Patent litigation in Austria: overview
A Q&A guide to patent litigation in Austria.
The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.
To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.
This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.
Sources of law
The Austrian Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act) is the primary source of Austrian patent law. In addition, the following and their subsequent amendments are the principal sources of law and regulation on this subject:
Law on Utility Models 1994 (Federal Law Gazette 1994/211) (Gebrauchsmustergesetz 1994) (Utility Models Act).
Act on Supplementary Protection Certificates 1996 (Federal Law Gazette I 1997/011) (Schutzzertifikatsgesetz 1996).
Regulation (EEC) 1768/92 concerning the creation of a supplementary protection certificate for medicinal products (Medicinal Products Supplementary Protection Certificate Regulation) and Regulation (EC) 1610/96 concerning the creation of a supplementary protection certificate for plant protection products (Plant Products Supplementary Protection Certificate Regulation).
Law on Patent Office Fees (Federal Law Gazette I 149/2004) (Patentamtsgebührengesetz).
Austria is a signatory to a number of international conventions, most notably the:
Act Revising the European Patent Convention 2000 (Munich EPC Act).
Patent Cooperation Treaty 1970 (PCT).
WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS).
The Introductory Act on Patent Treaties (Federal Law Gazette 1979/52) (Patentverträgeeinführungsgesetz) unites the provisions contained in the Munich EPC Act and PCT with those of the Patent Act and the Utility Models Act. As a member of the EU, Austria is bound by the applicable regulations and has implemented all the relevant directives. The most recent update was to the Patent Act, to comply with Directive 98/44/EC on the legal protection of biotechnological inventions and Directive 2004/48/EC on the enforcement of intellectual property rights.
Austria was the first country to ratify the Agreement on a Unified Patent Court on 6 August 2013.
Generally, the international conventions and in particular the Munich EPC Act have priority over other relevant sources.
Regarding the order of priority of the relevant sources, generally, the international conventions, in particular the EPC, are the framework that sets the limits of what is to be considered an acceptable interpretation of the provisions of the Patent Act. The harmonised approach of the EPC takes precedence. However, due consideration is also given to pre-harmonised Austrian practice. Regarding nullity and unenforceability, Austrian law takes precedence over the corresponding grounds of nullity in the EPC. National and international case law and practice cannot be reconciled in this respect.
A patent infringement can have civil and criminal law consequences under the Austrian system. Therefore, both the civil and criminal courts have jurisdiction to hear patent infringement proceedings.
Austria is a bifurcation country so matters relating to the validity of patents are generally referred to the Patent Office's Nullity Division and matters relating to patent infringement are decided by the courts.
Since 2014, appeals in invalidity proceedings have been heard by the Higher Regional Court of Vienna and the Austrian Supreme Court (if there are significance questions of law, that go beyond the case at issue). However, this has not affected Austria's long-standing bifurcation system and court proceedings in invalidity matters must be distinguished from court proceedings in infringement matters. In addition, alleged infringers can issue ''abstract'' declaratory proceedings before the Patent Office (see Question 14).
All civil patent infringement cases are heard before three specialised senates of the Vienna Commercial Court. The Higher Regional Court of Vienna serves as the court of appeal for patent infringement cases. A further appeal can be made to the Supreme Court where there are questions of general legal importance and interest. Both first instance and appeal proceedings are handled by expert judges who are experienced in patent law.
Criminal cases are exclusively heard before the Vienna Criminal Court and the Higher Regional Court of Vienna. However, the practical importance of criminal patent infringement proceedings is not significant.
Austria ratified the Agreement on a Unified Patent Court and will host a local division in Vienna.
Austria is a bifurcation country so matters relating to the validity of patents are generally referred to the Patent Office's Nullity Division and matters relating to patent infringement are decided by the courts.
However, the validity and effectiveness of a patent can also be evaluated independently by the court as a ''preliminary question'' during the course of infringement proceedings (section 156, Austria Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act)). Where a decision depends on the question of whether a patent is null and void, the court must first carry out an independent examination on the issue (section 156(3), Patent Act). The court can request the Patent Office to prepare a written expert opinion establishing whether it appears likely, on the basis of the documents submitted in the course of the court proceedings, that the patent will be revoked. If the court considers it likely on the basis of the evidence submitted that the patent is null and void, the infringement proceedings will be suspended.
The court is under no obligation to request an expert opinion from the Patent Office, and this does not prejudice the outcome of any nullity proceedings. In practice, the court tends to appoint an expert to assess the likelihood of invalidity rather than requesting an opinion from the Patent Office.
Within one month of the service of the decision suspending the infringement proceedings, the defendant must provide evidence that either:
It has filed an invalidity application with the Patent Office.
It has filed an opposition before the European Patent Office.
The proceedings between the litigants are already pending.
It has joined the proceedings as an intervener.
