June 2005

As of 1 July 2005, the Patents Act and Fees Amendment 2004 introduces quite substantial procedural changes which may be viewed as a further important step towards harmonizing Austrian Patent Law with international developments.

Publication of Patent Applications after 18 months

One of these changes regards the future - electronically provided - publication of Austrian patent applications after 18 months from the filing date, or priority date, respectively, with an earlier publication also being possible upon request. What will be published is the specification, the patent claims, the drawings and the abstract as originally filed, as well as - if completed in time - a search report and, furthermore, if amended patent claims have been filed in time before the technical preparations for the publication have been completed, also amended patent claims filed last. The published application will entail a temporary protection for the applicant against unauthorized users of the subject matter of the application, such protection, however, merely comprising a claim to an adequate compensation; such claim to compensation can be asserted up to one year after a patent has been granted on the respective application.

When filing the application, a publication fee - in addition to the filing fee - will have to be paid for publication of the application.

Earlier patent applications still pending on 1 July 2005 ("pending" means that a decision for publication has not yet been made under the procedural law hitherto valid) also shall be published provided that the respective publication fee has been paid. The first publications of applications are expected to occur in September 2005 at the earliest.

Opposition after grant of a patent

A second, quite substantial item in the new regulations regarding the patent granting procedure is that instead of an opposition before (final) grant of a patent, as hitherto provided, now the patent will be granted on an application immediately after the examination procedure has come to a positive conclusion, provided that a publication fee ("granting fee") has been paid, and only thereafter it will be possible to lodge an opposition (term: 4 months after grant of the patent). However, the grounds for an opposition do no longer include those of a lack of entitlement to the application, or of the unlawful usurpation thereof, respectively; these grounds for fighting a patent can only be asserted in the form of a Request for Disentitlement at the Nullity Department of the Austrian Patent Office.

What is new is that also in the 1^st instance of the Opposition proceedings, optionally an appointment for oral proceedings - upon request of the parties or ex officio - can be made (hitherto, Opposition proceedings in the 1^st instance have only been in writing).

The decision on the Opposition (which may regard the maintenance, a partial revocation or the entire revocation of the patent), and quite generally, decisions of a 1^st instance of the Patent Office, can be appealed from within a term of two months, wherein, however, in contrast to previous provisions, also the statement setting out the grounds for the appeal must be provided within this term of a 2 months appeal period. To simplify the proceedings, it has now become possible that the 1^st instance, which has issued the decision appealed from, can deal with this appeal within a term of 2 months from the receipt thereof, by providing a preliminary decision on this appeal, wherein it can reject the appeal, set aside the decision, or change the latter in any way. Thereafter, within two weeks, each party can file a request at the department of 1^st instance to submit the appeal to the Appeals Division for a decision; with this, the preliminary decision on the appeal will become invalid, and the Appeals Division will become the institution competent therefor. In these proceedings before the Appeals Division, just as hitherto has been the case, oral proceedings shall be appointed upon request or ex officio.

What is new for the Opposition proceedings in Austria is that the parties themselves will have to bear the costs thereof - similar as in European Opposition proceedings. If, after carrying out the Opposition (Appeal) Proceedings, the patent is partially or wholly revoked, the application and the patent shall be deemed not to have had the effects to the extent, in which the patent is revoked.

Revision of Appeal decisions

Contrary to the former legal situation according to which no ordinary legal remedy was allowable against the final decision of the Appeals Division (but, possibly, merely an appeal at the Austrian Constitutional Court), the amended Law now provides for the possibility of an Appeal from final decisions of the Appeals Division to be lodged with the Supreme Patent and Trademark Senate (SPMS), which has already been the instance of appeals in Nullity Proceedings. The term for filing the appeal with the SPMS is 2 months from the delivery of the decision on the appeal, and in principle, the proceedings are in writing, even if the SPMS may appoint oral proceedings, if necessary (upon request or ex officio). Thus, for the first time, a TRIPS-conform revision of decisions on appeals has been established, thereby fulfilling a wish long held by parties concerned.

Observations raised by Third Parties

A new feature within the granting procedure which may be of less importance is that it will now be possible for any person to raise observations against the patentability of an invention filed, after the application has been published, and also in this case - similar as according to Art. 115 EPC - that person shall not be party before the Office third parties are not allowed.

Further processing

Another, more important new feature regarding the granting procedure is that now a decision to refuse the application will be issued for any future patent applications, and applications which on 1 July 2005 are pending, if a response is not filed to an Office Action within the term set therefor, it being possible then to request further processing of the application within 2 months - similar to Art. 121 EPC. This possibility of further processing substitutes the provision hitherto effective according to which, when a term set by an Office Action has not been met, the patent application had been deemed abandoned, yet could be re-activated within a term of 4 months by filing a response to the Office Action and payment of a fee.

Annuities

The present provisions governing the granting of a patent on an application, with a subsequently filed Opposition, also required an adaptation of the payment of annuities. Other than in many other countries or also according to the EPC, Austria continues to stick to the principle that annuities become due only after the positive conclusion of the granting procedure, the rules now being such that annuities shall be paid starting from the publication of the grant of the patent, i.e. for the third patent year at the earliest; the respective patent years are counted from the last day of that month which contains the date of filing, and, accordingly, the annuities - which in each case shall be paid for the coming year - are due on the last day of the "month of filing". Thus, Austria also changes over to the system of annuities due on the ultimo of the month; note, however, that for patents already granted, and patents granted on applications with respect to which publication has been decided before 1 July 2005, the annuities will have to be paid according to the old system, the respective due date being the 15^th of the respective month - in accordance with the fact that on the 15^th day of the month in each case publication is effected in the Patent Gazettes. In this respect, for a longer period of transition there will be two types of patents in Austria, with regard to the dates at which annuities will be due.

As regards European patents validated in Austria, there is now a uniform arrangement as from 1 July 2005 in respect of the payment of annuities: in the future, simply the annuity corresponding to the respective patent year (3^rd to 20^th annuity) shall be paid; the regulation hitherto effective with regard to European patents having been granted before 1 July 1996, according to which for the third patent year the 1^st Austrian annuity, for the 4^th patent year the 2^nd annuity etc. and for the 20^th year the 18^th annuity had to be paid, has been cancelled.