In brief: patent prosecution in Austria

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Patents shall be granted for inventions in all fields of technology that are new; that, having regard to the state of the art, are not obvious to a person skilled in the art; and that are susceptible to industrial application. Inventions may even be patented that have a relation to a biological material. The following are not regarded as inventions:

• discoveries, scientific theories and mathematical methods;
• the human body in the various stages of its formation and development;
• the mere discovery of one part of the human body, including a sequence or partial sequence of a gene;
• aesthetic creations;
• schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers; and
• presentation of information.

Patents shall not be granted in respect of:

• inventions whose publication or exploitation would be contrary to public policy or morality (for example, methods for cloning human beings or for modifying the genetic identity of the gene line of human beings);
• methods for treatment of humans or animals by surgery or therapy and diagnostic methods; and
• plant varieties or animal races.

In addition to that, utility models may be also granted to the logic of computer programs (but not to the programs per se), provided that they concern a field of technology.

Patents may, however, be granted for products, such as substances and compositions, to be used in the treatment, therapy and diagnosis of humans and animals as long as this use is novel. Known substances and compositions are also protectable in combination with a first, second or multiple medical indication as long as that combination does not belong to the state of the art.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The inventor, or his or her successor in title, shall have a right to the grant of a patent. Until the contrary is proved, the first applicant shall be regarded as the inventor.

Employees shall also be entitled to the grant of a patent (utility model) for inventions they have made during their employment relationship, unless otherwise provided by contract.

An employee shall be entitled to special and fair remuneration in any case where his or her invention becomes the property of his or her employer or subject to the employer’s right to use.

In the case of an invention made by an independent contractor, the right to the grant of a patent depends on the respective contract.

A patent (utility model) applied for by a joint venture or by several persons (inventors) as participants in the same invention shall be granted without any determination of each party’s share. The legal relationship of the co-patentees shall be governed by civil law.

In any case, the inventors shall be entitled to be named as the inventors. The right may not be transferred or inherited. Renunciation of the right shall have no legal effect.

The right arising from a patent (utility model) application and the granted right is recorded at the Patent Office. It shall be inheritable and not pass to the state. Both rights may be transferred to others, either wholly or in shares, by a legal act, by a court order or by a transfer pro mortis causa. All rights relating to a patent (utility model) shall be acquired by entry in the Patent (Utility Model) Register and shall be binding on third parties. A request for such entry shall be accompanied by a copy of the document on which the entry is to be based. If the original of the document is not a public document, it shall bear the duly certified signature of the person alienating his right. In case of an assignment of a patent, a corresponding declaration of the parties or their representatives regarding the assignment might be presented instead of an assignment document.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

After filing a patent application, the Patent Office usually releases a first office action within six to eight months, citing publications relating to the subject of the invention and, if need be, raising any formal and statutory requirements for the patentability. In one or several responses to further office actions, the applicant then may change or restrict his or her claims. Where the Patent Office (Technical Department) considers that the application is in the proper form, which may take between one and several years, it shall decide on the granting of a patent. This is published in the Official Patent Gazette and recorded in the Patent Register. At the same time, the patent is published.

After 18 months from the application or priority date, the application is published, if possible together with a search report, otherwise the search report shall be published later. After the publication of the application, anyone can raise substantiated objections against the patentability. However, this third party has no standing in the proceedings before the Patent Office.

Costs for the application procedure (including official and attorneys’ fees) may range from €3,000 to €6,000. Total costs for gaining a registered patent may range from €5,000 to €12,000. The annual fees (without attorneys’ fees) range from €104 to €1,775.

When applying for a utility model, after a few months the Patent Office releases a search report together with, if necessary, formal objections and sets a term within which the claims may be changed. Following this, the utility model is granted, published and registered. Costs for a utility model application (including official and attorneys’ fees) may range from €2,500 to €5,000. Total costs (in the case of formal objections, amendment of claims, etc) may range up to €9,000. Annual fees (without attorneys’ fees) range from €52 to €470.

During the application proceedings, a patent or a utility model application may be converted once, upon request, into the other type of application.

Are there any procedures to expedite patent prosecution?

In the course of the examination procedure for a patent application, a statutory accelerated prosecution does not exist. If it has not been settled, dealt with or answered within about six months one might, however, file a petition to the president of the Patent Office whereupon a time frame for the outstanding official response is usually given.

The registration and publication of a utility model may, however, be accelerated by filing a respective request and paying a surcharge fee. Provided that all formal requirements are fulfilled, the publication and registration will then be effected immediately, namely, irrespective of and independent from the finalising of the obligatory search report, which, in this case, will be issued separately.

As a pilot project, the Austrian Patent Office offers the possibility of a fast-track patent application without any surcharge in the case of an online patent application supported by reasons for the expedited prosecution. Given these prerequisites, a first office action with a search report is issued within four months.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The application of a patent (utility model) shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. If it concerns biological material, this material has to be deposited with a depository institution as defined by the Budapest Treaty.