If the defendant fails to comply with this requirement, the court proceedings will be continued on application by the claimant and will be decided without taking into account the objection of nullity. However, any decision issued by the Nullity Division of the Patent Office before the conclusion of the oral proceedings must be taken into account.
Where the validity or effectiveness of a patent has been evaluated differently in the invalidity proceedings and the infringement proceedings, a motion for a new trial can be filed on the grounds of this discrepancy (section 156(5), Patent Act).
All parties must be represented by an attorney-at-law authorised to practice in Austria (Austria Civil Procedure Code). In addition, the parties can instruct a patent attorney to assist with the underlying technical questions of a case. Supporting patent attorneys have rights of audience before the court and are treated as equivalent to attorneys-at-law in practice.
Attorneys-at-law, patent attorneys and notaries authorised to practice in Austria can represent parties before the Patent Office.
The language of the proceedings is German. There is no choice of language.
Although the court does not have to accept documents in languages other than German, it will usually accept exhibits (and in particular, technical documents) in English.
Austria will host a local division of the Unified Patent Court in Vienna. It has not yet been decided if and to what extent English may be accepted as a second language besides German.
Domestic decisions in parallel proceedings are usually of high relevance but not formally binding. However, the courts can decide parallel cases differently depending on the factual and legal arguments made by the parties. In addition, any pertinent decision from a national court is generally regarded as persuasive.
The judgments of foreign courts, although not binding, can be considered as evidence in Austrian infringement proceedings. Foreign court opinions on technical questions are in general more persuasive than legal or procedural opinions, which may differ from country to country. If there is no Austrian case law on a specific question, German case law (Germany has a very similar IP system) is often referred to by the parties and also taken into account by the Austrian courts.
In summary, decisions from other jurisdictions, (in particular leading European patent jurisdictions) have an impact on Austrian proceedings but can be overcome.
Scope of protection
A patent gives the patent holder the exclusive authority to (section 22(1), Austrian Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act)):
Produce the subject of the invention.
Put the invention on the market.
Offer the invention for sale.
Use the invention.
Import or own the invention for the above purposes.
All of these acts only constitute patent infringement when conducted for industrial purposes, a term which is widely interpreted and generally only excludes private uses.
The extent of the protection of a patent and a published application is determined by the terms of the claims. The description and drawings of the patent will be used to interpret the claims (Article 69, Act Revising the European Patent Convention 2000; section 22a (1), Patent Act)). For this purpose, the Protocol on the Interpretation of Article 69 of the European Patent Convention 1973 (Federal Law Gazette No 350/1979) as amended applies mutatis mutandis.
Therefore, Austrian courts must always consider the description and the drawings of the patent in determining the scope of a patent's protection.
According to a decision of the Austrian Supreme Court, the prosecution history of a patent is not a source for claim construction. However, the Patent Office files must be considered as a source of interpretation of the scope of the patent during declaratory proceedings before the Patent Office (section 163(5), Patent Act). Therefore, the exact impact that prosecution history can have on the interpretation process is yet to be seen.
In practice, the courts will apply a two-stage approach:
Establish whether or not a literal infringement is to be presumed. This assessment is made on the basis of the claims, the description, the drawings and potentially the Patent Office files. The starting point is the plain and ordinary meaning of the claims.
Determine an adequate understanding of the claims from the point of view of an ''average expert'', with the assistance of technical dictionaries and relevant publications in the applicable fields.
If literal infringement is not established, the courts will consider the following three-stage step test set out in the Austrian Supreme Court decision of Bicalutamide (influenced by German case law (see Schneidemesser)):
Does the variant solve the problem underlying the invention by using means that are modified but have the same technical effect?
Would the skilled practitioner, based on his knowledge of the field at the priority date, have been able to detect that these different means have the same technical effect (obviousness)?
Are the skilled practitioner's considerations sufficiently closely related to the technical teaching of the patent that the skilled practitioner considers the variant with its modified means as equivalent to the solution claimed by the patent (equivalence)?
Contributory/indirect patent infringement is defined as a delivery (or any respective offer) by a supplier of an essential feature of the invention, in cases where it is apparent or known to the supplier that this means are suitable and intended to be used to practice the invention (section 22(3) to (5), Patent Act). This provision is modelled on the equivalent provision in the German Patent Act. Therefore, as indirect infringement has rarely been examined in Austrian courts, the parties and the courts are likely to refer to German case law on this subject.
Tortious aiding and abetting patent infringement can also trigger third party liability under general Austrian tort law (that is, contributory infringement, a principle under general civil law existing independently of the principle of indirect infringement, which is expressly provided for in section 22(3) to (5) of the Patent Act).
Where a patent has been granted for a process, its effect will also cover the products directly produced by such process. In addition, if the product at the time of priority was novel, then the alleged infringer will bear the burden of proof that the patented process was not applied (Article 34, WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994; section 155, Patent Act).
