AUSTRIA
THE IP LANDSCAPE IN AUSTRIA: AN OVERVIEW
Peter Israiloff Barger, Piso and Partner
On June 5, 2012, a universal amendment to the administrative jurisdiction was published (Federal Gazette No I 51/2012) by which, among other major changes, the Supreme Patent and Trademark Board will be dissolved on January 1, 2014. In connection with this, a restructuring of the Austrian Patent Offi ce is under discussion, as the same bill includes an amendment to the constitution allowing exceptions from the separation of justice and administration. Explanatory remarks mention that such an exception might be possible by “conceding a successive way to regular courts in legal matters of patents, trademarks, designs and copyrights”.
At the end of 2012 the major points of discussion were as follows:
• T e competence of the Supreme Patent and Trademark Board and the Austrian Patent Offi ce’s remedies department should be passed to the Vienna Upper Provincial Court. T e order of instances with regard to applications of patents, utility models, trademarks and designs would then be: (i) technical or legal department of the Patent Offi ce; (ii) appeal to Vienna Upper Provincial Court; (iii) revision (if available) to Supreme Court of Austria.
• T e nullity department of the Austrian Patent Offi ce should either remain as it is or be dissolved by passing its competence to the Vienna Commercial Court. As the Vienna Commercial Court is the fi rst instance for all patent and utility model infringements, the above mentioned second option would result in the fact that one and the same senate could decide on both validity of a plaintiff ’s patent and the circumstances of infringement in one and the same trial. (To date, the Vienna Commercial Court has been required to interrupt infringement proceedings in case of alleged nullity of the plaintiff ’s patent and wait for a fi nal decision on validity from the nullity department, or in the second instance, from the Supreme Patent and Trademark Board.)
Patents and utility models
The Act Introducing Patent Treaties was amended in 2009 to remove passages concerning the need to file German translations of European
32 World Intellectual Property Review e-Digest 2013
patents issued in English or French. However, the amendment will not come into force until Austria signs the London Agreement, which omits translations of European patents into the respective language of a country during the course of validation.
A number of hurdles need to be overcome before the agreement can be ratifi ed. Small and medium size companies need to be supported so that their access to the national patent system can be improved. Also, a contrary legal opinion has been published that states that signing up to the agreement would result in confl icts with the Austrian constitution as well as international law. T erefore, it seems that ratifi cation of the London Agreement has been put on the shelf for the next couple of years.
As Austria is both the only German-speaking country that still requests translations of European patents during the course of validation, and a small country, foreign patent owners might eventually omit Austria from the scope of protection in order to avoid translation costs. However, this is not advisable because, although Austria’s population is small, the country is home to many manufacturing companies that export goods. If foreign patent owners omit Austria from the scope of protection, these companies could either not benefit from patent protection or could not be sued on basis of a valid patent.
In the course of a nullification action against an Austrian utility model, the Supreme Patent and Trademark Board held that, due to recent legal developments and European decisions, there is no longer a difference between the merit of invention in a patent and in a utility model. The necessary inventive step for qualifying a utility model, as well as inventive activity as a prerequisite for granting a patent, requires the finding of a non-obvious solution to a problem.
With this landmark decision, the former holding that a utility model affords less quality of invention than a patent is thrown out (Supreme Patent and Trademark Board, December 22, 2010).
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