Planned Patent Act Amendment 2000:A Milestone for strengthening the Patent System

With the Patents Act amendment still to decide this year Austria is going to follow the international requests, especially of Germany, Japan and the USA, and will support and promote innovative companies by strengthening patent protection and by structuring enforcement proceedings more efficiently.

Apart from completely turning up opposition proceedings (an opposition will from now on only be possible after grant – as at the EPO) and from the adoption of the substantial rules of the EU regulations regarding the legal protection of biotechnological inventions (EU-R 98/44/EG) decisive steps are taken by the planned Patents Act amendment referring to the enforcement of patents and procedural law.

The "highlights" of the planned Patent Act amendment are the following, shortly described new aspects , which shall also be introduced to the utility model act in analog manner.

Contributory Infringement of Patents

Until now, only the so called "assistance" for patent infringement (pursuant to the Civil Law Code) was known in Austria. Now, the instrument of "contributory infringement of patents" already successfully used in Germany shall be introduced to Austrian Patents Act. Accordingly it is forbidden to third parties to offer or to deliver means referring to an essential element of the invention for making use of a patented invention, if the third party knows that these means are appropriate and determined to be used for patent infringement, or if this is obvious due to the circumstances.

Appeals against Final Decisions of the Appeal Court

Until now no regular instance could be taken against final decisions of the appeal court (the appeal possible concerning trademark and design rights at the Administrative Court is explicitly excluded in the Patents Act). In future it shall be possible to raise appeal against such decisions of the appeal court at the Supreme Patent and Trademark Senate.

"Double Damages"

In order to increase the financial risk for a patent infringer, infringing willfully or by gross negligence, it is planned that the infringed party can claim the double amount of the adequate damages. Thus, in case of patent infringement there is not only danger of suit for injunction and destruction of the infringing activities, but also a tightened financial disadvantage compared to licensees.

Obligation to give Information

According to a further new provision it shall be possible to oblige the patent infringer to give information about the origin and the distribution channel of the infringing product at court, too. By this, information and proofs about the whole chain of infringement (including "persons behind") can be obtained by suing one member of the distribution channel of the infringing good.

In Future Nullity of a Patent can be judged by the Infringement Court on its own

Until now, the court has always to interrupt the infringement proceedings if the objection of nullity of the patent of an action can not be denied obviously. Thus, the infringement proceedings are interrupted in almost every case by a timely nullity proceedings at the Patent Office (two instances: Nullity Department and Supreme Patent and Trademark Senate). Afterwards the patent owner is often not interested anymore in a continuation of an infringement proceedings, since the real market situation has already created facts which are unable to be corrected anymore, e.g. by further developments for goods with extremely short product life circles. In the sent draft of the amendment it is provided, that the court (of which a patent attorney is always a member as an expert lay judge, anyway) will examine independently the question of nullity for the time being. It will also be possible to ask for an expert opinion by the Patent Office, whether a declaration of nullity seems to be probable in view of the cited documents. Only if the Patent Office takes the opinion in its expertise that nullity is probable, infringement proceedings shall be interrupted after claiming nullity proceedings.

Possibility of Imprisonment for commercial Patent Infringers

Also, criminal prosecution of patent infringers shall be strengthened by a further aspect. In future, a commercial patent infringer runs danger not only of a pecuniary penalty of 360 daily rates but even of imprisonment for up to two years. This will also be applicable for the owner or the head of a company, who does not prevent a patent infringement committed by an employee or an entrusted person in the company.

Creating an Act of Fees

As the fees to be paid to the Patent Office (which shall be named "Patent, Trademark and Design Office" in future) are spread over a large number of acts and regulations, confusion is created by this . Therefore all provisions of fees of the Patents Act (as well as of the Trademark Act, Design Act, Utility Models Act, Semiconductor Act, Act introducing Patent Treaties, and Protection Certificate Act) shall be combined in a separate Patent Office Act of Fees.

We will keep you informed about the definite Amendments in due cause. As we have heard, the first part of the Patents Act Amendment (especially the part concerning the EU biotech regulation) will pass parliament in summer.