Austrian law features a BOLAR clause (Article 10, paragraph 6, Directive 2004/27/EC on the Community code relating to medicinal products for human use), which exempts clinical trials and related tests that are required for obtaining marketing authorisation for pharmaceutical products. There is no general research exemption beyond the Austrian BOLAR clause. This exception arguably does not only relate to the generic industry but also to innovative drugs. However, the exact scope of this provision will have to be refined by the courts.
A number of defences are available to an alleged infringer, in particular:
Nullity, that is, the invention is not novel or obvious or matter was added to the original disclosure (see Question 9).
The alleged infringer only practiced the prior art (Formstein defence).
Own prior use.
Relying on (implied) licences.
Invoking the statute of limitation.
Exhaustion of rights can be invoked as a defence in cases regarding products placed on the market in the European Economic Area by or with the consent of the patent holder.
In pharmaceutical cases, the ''BOLAR'' exemption (that is, protection for drug manufacturers when preparing their products for regulatory approval) may be available (see Question 7, BOLAR exemption).
Anti-competitive enforcement, but this has rarely been argued in Austria (see Question 12).
Nullity claims can be brought on the following grounds:
Lack of novelty.
Lack of inventive step.
Lack of industrial applicability.
Breach of good morals.
Computer programs, therapeutic methods, plant and animal varieties excluded from patentability (Articles 52 and 53, Act Revising the European Patent Convention 2000).
Inventions excluded from patentability in accordance with Directive 98/44/EC on the legal protection of biotechnological inventions.
Nullity established in the course of invalidity proceedings does not always affect the entire patent so that patents can be partially invalidated (section 48, The Austria Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act)).
However, a court cannot transform a patent into a utility model.
According to the Supreme Court case, Nebivolole, it is possible to enforce patent claims but only to the extent that the amendment constitutes a restricted version of the original claim and the limitation can be deduced from the disclosure of the patent. This is known as ''partial enforcement'', which only has an effect on the infringement proceedings in question and does not constitute an actual amendment of the patent. Whether or not ''partial enforcement'' is admissible while infringement proceedings are already pending depends on the Austrian Rules of Procedure and particularly the provisions relating to amending claims during proceedings (section 235, Austrian Code of Civil Procedure).
Wilful misconduct against good business morals can, in very limited cases, bar the patentee from enforcing its rights. Other relevant grounds can be limitation issues or the existence of an alleged licence agreement with the defendant.
The debate about whether patent enforcement may have an anti-competitive effect and violate competition law has not yet reached the Austrian courts. Austrian courts generally comply with pertinent decisions of the Court of Justice of the EU (CJEU) and actively refer cases to the CJEU. Therefore, the fact that EU competition law would render a patent unenforceable could serve as a defence in Austrian infringement proceedings.
Parties to litigation
The registered patent holder can bring an action for patent infringement. A new patent holder that is not yet registered can also bring an action for patent infringement, if the chain of title can be evidenced.
The holder of an exclusive licence can bring an action for patent infringement, even if the licence agreement does not expressly confer this right to the exclusive licensee.
Licence rights do not need to be registered but must be evidenced if an action is lodged.
According to a ruling by the Supreme Court, the holder of a non-exclusive licence can bring an action for trade mark infringement, if the licence agreement expressly provides for this.
The Supreme Court has not had the opportunity to confirm whether this also applies to patent infringement matters. However, its decision is regularly applied by the Commercial Court of Vienna.
Licence rights do not need to be registered but must be evidenced if an action if lodged.
A distributor cannot bring a patent infringement claim. A patent holder cannot transfer the right to make a claim to a third party without first granting the third party a patent licence.
Parties other than the patent owner (registered and unregistered) or its licensees (and sub-licensees) are not entitled to make a claim.
An alleged infringer can bring declaratory petitions before the Patent Office to obtain a declaratory judgment on non-infringement. These proceedings are ''abstract'' because:
They are always limited to the actual subject matter of the declaratory proceedings.
The question of whether the patent has been validly granted is not examined.
An alleged infringer can bring proceedings to obtain a declaratory judgment on non-infringement if it (section 163, The Austria Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act)):
Places an article on the market.
Offers an article for sale.
Uses an article.
Uses a method in the course of business.
Intends to undertake any of the above activities.
The alleged infringer can file a petition with the Patent Office against the owner of a patent or the exclusive licensee demanding a declaratory judgment to the effect that its article or method is not subject to the patent in whole or in part.
The owner of a patent or the exclusive licensee can also file a positive declaratory petition against an alleged infringer for a declaratory judgment to the effect that the infringer's article or method is subject to its patent in whole or in part.
When evaluating the scope of protection of the patent subject to the declaratory proceedings, the Patent Office will take into consideration the prior art evidenced by the parties and the basis on which the patent was originally granted.
A declaratory petition will be dismissed if infringement proceedings between the same litigants and relating to the same product or method are pending before the court (section 163(3), Patent Act). Therefore, a declaratory petition can only be used as a defence against an infringement action if it is filed with the Patent Office before court proceedings are issued. A court can suspend infringement proceedings pending the decision on the declaratory petition.
