the trademark right belongs to a company, the trademark right including any license rights to it shall pass to the new owner in the event of a change in ownership of the entire company, unless otherwise agreed. If the application for recordal of the transfer or the documents submitted for this clearly show that the transfer of rights means that the trademark is suitable to mislead the public, in particular about the type, quality or geographical origin of the goods or services, so the request for re-registration must be rejected, unless the purchaser agrees to a restriction of the list of goods and services to eliminate the risk of deception.

European patent application, EU trademark: The assignment of design must be made in writing in order to be effective.

As long as the trademark register has not been rewritten, the trademark right cannot be asserted before the Patent Office and all communications relating to the trademark can be delivered to the person registered as the trademark owner with effect against the purchaser. The same holds true for patents.

For litigation it is necessary to have active legitimation, that is only possible it the correct owner or licensee is recorded in the patent register. Which means that a transfer needs to be recorded before a litigation is started.

The applicant/owner may permit third persons to use the invention in all the territory or in a part thereof covered by the patent, with or without the exclusion of other persons entitled to use the invention (license). There are no specific formal requirements for a contract. The contract is a contract “sui generis” and the parties are therefor free to define the content. It is highly recommended to conclude such license contracts in writing.

Licenses shall not, without the patentee’s consent, be transferred inter vivos except together with the part of the enterprise or goodwill which enjoys such license and shall not pass on death to the licensee´s successor in title unless the latter continues the part of the enterprise or goodwill which enjoys the license. Licenses may be recorded with the register. The license rights shall be binding on third parties only on their entry in the Patent Register.

No – but a license may be recorded with the register. The license rights shall be binding on third parties only on their entry in the Patent Register.

An exclusive licensee is – if not agreed otherwise – entitled to enforce the licensed right. A non-exclusive licensee is only entitled to enforce the licensed right if permission is provided through the contract to do so.

Austrian and EP Patents (validated in Austria):

Anyone who infringes a patent shall be condemned by the court to a fine of up to 360 times the per diem rate. Any person who commits such an act commercially shall be sentenced to detention not exceeding two years. Likewise, the proprietor or manager of an enterprise who fails to prevent the infringement of a patent committed by an employee or agent in the course of the activities of the enterprise shall be sentenced. If the proprietor of the enterprise is a corporation, a collective, an association or another legal entity which is not a physical person, the same shall apply to the organs if they are guilty of having committed such an omission (Prosecution shall take place only at the request of the infringed party.

Austrian Trademarks:

Anyone who infringes a trademark in the course of trade shall be liable to a fine not exceeding 360 daily rates. Anyone who commits the offence commercially shall be punished with a prison sentence of up to two years. Anyone who, in a manner likely to cause confusion in the course of trade, makes unauthorized use of a name, a company name or the special designation of a company or a sign similar to these designations to identify goods or services in accordance with section 10a shall be punished likewise. The owner or head of a company is to be punished if he fails to prevent an infringement according to (1) or (2) committed on the premises of the company by an employee or agent. The offenses specified above will only be prosecuted at the request of the injured party.

The Regional Court for Criminal Matters Vienna shall have jurisdiction in criminal matters described above.

Copyright:

Any person who commits an infringement of copyrights shall be liable to imprisonment not exceeding six months or to a fine not exceeding 360 times the daily rate. The infringement shall not, however, be punishable if it only involves the unauthorized reproduction or an unauthorized recording of a recitation or a performance for personal use or for the personal use of another person, effected free of charge. Any person who puts into circulation or possesses for commercial purposes any means the sole intended purpose of which is to facilitate the unauthorized removal or circumvention of any technical device for the protection of computer programs shall likewise be liable to penalty.

Any person who, as the owner or director of an enterprise, does not prevent an infringement of this kind from being committed within the activities of the enterprise by an employee or agent shall also be liable to penalty.

