What rights does a patent or utility model grant me?
Patents and utility models protect technical inventions through entry in the respective register. They grant their owners an exclusive right for a defined term and territory that allows them to prohibit others from making commercial use of the invention. Others therefore risk a lawsuit from you if they infringe your intellectual property right. However, a patent or utility model can also be challenged and declared invalid.
Infringement of patent and utility model rights
If an Austrian patent or utility model right is infringed, a lawsuit may be filed with the Commercial Court of Vienna (HG Wien).
You may sue for: injunctive relief, destruction of the infringing goods or the tools and means necessary for their manufacture, surrender of profits, damages, publication of the judgment, compensation, rendering of accounts, and information regarding origin and distribution channels.
The lawsuit is filed in the first instance with the Commercial Court of Vienna; appeals against its decisions are heard by the Higher Regional Court of Vienna (OLG Wien) to the Supreme Court of Justice (OGH).
Opposition against patents
Within four months of the publication of the granted patent in the Patent Gazette, any person may file a written opposition with the Patent Office. Grounds for opposition include, in particular, that the subject matter of the patent is not novel or inventive, that the invention has not been clearly and completely disclosed, or that the scope of protection extends beyond the original application. An opposition may result in the complete or partial revocation of the patent.
The fee for an opposition against a patent is €230,-, and the fee for a request to schedule an oral hearing is €219,-. The parties must bear the procedural costs and any representation costs themselves in the opposition proceedings.
If the parties to opposition proceedings are engaged in or are about to engage in settlement discussions, they are free to conduct mediation or another form of alternative dispute resolution to increase the chances of reaching an amicable settlement. The use of a mediation procedure to reach a settlement agreement between the parties may be cited and considered as a valid reason for extending the deadline for the patent owner to respond to the opposition (§ 102(3) Patent Act).
Proceedings before the Nullity Department
If you manufacture a product or use a process and want to know whether your product or process infringes a specific patent or utility model, you can file a request for a declaratory decision with the Patent Office.
This also works the other way around: If you are the holder of a patent or utility model, you can file a request for a declaratory decision with the Patent Office to determine whether a product manufactured by a third party or a process used by a third party infringes your patent or utility model.
A patent or utility model may be declared invalid upon request at any time during its validity. Grounds for invalidation include lack of novelty, lack of inventive step, insufficient disclosure, or an extension beyond the scope of the original application. The Nullity Department of the Austrian Patent Office decides on the request for invalidation. Requests must be submitted in writing and must be substantiated. If the request is granted, the property right is voided retroactively.
If you are the holder of a valid patent or utility model with an earlier priority date, you may request that the Patent Office rule that the commercial use of a later invention is contingent upon the full or partial use of your earlier invention. The Patent Office must decide on such a request in the proceedings provided for invalidation proceedings.
A patent or utility model may be revoked from its owner if it is proven
- that the owner was not entitled to the patent, or
- that the essential content of the application was derived from the descriptions, drawings, models, apparatus, or devices of another person, or from a process used by that person, without their consent
Instead of revocation, a request can be made for the transfer of the intellectual property right.
Every inventor is entitled to be listed as such. If the mention is disputed because the applicant or the holder does not agree, a corresponding request may be filed with the Patent Office’s Nullity Department.
If you are a participant in the Electronic Legal Exchange (elektronischer Rechtsverkehr – ERV), you can file all submissions to the Nullity Department of the Austrian Patent Office, as well as all subsequent filings related to these proceedings, electronically using the direct delivery function to the Patent Office’s ERV code Z983703. The electronic transmission service requires registration with a transmission service provider and is generally available to everyone. To use the ERV, a basic fee as well as a fee for each individual transmission to the service provider must be paid.
Furthermore, for anyone who does not participate in the ERV, the General Online Form (Allgemeines Online Formular – AOF) is available for the online submission of filings to the Nullity Department.
A request to the Nullity Department must be served to the holder of the intellectual property right so that they may file a response within a specified time limit. Following the completion of written preliminary proceedings, an oral hearing is then held before a panel of the Nullity Department.
In the case of utility models, if no response is filed, the request for declaration of invalidity is to be granted without further proceedings to the extent requested.
If the parties to proceedings before the Nullity Department are engaged in or are about to engage in settlement discussions, they are free to conduct mediation or another form of alternative dispute resolution to increase the chances of reaching an amicable settlement. The use of a mediation procedure to reach a settlement agreement between the parties may be cited and considered as a valid reason for an extension of the deadline for filing a response, a statement, or a comment. A hearing may also be adjourned to allow for mediation between the parties, with the aim of facilitating a settlement.
How much does a request to the Nullity Department cost?
The fee for each request to be heard before the Patent Office’s Nullity Department (declaratory decision, invalidity, declaration of dependence, revocation, disputed mention of inventor) is €661,-.
In infringement proceedings as well as in proceedings before the Nullity Department, the “winner principle” under the Austrian Code of Civil Procedure (§§ 40 et seq.) applies to the bearing of the costs of the proceedings as well as of representation. This means that the losing party must reimburse the prevailing party for the costs of the proceedings and of their legal representation.
Appeals against decisions and rulings of the Patent Office
Decisions of the relevant technical department and the Legal Department for Inventions may be challenged by filing an appeal (Rekurs). Decisions of the Nullity Department may be challenged by filing an appeal (here: Berufung or Rekurs, the later for example against cost decisions). Such appeals must be filed with the Patent Office in writing, with a statement of reasons, and within the prescribed time limit. Appeals are decided upon by the Higher Regional Court of Vienna (OLG Wien) in the second instance and by the Supreme Court of Justice (OGH) in the third instance. The fees for these appeals can be found in Fee Item 13a(a) Austrian Court Fees Act.