A patent holder can still apply for a preliminary injunction against an alleged infringer if a declaratory petition is pending with the Patent Office. In addition, declaratory proceedings conducted before the Patent Office do not constitute grounds for filing a motion for a new trial before the court. Therefore, the practical importance of declaratory petitions before the Patent Office is limited.
There is also an option to file declaratory actions with the courts instead of the Patent Office. However, the exact interaction between the two types of declaratory actions has not yet been clarified by the Supreme Court.
The infringer can be sued for patent infringement.
The patent owner can enforce its claims against all persons committing any of the actions referred to in section 22 of the Austria Patent Act 1970 (Federal Law Gazette 1970/259) (Patentgesetz 1970) (Patent Act) (see Question 7).
A company is responsible for patent infringements committed by its employees in the course of service for the company.
The responsible persons of the company (for example, managing directors and members of the board) can also be held liable in certain circumstances. For example, the managing director of a small company is generally considered to be able to control whether or not an infringement takes place and can therefore be held personally liable. However, claims against boards of directors of larger companies may require additional evidence to hold individuals personally liable.
Employees who commit patent infringement can be sued, even if they only follow instructions from their company. However, in practice this is rare.
Accomplices, instigators and accessories
Infringement actions can also be taken against the accomplices, instigators and accessories of the infringer (section 1301, General Civil Code), when the contributory infringer wilfully supported the infringer.
A third party is prohibited from offering or supplying any means or element of any invention to an any unauthorised persons (without the approval or the patent owner) if the third party knows or it is obvious that the means or element of the invention are suitable and intended for the purpose of using the invention (section 22(3), Patent Act).
New parties can only join proceedings as a consequence of a succession in law under the relevant Austrian statutes, such as in case of mergers, spin-offs or where all parties to the litigation consent to the changing of parties.
In addition, persons who have legal interest in the litigation can join as intervening parties on either the claimant's or defendant's side.
Civil proceedings are available to a patent holder (see Question 2).
Criminal proceedings are available to a patent holder and are heard before the Criminal Court of Vienna. Wilful patent infringement constitutes a criminal offence and may be subject to a fine of up to EUR1.8 million or up to two years of imprisonment. In addition, sanctions equivalent to the final remedies under civil law (such as destruction of infringing goods and monetary compensation) are available.
Under the Austrian Product Piracy Act and the applicable European regulations, border protection for patents is possible. Austrian border control has been successful in setting up an effective system to seize counterfeit products at the borders. To benefit from this system, an application for permanent surveillance, accompanied by adequate information to allow the identification of counterfeits, can be filed with the national customs authorities by patentees and exclusive licensees.
Apart from the above proceedings, there are no other options to enforce a patent.
It is not compulsory to send a cease and desist letter to an alleged infringer before commencing proceedings. The only benefit from a legal point of view is that a cease and desist letter may make it more difficult for an infringer to dispute negligence or gross negligence from the time of notification. However, as most remedies do not require proof of negligence, cease and desist letters have little impact on future proceedings.
Therefore, it is only advisable to send cease and desist letters if there is a reason to believe that litigation can be avoided or if the policy in place within the patent holder's company provides for these letters.
Cross border or extra-territorial injunctions are not typically granted or applied for in Austria. However, as Austrian law allows courts to base decisions on foreign law, titles against Austrian entities issued by foreign courts are enforceable in Austria within the framework of the relevant international treaties and EU regulations.
''Torpedo'' actions have not played a role in Austrian patent infringement proceedings for several years.
''Torpedo'' actions are still possible under Regulation (EU) 1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Recast Brussels Regulation). However, the blocking effect of foreign '' torpedo'' actions before Austrian courts can practically be limited for the following reasons:
Actions pending in one jurisdiction do not prevent preliminary measures being sought in another jurisdiction (Article 35, Recast Brussels Regulation). Austria is a country where preliminary injunctions are granted on the basis of validity and infringement (without any further balance of convenience test), regardless of any particular urgency. Therefore, preliminary injunctions are common practice in Austrian patent infringement proceedings.
Austrian courts have been rather reluctant in the past to suspend proceedings due to ''torpedo'' actions in other jurisdictions, applying a restrictive interpretation of ''the same subject matter''' under Article 27 of the Regulation (EC) 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (which was replaced by the Recast Brussels Regulation). It can be assumed that this strict interpretation will also be applied under the Recast Brussels Regulation.
The country where a patent is registered has at least exclusive jurisdiction with regard to the question of validity (Article 24(4), Recast Brussels Regulation).
Arbitration is available but uncommon in patent infringement matters. This is likely to be because a defence based on the nullity and the invalidity of the patent is not possible. In addition, Austrian courts are assisted by technical lay judges, so that parties do not have to seek a technically qualified panel outside the regular court system.
