At a glance: patent enforcement proceedings in Austria

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Actions and interim injunctions in civil matters based on the alleged infringement of a patent, supplementary protection certificate (SPC) or utility model may exclusively be brought at the Vienna Commercial Court. Claims may be raised for:

• interim and permanent injunctions;
• elimination;
• accounting;
• information regarding the origin and channel of distribution;
• monetary compensation or, in the case of wilful infringement, damages or surrender of the profit realised by the infringer; and
• publication of the judgment.

The jurisdiction in criminal matters belongs to the Vienna Provincial Court for Criminal Matters. Prosecution shall take place only at the request of the injured party. The infringer may be fined up to 360 times the daily rate for calculating fines or, in the case of a professional infringement, face imprisonment of up to two years. As a private participant to the criminal case, the injured person may also claim compensation.

The owner or exclusive licensee of a patent, SPC or utility model may apply to the Patent Office for a declaratory decision against any person who produces industrially, puts on the market, offers for sale or uses an object, applies a process on an industrial scale or intends to take such steps. The declaratory decision shall state that the object or the process is covered either completely or partly by the patent, SPC or utility model. However, such a petition shall be rejected if the party opposing the petition proves that an infringement action concerning the same object or process, filed prior to the filing of the petition for declaratory decision, is pending before the court between the same parties.

The owner of a patent, SPC or utility model may apply to the customs authority for seizure of infringing goods when they are imported into the European Union for the first time. After such a seizure, court action may be started.

What is the format of a patent infringement trial?

The injured person may file the statement of complaint together with any evidence deemed appropriate (documents, private expert opinions, proof from witnesses, etc). The opposing party may then file a statement of defence. Both parties may file several preparatory writs before a first court hearing takes place in which, usually, a court expert is appointed. As soon as the opinion of this expert is presented, another hearing is scheduled in which the proceedings are continued.

The matter in question is thereby discussed and looked at from all viewpoints, including (what might be deemed as) cross-examination. If the opposing party objects to the validity of the patent, SPC or utility model, and if the court considers the invalidity likely, the proceedings will be interrupted and that party has to file a nullification claim with the Patent Office. In cases where the infringement action is based on a European patent validated in Austria and in force no longer than nine months, instead of such a nullification claim an opposition has to be filed with the European Patent Office. There the procedure shall be handled quickly. Upon a final decision on the validity of the protection right, the court action shall be continued.

The court proceedings are oral and direct and are open to the public. The court has to decide based on the free evaluation of evidence.

The jury consists of three judges, two of whom are professional judges and one of whom is an expert, usually a patent attorney. One of the professional judges is the chairperson. It is mandatory that the parties are represented by attorneys-at-law who may, as is usual, be accompanied by a patent attorney.

Together with the filing of the statement of complaint in the main proceedings a claim for a preliminary injunction may be raised. In that case, provisional proceedings will be processed on an accelerated basis in which evidence is, more or less, restricted to documents.

Obtaining a judgment in first-instance main proceedings takes several years. In the case of appeals to the second or third instance (the Vienna Upper Provincial Court or Supreme Court of Austria respectively), the time frame will be up to five years or more.

Provisional proceedings will usually lead to a decision in the first instance after a few months. A final decision after appeals might be expected in one to two years.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The plaintiff has, first of all, to prove that he or she is entitled to sue (namely, that he or she is the rightholder, exclusive licensee or someone otherwise assigned), has to show that the protection right is valid and has to bring forward whatever evidence he or she has in hand to prove the infringement or that an infringement might take place.

The defendant has to prove any objections raised by him or her and prove that the plaintiff is not entitled, that there is no infringement or that the right in question is not enforceable (for example, because of expiry, exhaustion, prior use or bad faith of the plaintiff). In the case of an objection against the validity of the right in question, the court shall suspend the proceedings unless nullity must obviously be denied. The defendant must then file a nullification action with the Patent Office within one month.

A reversal of the burden of proof applies in the case of a patent for a process for the manufacture of a new substance, because any substance with the same characteristics shall, pending proof to the contrary, be regarded as having been manufactured according to the patented process.

Pursuant to the Intellectual Property Enforcement Directive (2004/48/EC), the defendant is bound to assist in providing evidence whenever the plaintiff has difficulties in proving the facts.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Any person who has suffered an infringement of one of the rights belonging to him or her under a patent, SPC or utility model or who worries that such an infringement might take place has standing to sue: this includes the owner of the right, an exclusive licensee or someone otherwise assigned.

As long as an infringement action is not pending before the court, an accused infringer may apply to the Patent Office for a declaration against the owner or the exclusive licensee of a patent, SPC or utility model stating that the object or the process is not covered either completely or partly by the protection right.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

An inducer, contributor or accessory is liable for patent infringement in the same manner as the direct infringer and therefore may be sued in addition to him or her. However, a person is only regarded as an inducer, contributor or accessory in the event that he or she has knowingly supported the direct infringer (namely, that it was his or her intention to do so).

Several real or legal persons (for example, an infringer, inducer, contributor or accessory) may be sued together as a joinder of parties provided that they constitute a legal community with respect to the matter in dispute, and that the respective court is competent for each of the defendants. It depends on the specific case whether or not they are individually or jointly liable for the infringement or part of it. A joinder of parties may also be created by a decision of the court if it is likely to result in an acceleration, a simplification or a cost reduction.

