A patent is an intellectual property right, by which a technical invention is protected. It is basically a national right and accordingly underlies the legal provisions of the respective state. The legal provisions in this respect in Austria are layed down largely in the Austrian Patents Act (PatG). A patent right of the European Community does not (yet) exist. The so called European Patent has its own regulations reffering to the procedure of the patent to be granted, but leads again into the national patent right.

A patent protection is obtained firstly by a patent application, in which the invention is described in a concise and clear manner – as the case may be by aid of drawings –, being examined formally and substantially by the Austrian Patent Office in Vienna. In the course of the filing- or examination procedure (also called granting procedure) the patent application is examined by a competent and skilled examiner, whether to be new, inventive and industrial applicable. The applicant can also comment on the opinion of the examiner. After successful conclusion of the granting procedure the patent will be granted. This will be attested by a certificate.

A patent is an exclusive right; that means that the patent owner can exclude any person from the use of its invention protected by the patent.

Patents constitute (next to utility models and semiconductor rights) the best possibility of protection for technical inventions. The requirements for a national Austrian patent application are identical to those for European patents filed under the EPC:

	novelty – no general period of grace (apart from exhibition priorities or abusive disclosures similar to Art. 55 EPC)
	non-obviousness
	industrial applicability

Exceptions from patent protection are analogous to those according to Art. 52 (2), (4) and 53 EPC (discoveries, scientific theories, mathematical methods, aesthetic creations, inventions contrary to public order or morality, plant and animal varieties, surgical, therapeutical or diagnostic methods on humans).

Austria is a member state of the Paris Convention (PC), of the EPC, the PCT and – as an EU member state – of course of GATT/TRIPs. The patent law and the court proceedings are therefore in line with the GATT/TRIPs rules.

Patents with validity in Austria may be obtained by national filing, by nationalising a PCT application in Austria, or by filing an European patent (with Austria being designated contracting state). All these patents obtained (for the same invention) via these different routes may exist next to each other; there is no automatic withdrawal or invalidity of the national patent once the European patent for Austria is validated. Double protection is therefore possible. Once granted, the patent entitles the patentee to exclude others from industrially producing, disposing, offering for sale or using, importing or possessing the subject matter of the invention.

The patentee or his exclusive licensee (the non-exclusive licencee only if he is expressely authorised thereto) may sue for an injunction, interdict restraining the infringing act, an order to destroy the infringing objects or the means for producing them, rendering of accounts, reasonable compensation, damages, publication of the judgement, etc.. The patentee is furthermore entitled to prompt disclosure of the origin and channel of distribution of the invention unauthorisedly used by the infringer. A prosecution of infringer is possible by way of Civil Law as well as (under certain conditions) by way of Criminal Law.

Of course, it is also possible to obtain injunctive relief in preliminary court proceedings within a considerable short time (few weeks; however, in exceptional cases it may take longer or also shorter). In preliminary court proceedings the alleged infringer usually gets the opportunity to file observations.

In infringement proceedings the claimant has to provide all proofs of the infringing acts; in Austria, in civil proceedings there are until now no "discovery" proceedings (as in the USA) or similar proceedings (such as the "Search and Seize Order", formerly "Anton Piller Order", or the "Saisie de Contrefaçon"). However, in criminal law proceedings the investigating magistrate may grant search and seize orders.

The exigencies of documents for patent applications are simple. Power of Attorney, two sets of description, abstract and claims in German, perhaps drawings, and a petition for application. Furthermore, filing an application in English or French on a provisional basis is possible, with the necessity that a German translation is to be filed within two months upon request of the Patent Office (after approx. 3 months). If desired, the inventors can be named. However, naming of inventors is not compulsory in Austria. It would be helpful, if any order to file a new patent application could already contain the indication whether the inventor(s) should be named.

Claiming a priority for a patent application according to the Paris Convention and GATT/TRIPs is, of course, also possible in Austria. Also several priorities can be claimed, and a claim encompassing more than one embodiments may have several priorities. Also claiming an inner priority (i.e. of an earlier Austrian application, provided that it has been filed no more than 12 months prior the filing date of the later application) is possible. The submission of the priority document is in Austria only necessary if in the examination (or in an opposition) procedure literature is found published within the priority interval. In such a case, the Austrian Patent Office requests to submit the priority document. If the first application establishing priority is filed in Austria in a name different to the name of the applicant, of course a document on the succession in title is required. If, therefore, for a patent application priority documents have been sent, they are kept in our files to have them at hand in the case they are needed.

In Austria, patent applications are automatically examined by the Patent Office without any request being required. In the course of this examination an authorised examiner of the Austrian Patent Office examines, whether the application satisfies the exigencies of the relevant provisions of the Austrian Patents Act; in particular, with regard to patentability of the subject-matter of the application.

The Austrian Patent Office issues a search report, in which prior art documents (prepublications) are listed, which the examiner believes that they have to be taken into account for assessing the patentability of the subject-matter of the application.