Arbitration is more common in other fields of technology law, such as disputes regarding IT contracts or trade secret/know-how protection, where the obvious advantages of it are expertise and enhanced confidentiality.
ADR measures are also not common in patent disputes for similar reasons (see above, Arbitration).
Competition and anti-trust
Procedure in civil courts
All patent infringement proceedings are heard before the Commercial Court of Vienna. The format of these proceedings is as follows:
The proceedings are initiated by a written action (brief) lodged by the claimant.
The claimant's brief is served on the defendant, who has four weeks to file a reply at court.
Following this exchange of briefs, the court will set a date for a first hearing. Preparatory briefs can be filed until one week before the first hearing. Usually, the first topics to be discussed are:
whether the proceedings should be suspended pending the outcome of invalidity or opposition proceedings. Recently, the court (despite its own technical expertise provided by the technical lay judge) has often appointed an expert to assess the likelihood of validity.
whether an expert should be appointed to assess the question of infringement.
Further hearings can be held to take evidence. An additional hearing must be held if an expert is appointed and the parties request the expert to be summoned.
On completion of this process, the court will close the proceedings and normally give a judgment in writing.
According to the Austrian Rules of Civil Procedure, there is no exhaustive list of admissible evidence. The following types of evidence play the most important role in Austrian patent infringement proceedings.
As provisional proceedings (that is, proceedings before the issue of a preliminary injunction), which are generally only in writing, play a significant role in Austrian patent infringement proceedings, the submission of documents as evidence is crucial. Common documents used as evidence in patent infringement proceedings are:
Technical evidence on infringement and validity (such as analysis reports and prior art documents).
Private expert opinions, primarily by Austrian patent attorneys, which may be supplemented by declarations of scientific experts.
Affidavits based on technical facts, such as features of a process used by the alleged infringer.
Inventors' testimonies (commonly used in other jurisdictions) are not considered as relevant in Austria and only submitted in exceptional cases.
In Austria, witness evidence on business facts (such as the conclusion and scope of a licence agreement) is more relevant than witness evidence on technical facts. Witnesses on technical facts can for example play a role in cases where the ownership of the invention or prior use rights are at issue. Witnesses can be cross-examined (although not in a formal way as in common law systems).
In Austria, the focus of the evidence is on the briefs and the written opinion of the court appointed expert, and less weight is placed on the inventor's testimony.
In practice, the opinion of the court-appointed expert (usually an Austrian patent attorney) can be considered the most important piece of evidence in patent infringement proceedings. In nearly all cases, the senate will follow the expert and will give a judgment in accordance with the expert's assessment.
Each party should therefore support its position by suitable documentation, so as to obtain a favourable opinion by the court-appointed expert. Although it is possible to challenge expert opinions, in practice, these are rarely overturned in appeal proceedings.
See Question 26.
The possibility of obtaining a form of pre-trial disclosure is limited in Austria.
Before filing a complaint, the claimant can purchase the infringing product on the market, conduct an analysis and commission expert opinions, which can be submitted together with the complaint. If this evidence is not sufficient to prove infringement, the claimant can request the court to order the defendant to produce specific documents or to be subject to an inspection at its production site.
In the authors' opinion, Directive 2004/48/EC on the enforcement of intellectual property rights has not been sufficiently implemented. Therefore, the Austrian provisions on production and seizure of evidence are of limited practical significance. However, the court has ordered house searches in exceptional patent infringement cases.
Although the court cannot force the defendant to disclose information about its products or process, in giving its judgment, it can take into consideration the parties' behaviour. Therefore, instead of simply relying on the fact the claimant has the burden of proof (unless a reversal of the burden of proof applies, see Article 34 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994, section 155, Austria Patent Act 1970), a diligent defendant will usually provide at least some evidence about its products or processes.
Patent litigation proceedings are usually quite lengthy in Austria. A first instance judgment for infringement proceedings that have not been suspended can take up to two years.
There is no official fast-track procedure in Austria. However, cases are often settled after the conclusion of provisional proceedings (that is, proceedings before the issue of a preliminary injunction) or the opinion of an expert.
Invalidity proceedings have an expedited process route if the nullity application refers to a patent that is the object of infringement proceedings.
It is not possible to agree on a timetable for the proceedings.
The most successful strategy for delay is to raise a nullity defence, which ultimately can lead to a suspension of the claim (see Question 3). Parties can also delay proceedings by requesting extensions of time or introducing a large volume of evidence.
Search and preservation orders
Preliminary injunctions to search and preserve evidence are in practice only granted in exceptional circumstances. The statutory framework for search and preservation orders is currently unclear and has not been clarified with the implementation of Directive 2004/48/EC on the enforcement of intellectual property rights.
Fishing expeditions are prohibited and the patent holder must therefore be in the possession of evidence of at least a certain quality. In addition, it must be able to convince the court that further evidence exists, which may be destroyed or concealed if the alleged infringer is informed of an inspection.