Any person who by way of trade commits such an offense shall be liable to imprisonment not exceeding two years. The offender shall be prosecuted only at the request of the person whose right has been infringed.

Litigation before the Austrian Civil Courts:

The Commercial Court of Vienna has exclusive jurisdiction at first instance for actions under this section, irrespective of the amount in dispute. In such cases, the Commercial Court of Vienna shall also have exclusive jurisdiction for interim injunctions.

Unitary Patents and EP-patent (not opted-out)

The unified patent court a specialised patent court with exclusive jurisdiction for litigation relating to Unitary Patents and European patents (not opted-out) and harmonising the scope and limitations of the rights conferred by a patent, and remedies available beyond EU Directive 2004/48/EC (Enforcement Directive). The UPC is responsible for the enforcement of valid patents, with decisions taking effect in all Member States having ratified the UPC Agreement as well as injunctions and damages;  for third parties and the public, the UPC provides a central revocation action, separate from the EPO’s opposition procedure, at any time during the life of the patent.

Arbitration

Austria lacks specific legal provisions for IP rights arbitration. However if the parties would agree on arbitration for example by agreement, Austria’s arbitration law is flexible and accommodating, based on the UNCITRAL Model Law. Arbitral tribunals can grant interim measures, which can be requested from both state courts and arbitral tribunals. Parties can also opt out of arbitral tribunals’ jurisdiction for interim relief in their arbitration agreements.

Patent Litigation before the Austrian Civil Courts:

The duration of main proceeding in a patent infringement case depends heavily on the complexity and a possible stay for the Nullity proceedings. As most of the cases are suspended until a final decision in the Nullity proceedings which takes between 2 and 3 years it takes 3 to 4 years to receive a first instance decision. If the proceedings are not suspended it can take 1 and a half year to 2 years until the decision in the first instance. As in Austria preliminary injunctions may be requested in patent infringement cases to stop the infringement fast or to preserve evidence it is important to understand that there is no urgency requirement – at least before a main proceeding has been initiated. In most of the preliminary injunction cases the Commercial Court holds inter-parte proceedings, which take between 3 and 9 months A typical timeline for an ex-parte preliminary injunctions to preserve evidence according to the Enforcement Directive, unfortunately takes up to 4 months. The form of a first instance patent litigation procedure can be described as follows: Plaintiff files a request for preliminary injunction to preserve evidence (very seldom) Plaintiff files online the complaint with the court and pays the court fees Court serves the complaint on the defendant. Defendant files the statement of defence and often initiates a nullity action with the Austrian Patent Office and requests the stay of the proceeding Both parties file preparatory briefs First hearing before the court with the determination of the further program, expert will be named by court, eventually a decision to stay the proceeding until a decision in the nullity action will be made Expert opinion of the court expert will be served to the parties Both parties file preparatory briefs At least one further hearing Parties serve their cost notes according to the Attorney tariff act Court hands down the judgment. In a recent decision of the Supreme Court private expert opinions can be subject to reimbursement of costs by the losing party if the case is complex and the expert opinion is necessary for appropriate legal defence. The costs of course very much depend on the complexity of the issue and how much costs arise for the court appointed experts as well as for experts. For the first instance in the main proceedings the costs vary between EUR 30.000 and EUR 150.000. The second instance typically cost much less between EUR 20.000 to EUR 55.000. For the nullity action the costs for the first instance typically range between EUR 20.000 to EUR 55.000 and for the second instance between EUR 15.000 and EUR 25.000. The cost for the third instance both for the infringement proceedings as well as for the nullity action between EUR 20.000 to EUR 55.000. Cost for requesting preliminary injunction vary too much to give a reasonable range. But especially the costs for preliminary injunction for preservation of evidence are sometimes considerably high and can rage up to the costs for a first instance main proceeding.