The search report is issued together with a first Office Action, in the latter the opinion of the examiner with regard to the invention laid down in the application is summarised. The issuance of the search report and the first Office Action may be expected within 9 months after filing the application (however, in case of applications claiming a (foreign) priority, it may take longer). In urgent cases the examiner can be contacted and asked to accelerate the examination, which – in most of the cases – will have the desired effect.

Until the expiry of 18 months from the filing date, or, if a priority is claimed from the priority date, the content of the patent application is kept secret. After 18 months the application will be published; in particular, the application documents as filed, the claims as present and, if already issued, the search report. The publication will be announced in the Austrian Patent Official Gazette, in which other applications can be monitored. In any case, from that publication of the application any person may inspect the file.

In the course of the examination procedure the subject-matter of the application can be discussed with the examiner and the description, the claims, the drawings and the abstract can be amended within the disclosure of the application as filed. When the text of the application is agreed upon with the examiner, the grant of the patent is effected upon decision. The grant of the application is announced in the Austrian Patent Gazette, a patent document is published, the patent is entered into the register of the Austrian Patent Office and the patent proprietor receives a deed.

Within four months after publication of the grant of the patent any person may file an opposition. To this opposition the patent proprietor can submit his writen opinion. A further exchange of letters can arise upon order of the authorised referent; e.g. if the patentee amends his claims. The opposition proceedings can also be supported by oral proceedings. Oral proceedings do take place whenever evidence is to be given by wittnesses and/or by inspection of a sample. Each party to the proceedings can file a respective request or, if the authorised referent believes it is necessary, oral proceedings may be appointed ex officio. The decision will be announced in the Austrian Patent Gazette. The patent can be revoked entirely or partly by this decision. If the patent is partly maintained, the respective amendments will be published.

The opposition proceedings are held before the technical department of the Austrian Patent Office, wherein a senate is responsible consisting of two technically qualified members (among them the authorised examiner of the examination procedure) and one legally qualified member. Each party to the opposition proceedings has to bear its own costs.

If you would like to know more about this topic, please read "New Patenting Procedure" in Austria.

Against decisions in opposition proceedings – as well as against decisions in the examination proceedings –, an appeal within two months can be filed. An appeal can only be lodged by the adversely affected party, i.e. by that party which has not achieved what it had requested in the contested decision. Within the open term the appeal must be filed together with an extensive substantiation of the grounds of appeal (statement of appeal). Because the appeal proceedings are proceedings revising the contested decision, the submission of new evidence is restricted to supporting or confuting the facts brought forward before the first instance (interdiction of novation). The other side can reply to the statement of appeal, for which another two months are provided. In contrast to the two-months-term first mentioned for lodging the appeal, this term is extendable.

Prior to the remittance of the appeal to the authorised appeal department and prior to the factual start of the appeal proceedings, the first instance, which has issued the contested decision, can conduct so called preliminary appeal proceedings (similar to the interlocutary revision in proceedings before the European Patent Office), through which the appeal may be already settled in the run-up.

About two months (from the filing date of the appeal) are scheduled for the preliminary appeal proceedings. Preliminary proceedings are finalised with issuing a preliminary appeal decision. This preliminary decision is a substantial decision which displaces the contested decision of the first instance if the appeal is not rejected as being inadmissible. Thereby, the first decision will be amended or reversed. If a party, nevertheless, wants to carry out the factual appeal proceedings, a request of remittance is to be furnished within 14 days to the appeal department. Therewith the preliminary appeal decision is suspended and the factual appeal proceedings may begin.

The appeal proceedings before the appeal department of the Austrian Patent Office substantially consists of the exchange of writs and a hearing. The decision (final decision) of the appeal department is contestable, wherein a further instance, the Supreme Senate for Patent and Trademark Matters (Oberster Patent- und Markensenat OPM) acts as an independent legal authority. As in opposition proceedings each party to the proceedings has to bear its own costs.

A patent application may be converted into an utility model application as long as no decision of grant or of rejection has been issued. Such application may, however, not be reconverted. A conversion into an utility model application is advisable if the examination has acknowledged novelty, but not an inventive step, because the requirements for utility models are not that strict as they are for patents. However, only national Austrian patent applications may be converted.

On the other hand, an utility model application may be converted into a patent application within a period of two months from the delivery of the search report except in case of accelerated publication and registration of the utility model. It may be useful to convert an utility model application into a patent application if a longer period of protection is desired.

Branching off an utility model application from a patent application is one of the most interesting instruments for property rights and enforcement strategies, especially in view of the fact that the range of inventions protectable by utility models is not restricted to particular fields but is rather almost identical to that of patents. An utility model may be branched off from a pending patent application any time during the entire examination procedure. The pending patent application needs not necessarily to be a national Austrian application; it may also be an European or international application if Austria is mentioned or designated as a contracting state.