If the patent holder or any affiliated party has seized and preserved evidence in another jurisdiction, this evidence can be used without restrictions before an Austrian court.
Preliminary injunctions are common in Austrian patent litigation. Provisional proceedings are generally held inter partes, although without notice proceedings are possible in certain circumstances. The principles of preliminary injunctions are as follows:
No balance of convenience test. Preliminary injunctions are granted on the basis of validity and infringement without conducting any balance of convenience test.
Bonds. The interests of the defendant are often safeguarded by the claimant placing a bond at court. In high profile cases, bonds to the value of EUR1 million have been placed at court.
No urgency requirement. Urgency is not a requirement. Preliminary injunctions can also be applied for while main proceedings are ongoing.
No bifurcation in preliminary injunction proceedings. The infringement court cannot suspend the preliminary injunction proceeding if the defendant raises the defence of invalidity but must decide on the proceedings. The court, in granting a preliminary injunction, must assume that the patent is valid (but can safeguard the defendant's interests by ordering payment of a bond).
Cross-border preliminary injunctions. The court can also grant cross-border or extra-territorial preliminary injunctions. However, they are rare in practice (see Question 19).
Mandatory confirmation in main proceedings. If a preliminary injunction is granted, it will be necessary to start main proceedings. In practice, an application for a preliminary injunction is often combined with an action on the merits. The deadline to file a main action is set by the court. If this deadline is not complied with, the preliminary injunction will lose effect and is treated as if it was wrongly granted, which may have severe consequence in terms of liability (see Question 34).
Preliminary injunctions can also be issued to secure claims for the destruction of infringing items and the means used for the production of infringing items. As a preliminary injunction must not lead to an irreversible situation, objects subject to a destruction order (implemented after the final decision in the main proceedings) are confiscated and stored in court or a warehouse under the control of the court. However, in practice, a preliminary injunction providing for a cease and desist order usually provides for sufficient relief and preliminary injunctions securing claims for destruction are rather rarely applied for.
Preliminary injunctions can also be issued to safeguard payment claims. The claimant must demonstrate that without the injunction, future payment claims would be jeopardised.
The format of preliminary injunction proceedings is as follows:
Written procedure. Each party usually provides one or two briefs. This leads to a written decision by the court, involving a technical lay judge whose opinion is usually of considerable significance.
Inter partes proceedings. On receipt of an application for the issuance of a preliminary injunction, the court can (but is not obliged to) send it to the opponent for filing a reply. The period stipulated by the court for filing a reply is usually between seven and 21 days. This period can be extended on application by the opponent.
Opposition proceedings. In the rare cases where the court does not grant the opponent a right to file a reply and the injunction is issued, the opponent is entitled not only to file an appeal as a regular legal remedy but also to file an opposition within 14 days from service of the decision. During the opposition proceedings, the court must conduct an oral hearing where the injunction is reviewed and the defendant can introduce new matters.
Appeals. Following the court's decision on an application for a preliminary injunction, the unsuccessful party can file an appeal with the Higher Regional Court of Vienna within 14 days of the service of the decision. In cases involving questions of law of a significance that goes beyond the case at issue, a further appeal can be filed to the Austrian Supreme Court. Each appeal takes between three and nine months. An appeal filed against an application for a preliminary injunction does not automatically suspend its enforceability, although it is possible to request a suspension.
Duration. Preliminary injunctions are usually issued for the entire duration of the main proceedings. They can be lifted at any point if certain changes take place after the injunction has been issued (for example, if there is new case law or new evidence). The court can make a preliminary injunction dependent on a bond or increase the amount of the bond to safeguard the defendant's interests at any stage of the proceedings.
Enforcement of preliminary injunctions. A preliminary injunction can be enforced through fines of up to EUR100,000 per day and imprisonment of up to one year for any subsequent infringement.
See also Question 31.
Level of proof
Preliminary injunctions are granted on the basis of validity and infringement without conducting a balance of convenience test.
The claimant must only provide prima facie evidence, rather than full proof that its rights are in jeopardy. Prima facie evidence requires a lower degree of judicial persuasion and it is sufficient to convince the court that the occurrence of a patent infringement is more likely than unlikely.
Private expert opinions are used to support the allegations made by the party.
As preliminary injunction proceedings are usually only in writing, documentary evidence is crucial. The court can also interview ''informed persons'' without counsel being present, although this is rare in patent matters.
Documentary evidence usually consists of:
Technical evidence on infringement and validity (such as analysis reports and prior art documents).
Private expert opinions, primarily by Austrian patent attorneys, which can be supplemented by declarations of scientific experts.
Affidavits based on technical facts, such as features of a process used by the alleged infringer.
Inventors' testimonies are not considered as relevant as in other jurisdictions and are only submitted in exceptional cases.
All evidence must be submitted with the application for a preliminary injunction. Therefore, evidence that does not exist at the time of the application, such as the opinion of a court-appointed expert, cannot be admitted.
