May 2012

Ex Officio-Examination of Austrian Nullity Department after Withdrawal of Request for Nullification of a Patent in Appeal Proceedings

In Austria, patents may be revoked by a request for revocation to the Nullity Department at the Austrian Patent Office. Decisions in such matter by the Nullity Department may be appealed at the Supreme Patent and Trademark Senate, a special court established at the Supreme Court and being exclusively responsible for registered IP rights, such as patents, trade marks and designs. The Austrian system is therefore similar to the German system, which also provides separate proceedings for the question of validity of patents ("bifurcation").

Although proceedings for revocation of a patent can only be initiated by a request for revocation, the Nullity Department is entitled to continue proceedings initiated by such a request ex officio in case such request is withdrawn after initiation of proceedings. Whether proceedings are indeed conducted ex officio is under the discretion of the Nullity Department. Leading motivation for this discretion is whether there is public interest in a final decision for the nullity request ("only a final decision guarantees legal security").

If, however, a patent has been revoked by the Nullity Department and the case is already under appeal and the request for revocation is withdrawn, it was the usual practice that the Supreme Patent and Trademark Senate declared the decision in dispute as "without effect" (in line with the code of civil procedure) and that the proceedings are terminated thereafter.

In a recent case (N 18/2008), the Nullity Department has now used the "ex officio" stipulation in the Austrian Patent Act for re-entering nullity proceedings at the first instance after the "without effect" declaration had been issued by the Supreme Patent and Trademark Senate for the first revocation in first instance. The Nullity Department held that their (first) decision in first instance may be "without effect", but that the proceedings are not terminated by such a declaration. The Nullity Department therefore made use of the possibility for revoking the patent ex officio even after appeal proceedings had declared their (first) decision in first instance as "without effect". The Nullity Department regarded this as a continuation of proceedings, not as an action for re-trial according to the code of civil procedure.

Although this second decision for revocation of the patent by the Nullity Department was - again - appealable to the Supreme Patent and Trademark Senate, the patentee did not further appeal. Accordingly, the Supreme Patent and Trademark Senate did not have the possibility to reflect on this new practice yet.

It has therefore to be borne in mind (especially in negotiations between parties in such proceedings) that such ex officio proceedings could now also be performed, even if the case has already entered the second instance in Austria.

Dr Daniel Alge