Like patents, utility models are a means to protect inventions, i.e. they may be protected by utility models in addition to or instead of patents. The requirements for utility models are similar to those for patents :

	novelty (for which the inventor or his legal successor enjoy a 6 month period of grace),
	inventive step (which is supposed to be somewhat "smaller" than the "inventive activity" required for patents,
	industrial applicability.

One major difference between patents and utility models is the way granting procedure works. While the process of obtaining a patent will often involve extended examination and opposition proceedings before an intellectual property right is granted (which right may then be used to sue infringers in court), utility models only require a formal examination of conformity with the law (including examination of unity) and a search report in order to be registered for the respective invention. Once registered, the utility model is a property right allowing its owner to enforce essentially the same legal claims against infringers as a granted patent: He may sue for an injunction, disassembly of infringing objects, rendering of accounts, reasonable compensation, damages, publication of the judgement etc.

Unlike many other countries providing utility model protection, the range of inventions amenable to such protection in Austria is not restricted to particular fields, but is rather almost identical to that of patents. Exceptions from utility model protection are analogous to those according to Art. 52 (4) and 55 EPC (discoveries, scientific theories, mathematical methods, aesthetic designs, inventions disturbing public order or offending good manners, plant and animal species, surgical, therapeutical or diagnostic methods on humans).

As opposed to a patent, however, a utility model may also protect the program logic on which programs for data processing devices are based, even if these programs are word processing or accounting programs. In addition, methods for the treatment of animals are not generally excluded from protection. Only micro-organisms as such can not be protected by a utility model.

Not only is it possible to convert patent applications into utility model applications and vice versa, but, quite importantly, it is also possible to branch off utility models from patent applications (with the patent application remaining valid independently). This is of particular interest if an invention is already suffering infringement in the market, but the granting procedure of the patent is expected to take a long time, or long opposition proceedings are to be gone through. In such a case it may take years until a legally enforceable property right is obtained which would allow the owner to lodge an infringement suit. In this situation, branching off a utility model is a way to obtain effective protection quickly. The party accused of infringement may of course plead nullity, but at least the applicant of the utility model does not have to wait for the outcome of long examination and opposition proceedings. Utility models may not only be branched off from pending patent applications (until up to two months after they are granted, rejected or considered withdrawn), but also e. g. from patents with pending opposition or appeal proceedings, e. g. at the European Patent Office.

Application requirements are the same as for patent applications, i.e. we need only the specification of the application (description, claims, drawings) in German (It is also permitted to file the specification in English or French, in which case a translation into German has to be submitted within a period of three months.) and a power of attorney. The names of the inventors may be mentioned if desired, but this is not compulsory under Austrian law.

A utility model application may be converted into a patent application within a period of two months from service of the search report except in case of accelerated publication of the utility model. It may be useful to convert a utility model application into a patent application if a longer period of protection is desired.

On the other hand, a patent application may be converted into a utility model application as long as no decision to publish or to reject has been taken. Such conversion may be advisable if the preliminary examination has acknowledged novelty, but not inventive step. However, only national Austrian applications may be converted.

Branching off a utility model application may be seen as one of the most interesting instrument for property right and enforcement strategies. An utility model may be branched off from a pending patent application any time during the entire application procedure. The pending patent application need not necessarily be a national Austrian application; it may also be a 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 at the European Patent Office). Branching off is possible within a period of

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

The application is checked for conformity with the law, i.e. whether it fulfils the legal (formal) requirements. Novelty or inventive step are not considered. In addition, a search report is issued by the Patent Office. After service of this search report, the applicant has a chance to amend the claims, e.g. if it appears advisable to distinguish the claims more clearly from a document cited in the search report. Then the utility model is registered and published automatically upon payment of the publication fee. It is even possible to have the utility model registered before the search report has been completed. This is advisable in very urgent cases in order to have an instrument for quick action against infringement.

In Austria, it is of course possible to claim priorities of patent or utility model applications according to the Paris Convention or GATT/TRIPs. It is only necessary to produce a statement of priority if the maintenance of the utility model (during nullity proceedings) depends on the rightful claim of priority, e. g. if intermediate literature has been submitted. If the application on which the priority claim is based has been filed in Austria under a name other than the name of the applicant, a declaration of legal succession will be required. Any submitted priority documents for a patent application will be included in our files for reference if necessary.

A notice of non-conformity with the law may be answered within an inextendable period of two months. The period for payment of the publication fee and voluntary claim amendments may be extended once for a period of two months (upon statement of good reasons). Regarding inextendable deadlines, however, we will of course remind out clients in time.

If we are to file, branch off or convert a utility model application, we need a basic text. Unless specified otherwise, we will read through it and adapt it to the Austrian practice, if necessary. The official publication fee is a flat 72,-- EURO.

If requested, we will send copies of documents mentioned in the search report together with the search report. When we receive the search report, we will usually analyse whether or not it is advisable to amend the claims with regard to the cited documents.

The rules for entries in the utility model register, such as transfers, license grants, etc., are particularly strict. No corrections using rubber etc. are allowed. Even the slightest mistake will lead to the application for entry being rejected. Therefore, it is important to draft the documents very carefully in co-operation with an Austrian patent attorney, particularly if authorisations to sign, legalisations or apostilles etc. are required.

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Any registered Austrian utility model may be sued for nullity. Nullity proceedings are carried out centrally in two instances at the Austrian Patent Office. Therefore, courts of law are not entitled to decide on their own in nullity matters. Nullity actions are highly important as a means of defence against infringement actions, particularly because there is no instrument of opposition against utility models. Especially in pending infringement cases, nullity proceedings may be accelerated by shortened periods and waiver of the possibility to extend the deadlines.

On the other hand, however, the owner of a utility model has a variety of opportunities to take action against infringers, e.g. he may not only get injunctive relief and compensation and demand rendering of accounts, but he may also sue for temporary injunctions to take immediate measures against infringements.

Finally, it is also possible to have the Austrian Patent Office establish by declaratory judgement whether or not a certain object or method infringes on an existing utility model. The required procedure is a biparty trial with the owner of the utility model as the one party and the person giving rise to the proceedings as the other. An application for a declaratory judgement, however, must be filed before suing for patent infringement, because an application for a declaratory judgement will be rejected if an infringement action involving the same parties is still pending or has been settled and has entered into force. If a declaratory judgement is issued, however, it is binding on the courts.