The defendant can question the validity of the patent in preliminary proceedings. However, preliminary injunction proceedings will never be suspended if the defence of nullity is raised. The validity of the patent must be assessed by the infringement court (the patent attorney lay judge being part of the senate).
Courts will usually consider private expert opinions submitted by the parties. As the burden of proof regarding invalidity is on the defendant, two contradicting opinions of equal quality will usually lead to the patent being considered as valid and a preliminary injunction being granted. Case law from the Higher Regional Court of Vienna states that the validity of a patent can only be successfully challenged in preliminary injunction proceedings if serious doubts about validity are raised by the defendant and the court is convinced that there is a high probability that the patent is invalid.
Length of proceedings
First instance injunction proceedings usually last between two and six months. Appeal proceedings usually last between three and nine months.
A preliminary injunction is the most effective means of legal protection against further patent infringements in Austria. However, it involves a considerable financial risk for the patent holder, as the defendant can claim damages if the injunction was wrongly granted (even if the patent holder wins the main proceedings but the injunction is lifted on appeal) (section 394, Austrian Enforcement Act).
Damages comprise all financial losses caused by the preliminary injunction, irrespective of fault, and are not limited to a certain amount or a bond. In practice, this includes lost profits and legal fees spent. The level of proof is lower than in standard tort proceedings and the court has a relatively broad level of discretion when assessing these damages.
Permanent injunctions are a common remedy awarded in main proceedings, provided that the patent has not yet expired by the time a decision is made.
There is no balance of convenience test. Therefore, if the patent is found valid and infringed by a final decision in main proceedings, the patent holder can defend its exclusivity on the market as long as the patent is in force.
The permanent injunction is not restricted to the product that has been found infringing the patent, but extends to all products that fall under the claims of the patent.
Like any Austrian court title, a permanent injunction is only effective against the defendant subject to the proceedings. In practice, defendant companies could attempt to circumvent court orders by continuing infringing acts through separate legal entities. In these rare circumstances, new court orders and preliminary injunctions can be applied for without difficulty.
Courts can grant cross-border injunctions and extra-territorial injunctions. However, this is very uncommon in practice.
The following payment claims are available under Austrian law, the choice of which is generally at the discretion of the claimant:
Adequate remuneration. This is regularly established by reference to a hypothetical market standard licence fee. The claim does not require fault and can be granted for the period of time the patent was only published as an application and not yet granted.If the infringement was committed with gross negligence, the royalty rate can be doubled.
Compensation for damages actually suffered. This includes lost profits and requires culpable infringement, at least in the degree of slight negligence]. This calculation method is only rarely used in practice as:
it can be difficult to prove causation; and
the claimant may have to disclose its own profit margins to the infringer.
Surrender of profits. This refers to profits obtained by the infringer as a consequence of the unauthorised use of the invention. The claim requires culpable infringement, whereas slight negligence is sufficient.
Although unheard of in practice, it is possible to claim compensation for immaterial damages.
A claim for monetary compensation usually starts with a claim for the production of accounts in preparation for the calculation of the payment claims. This includes the right to have the accounts reviewed by independent auditor. In practice, parties will often settle the claim after complete and true accounts have been produced; otherwise the court will give a final judgment specifying the amount of damages.
Delivery up or destruction of infringing goods
Austrian law provides for the remedy of removal and destruction of infringing products as well as their means of production, provided that this does not interfere with third party rights. As an alternative, the patent holder can claim that the goods are delivered up to him against a certain compensation that does not need to exceed the infringer's production costs.
Publication of the decision
The court can order the publication of all or certain parts of the judgment in one or more media (including the infringer's website) at the expense of the infringer, provided that the patent holder can demonstrate an interest in this publication(s).
Where the infringement is ongoing (that is, infringing products are already on the market), an injunctive order will work as recall order and place the infringer under an obligation to immediately implement a recall of infringing products to the best of its ability. This may not be possible if there has already been a transfer of title to third parties.
Recall orders are not currently provided for by Austrian law, although a full implementation of the Directive 2004/48/EC on the enforcement of intellectual property rights would arguably require this remedy.
Declaration of infringement and validity
Claims for declaration of infringement and validity exist under Austrian law(see Question 14).
In addition to the remedies mentioned above, Austrian law also provides for a remedy of information on the origin and distribution channels of the infringing products, as well as for compensation of legal fees under the Austrian Attorney Tariff Act (see Question 37).
First instance decisions can be appealed to the Higher Regional Court of Vienna. Further appeals on questions of law of general importance and interest can be made to the Austrian Supreme Court.
The deadline to file an appeal in the main proceedings is four weeks (non-extendable). In general, only one appeal brief for each party is permitted; therefore, this must contain all the reasons for appeal and the pleadings. The opposing party may respond to the appeal within four weeks.
Appeals in main proceedings will suspend the judgment that is under appeal, except for extraordinary appeals to the Austrian Supreme Court (that is, appeals that can still be filed under certain circumstance even if the court of second instance did not grant leave to appeal).