The losing party is required to reimburse the winning party’s costs calculated based on the Attorney tariff act. Both parties have to present their costs in a cost schedule, including legal fees, expert, costs for private expert opinions and translation costs as well as Attorney’s fees at the end of the final hearing or together with the final brief. The parties may request independently from an appeal in the merits that certain costs are not admitted to compensation. In infringement cases, the reimbursable fees are usually well below the actual cost to the parties.

Trademark Litigation:

Plaintiff files the complaint with the Commercial Court of Vienna. After examining the formal requirements of the claim, the court will deliver the statement of claim to the defendant, which is instructed to file a statement of defence with the court within four weeks. After receiving the statement of defence, the court will invite the parties to a preliminary hearing. The court will try to reach an amicable settlement in the first hearing; if this is not possible, the parties are allowed to submit briefs to the court.

Once all the evidence is gathered, the trial at first instance is complete. No further evidence can be presented to the court.

The court will then take time for deliberations and hand down a written decision.

The costs are comparable to patent infringement proceedings (see above) but a little lower, as typically expert costs are much lower.

The winning party may be reimbursed for its costs by the losing party. However, in most cases, the winning party cannot recover all of its costs as the costs for the winning party’s attorney are reimbursed only according to a general tariff of the Austrian Attorneys at Law.

A division of the costs may be made if a party is only partially successful.

For most of the IP related matters (Patents, trademarks and utility patents) the Commercial Court Vienna has jurisdiction. The form of a first instance patent litigation procedure can be described as follows: Plaintiff may file a request for preliminary injunction to preserve evidence (very seldom) Plaintiff files online the complaint with the court and pays the court fees Court serves the complaint on the defendant. Defendant files the statement of defence and often initiates a nullity action with the Austrian Patent Office and requests the stay of the proceeding Both parties file preparatory briefs First hearing before the court with the determination of the further program, expert will be named (in patent cases) by court, eventually a decision to stay the proceeding until a decision in the nullity action will be made Expert opinion of the court expert will be served to the parties Both parties file preparatory briefs At least one further hearing Parties serve their cost notes according to the Attorney tariff act Court hands down the judgment. In a recent decision of the Supreme Court private expert opinions can be subject to reimbursement of costs by the losing party if the case is complex and the expert opinion is necessary for appropriate legal defence.

The Regional Courts has exclusive jurisdiction for all actions asserting a claim arising from one of the legal relationships regulated in Design Protection Act (design disputes), irrespective of the amount in dispute.

Yes – Companies that own trademark, patent, copyright or other intellectual property rights may submit applications for action by the customs authority with regard to goods suspected of infringing an intellectual property right.

The applicant needs to provide the customs authorities with information, advice and materials that are important for the risk analysis and risk assessment by the customs authorities and for the identification of goods that infringe an intellectual property right. These applications greatly facilitate the work of the customs authorities and enable immediate intervention in the event of an infringement.

Applications for action (‘Applications for Action’, AFA) can be submitted as a ‘national application’ (NAFA) or as a ‘Union application’ (UAFA).

Persons and entities shall be entitled to lodge applications for action by the customs authorities to the extent that they are authorised to initiate proceedings to determine whether an intellectual property right has been infringed in the Member State(s) in which action by the customs authorities is requested.

No – but in a lot of cases the IP owners send warning letter before filing a complaint or request a preliminary injunction.

A case can be settled by mutual agreement between the parties without the court or before the court. The parties need to agree on the cost. In most cases that are settled without the court a perpetual suspension of proceedings is filed jointly by both parties.

The general rule is that the plaintiff has the burden to prove that a patent or trademark is infringed. This also holds true for process patents. However, if proof as such is not possible the plaintiff might try to gain evidence by way of an inspection by a court appointed expert. Moreover, there is one further exemption to the burden of proof for processes of manufacturing a new product. In this case, the same product having essentially the same features as the new product shall be deemed to have been made using the patented process unless proof to the contrary is produced by the defendant to the court. This can be seen as a limited reversal of the burden of proof. In such a case the plaintiff has to proof that the product as a direct result of the protected method is new and that the properties of the attacked product are the same as those of the also protected method end product. The defendant has then to proof that the product has been achieved through a different method.

