Amendments to the Trademark Act, Patent Act, Utility Model Act, Semiconductor Act, Design Act and Patent Office Fee’s Act
An amendment of IP laws was published on 1 August 2017, Federal Gazette I No. 124/2017. The main reason for the amendment is EU Directive 2015/2436 of 16 December 2015 to approximate the laws of the member states relating to trademarks, which has to be brought into force in Austria by the beginning of 2019.
The main changes of Patent Act and Utility Model Act, which came into force on 2 August 2017, concern somewhat simplified requirements for recordals in the respective registers. In general, a copy of the respective document has to be filed, whereas in the past only an original was accepted. A document other than a public document still has to bear the duly certified signature of the physical or juridical person alienating his, her or its right. Instead of such a document, a unanimous declaration of the parties or their representatives may be submitted. The Patent Office reserves, however, the right to request any originals, certified copies or further documents.
The new regulations are:
Section 43, Patent Act
(6) A request for an 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.
(7) The request for entry, the document and the declarations shall be subject to the examination by the Patent Office on form and contents. Upon reasonable doubts the Patent Office may request originals or certified copies or further documents.
Section 32 (2), Utility Model Act
A request for an 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 Utility Model, a corresponding declaration of the parties or their representatives regarding the assignment might be presented instead of an assignment document.
Recent judgments of the Vienna Upper Provincial Court
A new development does not lack inventiveness if only a person skilled in the art could have reached it based on the state of art. It is only non-inventive if the person skilled in the art would have suggested it upon a reasonable cause with expectation of an improvement or advantage (‘could-would-approach’).
The assessment of an inventive task may be especially performed based on the European Patent Office’s problem-solution-approach: at first the most pertinent state of the art is to be determined; secondly the factual technical problem to be solved is to be defined; and finally it is to be examined whether the claimed invention would have been obvious to a person skilled in the art in the light of the pertinent state of art and the factual setting of the problem (VUPC of 20 October 2016, 34 R 68/16v - Austrian Patent Gazette 2017, 30)
Defence of ‘free state of art’
An applicant has brought with the Nullity Department of the Austrian Patent Office a petition for a negative declaration decision against a patent owner (defendant), namely that the device of the applicant (covered by its own patent) does not fall under the scope of the patent of the defendant. The applicant argued successfully that the features of its device are closer to the state of art than to the features of the defendant’s patent. The Nullity Department agreed and moreover held that even if the applicant’s device had lain within the equivalency range of the defendant’s patent, it would not fall under its protection.
The defendant filed with the Vienna Upper Provincial Court (VUPC) an appeal against this resolution but failed. It argued that when all features of the granted patent claim are realised identically by the applicant’s device, the Nullity Department is not allowed to assess the validity of the defendant’s patent in a declaratory proceedings. The VUPC disagreed and held that the validity of a litigious patent is not to be questioned in an infringement suit (or in declaratory proceedings) is observed in Germany, albeit only in infringement proceedings, but cannot be brought into accordance with Austrian Patent Law. This is because the Patent Office has to consider in declaratory proceedings the complete state of art. This means that the scope of protection of a patent is limited by the state of art on its priority date because a patent claim cannot encompass features that belong to the state of art prior to the application date.
This resolution of the VUPC is a landmark decision because it clearly allows the defence of ‘free state of art’ in declaratory proceedings. Such a defence results, in case of acceptance, implicitly in the nullity of the litigious patent, although that nullity is only effective inter partes (VUPC of 15 March 2016, 34 R 146/15p - Austrian Patent Gazette 2017, 11; Austrian IP and Copyright Magazine 2016, 267; GRUR Int 2017, 35).
Definition of ‘active ingredients’
The object of a Supplementary Protection Certificate is a product but not the invention protected by the basic patent. According to the rulings of the CJEU, a SPC cannot be granted for active ingredients that are not disclosed in the claims of the basic patent. It is, however, not required that the active ingredient is disclosed in the claims of the basic patent by a structural formula. A functional formula given in the claims of the basic patent may also suffice for the definition of a product. In that case, however, it is a prerequisite that the claim refers implicitly but necessarily to the product in question, namely in a specific way and manner.
This decision was released in connection with an SPC application for a product whose active ingredient was not mentioned and defined in the specification and claims of the basic patent (VUPC of 10 February 2016, 34 R 138/15m and confirmed by the Supreme Court, 30 August 2016, 4 Ob 104/16x - Austrian Patent Gazette 2017, 67; Austrian IP and Copyright Magazine 2017, 45).
Combination of active ingredients
An SPC application was rejected by the Austrian Patent Office, the VUPC and the Austrian Supreme Court because it concerned a product containing a combination of three active ingredients, whereas in the basic patent only two active ingredients were specifically mentioned. It was held that an SPC can only be granted for a product that is covered by the scope of protection of an upright basic patent. An active ingredient that is just mentioned as ‘other therapeutical constituent, if applicable’ is not disclosed by the basic patent (VUPC of 19 May 2016, 34 R 25/16w, Supreme Court of 26 September 2016, 4 Ob 169/16f - Austrian Patent Gazette 2017, 34; Austrian IP and Copyright Magazine 2017, 97).
Judgment of the Austrian Supreme Court
In the course of an infringement proceeding a preliminary injunction was also requested by the plaintiff. In the preliminary injunction proceedings the plaintiff demanded not only immediate discontinuance but also a product recall of the alleged infringing goods by the defendant. The court of first instance (Vienna Commercial Court) rejected the request for preliminary injunction, whereas the court of second instance (Vienna Upper Provincial Court) granted it in full scope. Upon an extraordinary revisional-recourse by the defendant, the Austrian Supreme Court confirmed the decision with regard to the claim for discontinuance but dismissed the request for product recall. It held that a claim for product recall of infringing goods falls under the claim for elimination. An elimination can, however, only be ordered when the elimination of the illegal condition lies actually within the disposal of the infringer. In preliminary proceedings a recall of infringing goods has to be left out of consideration because an effected recall would create a non-recoverable condition. Moreover, product recalls are not contained in Directive 2004/48/EC on the enforcement of intellectual property rights in connection with temporary measures such as preliminary injunctions (Austrian Supreme Court of 21 February 2017, 4 Ob 141/16p - GRUR Int 2017, 744).
Back to top