The description of the invention has to be in detail only so far that a person skilled in the art may carry it out. Generic terms are allowed. Artificial words or abbreviations without explanations are regarded as insufficient disclosure. Features that cannot be gathered plainly would also lead to insufficient disclosure. The disclosure has to be sufficiently complete that a person skilled in the art can carry out the invention without unreasonable efforts.

The application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. If there is no compulsory connection between several individual inventive parts of an application, divisional applications may be filed voluntarily or in response to a demand of the Patent Office.

The patent claims shall, in a clear and distinguishing manner, define the matter for which protection is sought. They shall be supported by the specification. Generally, all known and essential features should be summarised in an introductory part of the main claim (the classifying clause), whereas all new and inventive features are to be concentrated in a second part (the characterising clause). The two clauses should be separated by the phrase ‘characterised in that’. Additional, but not compulsory, inventive features may be claimed in sub-claims. In the case of an invention consisting of the combination of known features, the division into two parts may, however, be neglected. Alternatively, the language ‘A characterised by B’ or ‘B characterised by A’ may be chosen. The teaching of a patent claim is regarded as clear and complete as long as a person skilled in the art may carry it out without an inventive effort. Only positive features should be mentioned (eg, ‘without…’ is inadmissible). Mere descriptions of effects are not admitted. In method claims, device features should, if possible, be avoided.

The abstract shall contain a short summary of the disclosure contained in the application. A structure similar to the main claim is advisable (namely, state of the art (classifying clause), aim of the invention and inventive features (characterising clause)).

The description of the invention may be supported by drawings. In the claims reference, numerals of features should be indicated in brackets.

Must an inventor disclose prior art to the patent office examiner?

There is no obligation to disclose prior art, although it may be cited from the beginning in the application. However, on the front page of a granted patent, only publications that were cited by the Patent Office are listed.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Within 12 months of the original filing of a patent or utility model application, another application concerning the same invention may be filed claiming original priority. In this application, additional matter and claims may be presented, claiming, if necessary, different priorities for different parts.

Where an improvement or other further modification of an invention that is already protected by a patent or for which a patent has been applied for and is eventually granted is the subject of an application by the patentee of the parent patent or by its successor in title, the patentee or its successor in title may apply either for an independent patent for such improvement or other further modification or for a patent of addition dependent on the parent patent. Additions to patents shall expire together with the parent patent but may be held independent and declared independent if the parent patent expires before the final term.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The resolutions of the Technical Department or the Legal Department of the Patent Office may be recoursed at the Vienna Upper Provincial Court. Against decisions of that court revision-recourses may be raised at the Supreme Court of Austria, provided that the legal requirements are fulfilled.

The final decisions of the Nullity Department of the Patent Office may be appealed to the Vienna Upper Provincial Court, whose judgments may be taken under revision, if admissible, at the Supreme Court of Austria.

Does the patent office provide any mechanism for opposing the grant of a patent?

Within four months of the grant of the patent, an opposition may be lodged on the grounds of lack of patentability, insufficient disclosure, disclosure surmounting the originally filed version and micro-organisms not being available at the depositing institution.

The Technical Department of the Patent Office has to decide upon the opposition on the basis of the writs presented with or without an oral hearing. Each party has to bear its own costs. The decision is published. In the case of a revocation, the application or patent shall be considered as not having been operative from the beginning. An opposition procedure may last one to several years and may cost between €8,000 and €16,000 (first instance: Patent Office; second instance: Vienna Upper Provincial Court).

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The applicant shall have the priority right to his or her invention from the date on which his or her application for a patent or utility model was duly filed. From such date he or she shall have priority over every similar invention filed later. The right of priority derived from an earlier application must be expressly claimed.

If the grant or maintenance of the protected right depends on the validity of the claim to priority, the right of priority must be proved. The departments in charge of the Patent Office are responsible for the respective decisions.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

A patent may be revoked in whole or in part if the grant of compulsory licences has not sufficed after two years to secure the exploitation of the invention in Austria to an appropriate extent.

A patentee shall be declared to lack title if it is proved that he or she was not entitled to the grant of the patent (for example, was not the inventor) or that the essence of the application was usurped from a third person.

Where the claim of the applicant (namely, the real originator) is allowed, he or she may request assignment of the patent to him or herself, otherwise the patent protection shall end upon the respective decision of the Patent Office.

Within six months from the grant of a patent, if it was not opposed, or within two months after a final decision on an opposition, the patentee may file a separate application (partial application) claiming the original priority.

The claims may be amended by the owner of the protection right at any time as long as the amendment concerns a clear restriction of the scope of protection and is accepted by the respective department of the Patent Office. In nullity proceedings, the Nullity Department may amend the claims in its decision.

How is the duration of patent protection determined?

The maximum term of a patent shall be 20 years from the date of application. For utility models, the maximum term is 10 years.

The term of an supplementary protection certificate (SPC) starts with the expiry of the respective patent for a duration that is equivalent to the time period between the filing date of the patent and the first admittance of the product to the market in the EU minus a period of five years. However, the duration of an SPC is at most five years from the date it was granted. An SPC concerning pharmaceuticals for children may be, upon request, prolonged for six months.

Law stated date

Give the date on which the information above is accurate.

1 March 2021.