Trademark: The Owner of a registered trademark can file a complaint if a third party in the course of business, without the prior trademark owner’s consent: uses a mark identical to the prior registered trademark for identical goods or services; uses an identical or similar mark for identical or similar goods or services, where such use creates a likelihood of confusion; or uses an identical or similar mark for goods or services not similar to those covered by the prior registered trademark, where the prior registered mark is well known in Austria and the use of the later mark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark.

Patent and Utility Model: The owner needs to prove that all features of at least one independent claim are infringed in a literal or equivalent way. Different means are equivalent (under patent law) if they fulfil the same function and lead to the same result (similarity of effect – technical equivalence) and the replacement of the means is obvious to the person skilled in the art. The skilled person must also know the substitute means (proof in the prior art required if the means is not notorious) Different means have the same effect (technical equivalence) if they – fulfil the same function and – lead to the same result in terms of type and quality. Austria also knows the system of indirect patent infringement.

Design: Design infringement is given if the design creates the same overall impression for an informed user. The overall impression of a design is influenced by its characteristic features, distinguishing it over earlier designs.

Copyright: A Copyright is infringed in cases the author´s rights are conducted by third parties without the author´s consent. As there are various different types of copyright and therefor the infringement needs to be assessed for the individual case.

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?

Evidence can be brought before the court for example through witnesses, written documents, videos, photos or private expert witnesses. Patent infringement proceedings in Austria are exclusively handled by the Commercial Court Vienna. The specialized chambers in such patent infringement proceedings are composed of two judges of the commercial court without technical background and lay judge with technical expertise. The lay judges typically are Austrian patent attorneys.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

In Austria there is no discovery proceeding. In general, a plaintiff must produce all evidence to proof that the defendant infringes the patent. In practise there is only one way to access relevant evidence for the infringement question at defendants’ plants or third parties. There is the possibility to request a preliminary injunction for preservation of evidence. There where recent cases where machine at customers of the defendant, where inspected by a bailiff and a court appointed expert, who collected the evidence and provided a protocol of the onsite inspection. As the general rules for the request of preliminary injunctions where not design for the preservation of evidence this newer possibility is not implemented very well and case-law is not well established. But especially in view of evidence collecting for indirect patent infringement proceedings the preliminary injunction for preservation of evidence is of importance and helpful. For specified documents only accessible to the defendant the plaintiff in a running infringement proceeding may request that such a document shall be produced by the defendant. It is interesting to mention that in Austria a patent infringement in a commercial way is not only a question of civil law but also for criminal law. Patent infringement is an offence with private prosecution, which is only prosecuted upon the request of the injured party. Such a criminal proceeding offers more possibilities to access evidence at the patent infringer or third parties.

If a patent litigation proceeding is pending a party to the proceeding can request the production of a document by the other party (303-307 Austrian Civil Procedure Code) or may request the production of physical objects for inspection by the opponent (369 Austrian Civil Procedure Code).

In Austria there is no regulation that documents relevant to the proceedings may only be produced to a court expert alone.

Witness evidence must generally be taken in the presence of the court, written witness statements are not admissible in Austria. Any witness will first be questioned by the court and then the parties might also ask questions to the witness.

The primary defences in all IP related infringement proceedings are that the IP right is not infringed and the lack of validity of the IP right asserted. Other defences for patents include the right to prior private use, exhaustion, no industrial(commercial) use, licensed or permitted use or studies and trials as well as to the consequential practical requirements, as far as they are necessary to obtain a permission, authorization or registration for putting on the market pharmaceutical products. Specific to trademark there is the defence of non-use. In case of copyright a defences could be the legitimate right to citation or a permissible modification of the copyrighted work.