A contributor or accessory may also be someone who provides means (for example, devices, materials, etc) by which an essential element of the invention can be realised (indirect patent infringer). Such a provider may also be sued for indirect patent infringement in cases where he or she has delivered the means to someone who uses the invention for private purposes only (namely, who is not regarded as a patent infringer per se).

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple parties may be sued together for patent infringement as a joinder of parties. The prerequisites are that they constitute a legal community with respect to the matter in dispute and that the respective court is competent for each of the defendants. It depends on the type of patent infringement, or contribution to the patent infringement, by each of the parties, whether a separate judgment for each of the parties or one and the same judgment for all of the parties may be achieved. The plaintiff’s claims against each of the parties have to refer to the same patent, irrespective of the type of infringement; namely, industrially producing the subject of the invention, putting it on the market, offering it for sale or using it, or importing or possessing it for the purposes mentioned.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Since an Austrian protection right is only valid in the territory of Austria, activities outside the country cannot constitute an infringement and therefore cannot support a charge of it.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Statutory law states that the scope of protection of a patent is defined by the patent claims, which are to be interpreted in the light of the description and, if applicable, of the drawings of the patent print. Moreover, it is stated that the scope of protection should, on the one hand, not be narrowed by a strict interpretation of the chosen words of the patent claims and, on the other hand, should not be expanded by regarding the patent claims just as a guideline; the interpretation should rather lie between these two extremes.

Infringement by an equivalent is given, according to established legal practice, if, at the date of priority and in view of the patent claims, a person skilled in the art would regard the chosen solution as having an equal effect as well as being equally good and obvious. An equivalent solution is given if one and the same object of an invention is achieved by means (features) that are not identical to those specifically listed in the patent claims but are, as would be obvious to a person skilled in the art, equal in their function.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Any person who has suffered an infringement of one of the rights belonging to him or her may request information about the origin and the distribution channels of the infringing goods and services, provided that the burden of information is not in disproportion to the seriousness of the infringement and will not violate statutory obligations to secrecy.

The claim to give information may be directed to the infringer and to any person having dealt directly or indirectly with the infringing goods or services.

In the course of a request for a provisional injunction, the plaintiff may also raise a claim for securing evidence against the infringer.

When initiating criminal proceedings against an infringer, his or her premises might be searched for any evidence to be seized.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The complaint of the plaintiff is served by the court to the defendant, who may submit a statement of defence.

Several preparatory writs may be exchanged before a first hearing is held in which the proceedings are structured and, in most cases, a court expert (normally a patent attorney) is appointed.

If the defendant objects to the validity of the protection right, the proceedings are suspended, unless the nullity must obviously be denied. After a final decision on the validity of the right by the Patent Office or the Vienna Upper Provincial Court, the proceedings are continued.

Several hearings may take place in which witnesses may be heard and the case shall be discussed thoroughly. A first-instance judgment is then released, which can be appealed by either party. The second instance (the Vienna Upper Provincial Court) and the third instance (the Supreme Court of Austria), if a further appeal for revision is admissible and accepted, do not take evidence and decide either in public or in camera.

Provisional proceedings for a preliminary injunction run more or less the same way, but in an accelerated manner. The defendant has no right to be heard at the first instance, although he or she usually has the opportunity to present exonerating evidence. In addition, an objection by the defendant to the validity of the protection right is not accepted. A decision of the first instance may be appealed at the second and third instance. The total time from filing the infringement complaint until a final judgment or decision may last several years and cannot be predicted.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Costs depend on the value of the litigation. Costs before trial, namely for the evaluation and assessment of the infringement by a patent attorney and for the preparation of the writ by an attorney-at-law, might range from €5,000 to €14,000.

During trial in the main proceedings before the first instance, costs for a patent attorney and an attorney-at-law may vary from €7,000 to €35,000; in provisional proceedings, only up to €12,000. Each appeal proceeding may cost between €7,000 and €14,000.

In the event of success, part of the costs is refunded by the loser. In the event of losing the lawsuit, the losing party has to refund the statutory costs of the procedure and representation of its adversary. Contingency fees are strictly forbidden.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

Decisions and judgments of the Vienna Commercial Court (first instance) may be recoursed or appealed at the Vienna Upper Provincial Court (second instance). If admitted, another revision or revision-recourse at the Supreme Court of Austria (third instance) may be launched. If not admitted, an extraordinary action to the Supreme Court may be filed. The courts of second and third instance are appellate instances, that is, not trial courts, so new evidence is not allowed.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

In the case of an unjust enforcement of a protection right, the accused infringer may sue the alleged rightholder on the grounds of unfair practice for refraining from such act and liability for damages.

Unjust allegations about a third party that damage its business reputation, etc, may also be opposed by the injured person.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

ADR techniques are commonly used, and an attempt is often made to settle the pending dispute by negotiation. Sometimes mediation is accepted by the parties or they agree to contact a local or international arbitration board. However, none of these measures excludes eventually going to court.

Law stated date

Give the date on which the information above is accurate.

1 March 2021.