Oral appeal hearings are possible but very rare. Appeal proceedings generally take between six and nine months, after which the court of appeal can:
Confirm the decision.
Reverse the decision.
Remand the decision back to a previous court, which is typically the case if additional facts not yet on record must be considered.
Generally, patent litigation in Austria is rather inexpensive. The actual costs will naturally depend on the complexity of the case and the value of the litigation. The claimant will attribute a specific value to the case for the purposes of calculating of court fees and fees reimbursable to the winning party. In most cases, this value is lower than the actual business value of the case. Only in exceptional cases will the value chose by the claimant be challenged.
The court fees, which must generally be paid in each instance, are staggered and depend on the amount in litigation. For example, for a value in litigation above EUR350,000, the court fees are likely to be about 1.2% of that value in first instance, 1,8% in second instance and 2,4% in third instance . The losing party must reimburse the winning party's legal fees on the basis of the fees defined by the Austrian Attorneys Tariff (RAO) as well as certain outlays, such as expenses for private expert opinions. A reimbursement normally ranges between EUR7,500 and EUR15,000 in preliminary injunction proceedings, and between EUR15,000 and EUR30,000 in main proceedings. Even in complex cases with higher values in litigation, reimbursable fees rarely exceed EUR50,000 in preliminary injunction proceedings and EUR100,000 in main proceedings (including possible stages of appeal).
The actual lawyers' fees in most cases depend on the time spent and the respective fee arrangements, which typically exceed the reimbursable fees awarded by the Austrian Attorneys Tariff (RAO).
Austria will host a local division of the Unified Patent Court (UPC) in Vienna.
Over the last few years, though there has been a steady increase in cases relating to industries other than pharma cases, the majority of patent cases litigated in Austria still revolve around pharma (including biotech) patents. Regarding pharma cases, an increased number of second and third generation patents have been involved in litigation (second medical use, formulation or dosage regimen patents).
The authors have also observed a certain trend to higher security deposits, which also highlights that preliminary injunctions tend to be granted, even if there are doubts about the validity of the patent or the infringement.
In addition, the authors have seen an increased number of disputes about financial claims, with regard to both licence fees and damages sought by alleged infringers after preliminary injunctions were lifted.
In 2014, the Higher Regional Court of Vienna replaced the Supreme Patent and Trade mark Senate as the court of appeals for invalidity and infringement matters. Although a comprehensive evaluation of the new system is premature, it is already safe to say that this reform increased the speed of appeal proceedings.
Austrian Patent Office
Description. All Austrian registered rights can be located on the website of the Austrian Patent Office, which also provides useful information on the Austrian patent system. Most of the content of this website is in German only.
Legal Information System of the Republic of Austria
Description. This website provides free access to the complete body of Austrian laws (statutory law as well as published case law). Most of the content of this website is in German only.
Dr. Christian Gassauer-Fleissner, Partner
Gassauer-Fleissner Rechtsanwälte GmbH
Professional qualifications. Austria, Attorney at law
Areas of practice. IP (patent, business secrets, know-how, trade mark); unfair competition; national and international arbitration; IP-driven investments and divestments.
Languages. German, English, French
- Austrian Association for Industrial Property and Copyright (ÖV).
- EPLAW (President 2012 – 2014).
- Federation of Austrian Private Foundations.
- Austrian Association for Arbitration.
- Member of the Law Committee of the Austrian Federation of Industry.
- Innovation und Kapital, Fitz/Kalss/Kautz/Kucsko/Lukas/U.Torggler (Hrsg), Festschrift für Hellwig Torggler, 2013.
- Copying:Forbidden-Allowed-Desirable-Required? , Hansen/ Schüssler-Langeheine (Hrsg), Patent Practice in Japan and Europe, Liber Amicorum for Guntram Rahn, 187 Kluwer Law International 2011.
- Patent- und Know-how Lizenzverträge, in Hausmaninger/Petsche/Vartian, Wiener Vertragshandbuch Band 2, 2. Auflage, 427 ff, Manz 2012
Dr. Dominik Göbel, LL.M., Partner
Gassauer-Fleissner Rechtsanwälte GmbH
Professional qualifications. Austria, Attorney at law; Adjunct lecturer for IP law, University of Applied Sciences, Burgenland/Austria
Areas of practice. Patent law (litigation, licensing, service inventions); trade mark law;copyright; design;unfair competition; IT; data protection.
Languages. German, English
- Austrian Association for Industrial Property and Copyright (ÖV).
- Patentverletzung durch 3D-Druck ecolex 2014, 344.
- Patents 2011: A practical cross-border insight into patent work ICLG to Patents 2011, Chapter 4, Verlag Global Legal Group, Enforcement Directive, Walter/von Lewinski (Eds).
- European Copyright Law – A Commentary, Oxford University Press, 2010.