Austrian Patent application/Patent:

Observations by Third Parties: Following publication of the application any third party may present observations concerning the patentability of the filed invention. The observations shall state the grounds on which they are based. Third parties shall not be party to the proceedings before the Patent Office and shall not be entitled to be compensated for costs incurred.

Opposition: An opposition may be lodged by anyone against the grant of a patent within four months from the announcement of the grant of the patent.

Nullity Action: It is possible to challenge valid patents or utility models by filing an application for a declaration of invalidity. Any person may apply for a declaration of invalidity during the entire term of the property right.

Austrian Trademark: Anyone can request the cancellation of a trademark registered in Austria or enjoying protection in Austria. Austrian trademark law does not provide for opposition proceedings. Prior conflicting marks do not constitute an obstacle to registration. Neither the owner of an earlier registered trademark nor third parties are entitled to oppose the mark during the course of registration. Before registering the trademark, the Patent Office will transmit a search report of potentially conflicting prior marks in the requested classes upon a mere advisory basis. Owners of a prior trademark or third parties can claim for cancellation once the trademark has been registered.

Austrian Design:

Third parties have the option of challenging the registered design (application for a declaration of invalidity) if they are of the opinion that the design should not have been registered.

EP Patents

Oppositions: An opposition can be filed by any person (legal or natural), including a nominal opponent (“a straw man”), thus allowing the identity of an opponent to be concealed.

UP Patents /EP patents (not opted out)

The Unified Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation. Anyone can file the action for revocation.

Patents:

Opposition in Austria within 4 months and in EP within 9 months from the publication of grant at the patent)

Nullity action at Nullity division of the Austrian Patent Office (AT and opted-out Austrian EP validations)

revocation action: Unified Patent Court (not opted out EP Patents / Unitary Patents) at any time during term of protection

Utility Models:

Invalidation proceedings any time after the registration (if utility model has lapsed, a legitimate interest is needed)

Trademarks

Opposition EUIPO: Within three months from the publication of the application (EUIPO);

Action for revocation before national court (Commercial Court Vienna (for EU trademarks,) any time

Designs Austria / EU:

Anytime after registration  or EUIPO; alternatively or in parallel: revocation action before national courts

Austrian Patent / Utility Model

It is possible to challenge valid patents or utility models by filing an application for a declaration of invalidity. Possible grounds for invalidity are if the subject matter of the patent/utility model does not comply with Sections 1 to 3 PatG or GMG (not new not inventive), if the patent/utility model does not disclose the invention clearly and completely enough for experts to carry it out, or if the subject matter of the patent/utility model goes beyond the content of the application as originally filed and the version justifying the filing date. Any person may apply for a declaration of invalidity during the entire term of the property right.

Trademark
A granted trade mark can be declared invalid and cancelled from the trade mark register if one or more of the grounds for invalidity contained in the Trade Mark Protection Act  apply. Some of these grounds for invalidity can be asserted by any person (e.g. if a trade mark should not have been registered or has remained unused for more than five years), others require a special qualification on the part of an applicant (e.g. he or she has an earlier, confusingly similar right).

Design

Registration does not guarantee that design protection is secured until the end of the term. If third parties can prove that the registration should not have taken place, they can apply for a declaration of invalidity of the design.
Applications for cancellation must be submitted to the Nullity Department of the Austrian Patent Office and are subject to a procedural fee. The effect of the declaration of invalidity is the same as if the protective effect had never occurred. Decisions of the Nullity Department can be appealed to the Higher Regional Court of Vienna.

As a participant in electronic legal transactions (ERV), all applications to the Nullity Department of the Austrian Patent Office and all subsequent submissions to these proceedings can be submitted electronically.

If the parties to invalidity proceedings are before or in settlement discussions, they are free to engage in mediation or other forms of alternative dispute resolution in order to increase the chances of reaching an amicable settlement. The use of mediation proceedings to reach a settlement agreement between the parties may be cited and recognised as a valid reason for an extension of the deadline for submitting a counterstatement, statement or comment. A hearing can also be postponed for mediation between the parties in order to facilitate a settlement as a result.