It is even possible to branch off after the pending period of the patent application has ended (e.g. even until after opposition proceedings have been settled before the Austrian or the European Patent Office). Branching off is possible before the expiry of:

	two months from the date on which the patent application is considered to be withdrawn, or
	two months after the decision to reject the patent application has entered into force, or
	six months after the patent is considered to be granted if no opposition has been filed, or
	eleven months after the decision to grant an European patent has entered into force, if no opposition has been filed, or
	two months after the decision on a timely filed opposition has entered into force.

In principle, (with the exception of special terms, like the period to claim a priority, the period for filing an opposition, and the period for lodging an appeal), all terms within proceedings are extendable upon request. If no instructions have been received in time, normally, petitions for extension of term are filed, and the new term will be communicated.

Whatever terms possible, extendable or non-extendable, are monitored by us and communicated to you on time together with a respcetive advice.

With an order to file a patent application, a basis text (accompanied by drawings) is desirable, which – except an order to the contrary exists – is revised, checked and, if necessary, adapted to the Austrian practice. We communicate the proposal on the text of the patent application to you which we then amend and broaden according to your wishes and finish it for its filing. To keep the costs as low as possible, the application documents are prepared in a way that the best use is made of the permitted 40 lines per page, with a minimal margin left. Thus, the publication fee for publishing the patent document is kept low. This is because, practically, the highest expenses for voluminous applications arise when it comes to the publication of the patent application, which fee depends on the number of pages of the application document (200,-- EUR + from the 16th page, for each succeeding 15 pages, repectively, 130,-- EUR, wherein also only partly written pages do count). Therto the document fees are to add which are to be paid retrospectively when the proceedings has been finalised. These document duties incur for all petitions being made before the Austrian Patent Office in the course of the examination procedure, such as, for instance, for each request on an extension of term. On top of this, the first annual (renewal) fee to be paid (third, fourth or further annual fee) is to be included, which is due after the issuance of patent grant.

All Office Actions and copies of the references cited therein are sent to you; usually, proposals how to respond to the Office Actions are already made when sending the Office Action to you.

The requirements for documents on which recordals at the Patent Register shall be based (assignments, licences and the like), are very strict in Austria. It is important that the patentee's consent to the recordal has to be seen directly from the document. Erasures or other corrections on the documents must not be made. Even the smallest error will lead to the rejection of the request for recordal. Therefore, it is important that such documents are carefully drawn up, particularly if legalisation or apostilles etc. are required. Of course, we will be pleased to provide, if possible, full and detailed information and to prepare necessary documents for each specific case.

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In Austria it is possible to ask for an expert opinion whether or not a specific invention is patentable. Such searches are made by the Examiners at the Austrian Patent Office among the literature used in examining patent applications. Moreover, it is possible to have official searches been done at the Austrian Patent Office as to novelty of an invention, for instance to render it possible to any interested party to reveal literature on which oppositions or revocation actions may be based. Request on both issues are dealt with promptly so that the results are delivered in a short time (e.g. one month or even shorter). Besides of this, the costs are quite low compared to official searches in other countries.

As in all other countries, also in Austria any granted patent may be attacked by an action for revocating the patent. The revocation proceedings is wound up in two instances. Revocation proceedings are of special importance against an infringement action as a possibility of defence by the accused party. First of all, the Court examins independently the nullity of a patent. If it takes the view (via an expert opinion by an official expert) that the revocation of the patent is likely, the infringement proceedings is suspended until the decision of a revocation proceedings is in force. By shortening the terms and by cancelling the possibility to have the terms extended, an acceleration of the revocation proceedings is possible in cases where an infringement action is pending.

On the other side, the possibilities for patentees to proceed against an infringing party are manifold, wherein not only his claims e. g. on cessation and on compensation as well as additionally the claim on rendering accounts and disclosure about the channels of distribution are to be pointed out, but also effective proceedings in obtaining interlocutory injunctions for seizing immediate measures against infringements (see also point "General").

Finally, the possiblility should be mentioned to have officially declared by the Austrian Patent Office (declaratory judgement) that a specific object or a specific process is covered or is not covered by a particular patent. A respective request to this official verification must be made before an infringement action has been initiated, because a request for such a declaratory judgement must be rejected if an infringement action involving the same subject-matter between the same parties is pending or has been settled and has entered into force. The decision of the Austrian Patent Office (second instance: Supreme Senate for Patent and Trademark Matters) has a directive character for the Court if it has been made prior to the decision of the first instance on the infringment.

Austria is member of the EPC as well as of the PCT including Chapter II PCT (so that Austria may be elected in the case of an International Preliminary Examination request). For the validation of PCT applications and EP patents in Austria, a German translation thereof must be established insofar as the language of the application as filed was other than German. Likely, this applies also with respect to the attainment of a claim for compensation in Austria after publication of a PCT or EP application.