SONN Patentanwälte – IP Attorneys

November 2001 Amendment to the Patent Attorneys' Act, 2001

The Austrian Patent Attorneys' Act has regulated the profession of patent attorney since June 7, 1967. On August 11, 2001, an amendment to this Act entered into force (Federal Law Gazette No. 2001/107). In particular, the amendment aims at liberalizing access to the profession of patent attorney, ensuring EU conformity and adapting to prevailing law. In detail, the amendment refers to the following points:

1. Access to the profession of patent attorney

1.1 Eligible persons

Entry into the list of patent attorneys no longer requires residence in Austria. It will be sufficient that the permanent office address is in Austria.

Moreover, persons who work in the field of industrial property rights corresponding to the field of activity of a patent attorney can also take the patent attorney exam after the required period of practical experience.

1.2 Practical experience

The required period of practical experience of a candidate patent attorney remains unchanged, i.e. 5 years. For the newly eligible persons, the period of practical experience in the field of industrial property rights (e.g. in an industrial enterprise) corresponding to the field of activity of a patent attorney is 7 ½ years. If a candidate has practical experience in both fields, the required periods will be calculated in ratios.

1.3 Educational requirements

In the past, the educational requirements were a degree in technical or mathematical and natural science subjects from a university in Austria or a nostrificated corresponding academic degree from abroad. According to the amendment, patent attorneys must have completed university level education in a field of technology or natural sciences. This allows for a more flexible application of regulations in case of future amendments or introductions of new study courses at university level.

1.4 Examination

In the past, the law required that the patent attorney exam be taken only after the period of practical experience has been completed. Now, however, it is possible to take the patent attorney exam already during the final year of said period.

The fields of examination are extended with respect to the new intellectual property rights of utility model, protection certificate, and protection of species, as well as with respect to the system of using experts and providing expert opinions. A passed European patent attorney exam has to be taken into consideration.

2. Practicing the profession of patent attorney

2.1 Forms of organization of patent attorneys

Patent attorneys are now officially allowed to form partnerships, i.e. in the following legal forms:

- civil law partnership (as in the past),

- commercial partnership in the form of a patent attorney partnership,

- patent attorney firm in the form of a limited liability company.

It is still not possible for patent attorneys to form a general mercantile partnership (OHG) or a limited partnership (KG).

If patent attorneys establish a firm, they have to register with the list of patent attorney firms.

If patent attorneys establish a limited liability company (GmbH), its name must contain the name of at least one patent attorney partner and a reference to the profession. Otherwise, the general rules for limited liability companies apply, as far as applicable, particularly the requirement to carry the additional designation "limited liability company" (Gesellschaft mit beschränkter Haftung) or its proper abbreviation.

If patent attorneys establish a general or limited commercial partnership, the name of the partnership must contain the designation "general commercial partnership" (Offene Erwerbsgesellschaft) or "limited commercial partnership" (Kommanditerwerbsgesellschaft) or the proper abbreviations thereof, or the designation "partnership" (Partnerschaft) or "limited commercial partnership" (Kommanditpartnerschaft), and the addition "and (&) partners" if the partnership name does not contain the names of all the partners, and a reference to the profession.

Now it is also possible to give power of attorney to a patent attorney partnership or firm.

2.2 Emplyment

Now a patent attorney may also work as an employee of a patent attorney partnership or a commercial enterprise.

2.3 Branch offices

Similar to lawyers, patent attorneys may now also establish branch offices. A branch office must be headed by a patent attorney whose office address is the address of the branch office. Any branch offices must be places of delivery in the sense of the Delivery Act (Federal Law Gazette No. 2000/1982). The head of the branch office may also be an employed patent attorney whose office address is the address of the branch office.

2.4 Temporary practice of the profession of patent attorney

Nationals of any country of the European Economic Area who reside in such country and fulfill the requirements for practicing the profession of patent attorney may temporarily pursue patent attorney activities in Austria like a patent attorney registered in the Austrian list of patent attorneys, if they provide services in the sense of Art. 50, Treaty of the European Community. Foreign providers of such services have the same position, the same rights and the same duties as Austrian patent attorneys. In order to avoid confusion with patent attorneys registered in the Austrian list of patent attorneys, persons who pursue patent attorney activities in Austria only temporarily must clearly indicate the city and country of their office address abroad.

2.5 Patent attorneys' rights

The new Act expressly includes the rights and competences patent attorneys have also had in the past, i.e. the competence to give an expert's opinion and to work as an expert in the field of protection of inventors, species and semiconductors and in the field of design and trade marks.

2.6 Liability insurance

Now a professional liability insurance is obligatory, and it is also a requirement for registration in the list of patent attorneys. The minimum limit of indemnity is 400 000 Euro.

The minimum limit of indemnity for patent attorney partnerships or firms is a total of 2.4 million Euro for each insurance case.

3. Disciplinary matters

The Chamber of Patent Attorneys, having disciplinary powers, now also has to check that (foreign) service providers carry out patent attorney activities only temporarily and not permanently.

4. Formal changes

The formal changes in the new Patent Attorneys' Act refer to the Federal Ministry of Traffic, Innovation and Technology as the newly responsible organ for patent attorneys.

(A detailed article on the amendment to the Patent Attorneys' Act, 2001, can be found in the journal Österreichische Blätter für gewerblichen Rechtsschutz (Austrian Paper for the Protection of Industrial Property Rights), ÖBl, 2001, 195-199).