Compulsory license for patent

A compulsory licence causes a restriction of the effect of a patent right. The consequence of such a limitation is that the owner of the right cannot or can only to a limited extent assert his privileges from it. In principle, compulsory licences are possible for all patented inventions, In the Austrian Patent Act, plant variety rights and biotechnological inventions are explicitly mentioned as well as semiconductors. Compulsory licences can be granted in case of public interest.

Limitation and revocation procedure 

EP Patent: A patent proprietor may request the revocation or limitation of its own patent. The request may be filed at any time after grant, after opposition proceedings or even after expiry of the patent.

Austrian Patent: In principle there is no limitation proceeding like in EP codified. But in practise the limitation can be requested at Austrian Patent Office through a partly revocation.

• Claim for injunction;
• removal of infringing goods;
• damages for past infringement;
• rendering of accounts;
• adequate consideration or, in the case of negligence or intent, compensation for nonmaterial loss and surrender of profits;
• The owner of an Austrian trademark can claim double the amount of consideration as compensation without having to prove the actual amount of damages;
• publication of the verdict.

A complaint for infringement of a registered trademark can be combined with a request for preliminary injunction.

In cases of culpable patent infringement the infringed party may, instead of appropriate compensation, demand a) damages including loss of profits, orb) the surrender of the profits, which the infringer generated by infringing the patent. Irrespective of providing prove of any damage, the infringed party may demand double the compensation amount, if the patent infringement was caused by gross negligence or intent.

Costs Austria Patent Litigation

For the first instance in the main proceedings the costs vary between EUR 30.000 and EUR 150.000. The second instance typically cost much less between EUR 20.000 to EUR 55.000. For the nullity action the costs for the first instance typically range between EUR 20.000 to EUR 55.000 and for the second instance between EUR 15.000 and EUR 25.000. The cost for the third instance both for the infringement proceedings as well as for the nullity action between EUR 20.000 to EUR 55.000. Cost for requesting preliminary injunction vary too much to give a reasonable range. But especially the costs for preliminary injunction for preservation of evidence are sometimes considerably high and can rage up to the costs for a first instance main proceeding.

The losing party is required to reimburse the winning party’s costs calculated based on the Attorney tariff act. Both parties have to present their costs in a cost schedule, including legal fees, expert, costs for private expert opinions and translation costs as well as Attorney’s fees at the end of the final hearing or together with the final brief. The parties may request independently from an appeal in the merits that certain costs are not admitted to compensation. In infringement cases, the reimbursable fees are usually well below the actual cost to the parties.

Security of costs in preliminary injunctions in Austria

The court may order an interim injunction if the claim asserted by the applicant is not sufficiently substantiated, if the disadvantages threatening the opposing party can be compensated by monetary compensation and the applicant provides security for this purpose to be determined by the court at its discretion.

The court may, depending on the circumstances, make the granting of an interim injunction conditional on the provision of such security, provided that the party applying for the injunction has furnished sufficient evidence. In such cases, the enforcement of the injunction may not commence before proof of the provision of the security to be furnished by the court.

Security of costs in Austrian nullity proceedings:

Proceedings for a declaration of forfeiture, of nullity or of lack of title of patents shall be instituted only on request. However, the Patent Office shall be entitled to continue ex officio proceedings for a declaration of forfeiture or nullity instituted on request in case such request is withdrawn. (2) The requesting party who does not have any residence in a state, in which the decision ordering the requesting party to reimburse the costs would be enforced, shall provide security for the costs of proceedings to the opposing party on petition of the latter. The petition shall be made within 14 days from service of the request, otherwise such title to security shall lapse. (3) The Patent Office shall determine, at its discretion, the amount of the security. A time limit shall be set to the requesting party to pay the security. If the security is not paid in time, the request shall be considered withdrawn.