AUSTRIA: An Introduction to Intellectual Property

Austria: Intellectual Property 

Austria, even though a small country with a population of 8.9 million, has a long tradition in intellectual property protection. The Austrian Patent Office has been deeply involved in the creation of the IR, PCT and EP systems as well in the establishment of the EUIPO. One example of its international efforts is the Vienna Classification (VCL), an international classification system established in 1973 by the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, and administered by the World Intellectual Property Organization. The Austrian Patent Office granted the first patent in 1899, for “arc light regulators”. Austrian IP practitioners carry on this tradition.

After a downturn in the years 2021 and 2022, patent application numbers grew again in 2023. In contrast, trade mark applications boomed in the years 2020 and 2021 during the COVID crisis in Austria. The problems in the German automobile industry will certainly have implications for Austrian suppliers, but this can also be seen as a chance to diversify the product range. Most patent applications in the year 2022 before the Austrian Patent Office were filed by Austrian companies in the technological fields of electrical machines, transport and construction. In 2022, more patents were field with the European Patent Office by Austrian companies than national Austrian applications; their number increased by 3.4% in 2022 compared with 2021.

Not only prosecution but also litigation is relevant to the IP market in Austria. Patent infringement proceedings in Austria, for example, are exclusively handled by the Commercial Court of Vienna. The specialised chambers in such patent infringement proceedings are composed of two judges of the Commercial Court without a technical background and a lay judge with technical expertise. The lay judges typically are Austrian patent attorneys. As there are not too many lay judges available to the court, and as they also represent various clients in their own practice, it is quite important to consider possible conflict situations. In the second instance, the Higher Regional Court of Vienna is responsible; there also, two professional judges and one lay judge will decide on the case. In cases involving important questions of law, an appeal to the Supreme Court is also possible.

In Austria, because of the bifurcated system, one has to differentiate between infringement and nullity proceedings as regards court competence. Nullity proceedings are handled by the Nullity Department of the Austrian Patent Office in the first instance and by the Higher Regional Court of Vienna in the second instance. Nullity proceedings may be initiated by an alleged infringer before or during the infringement proceeding. The alleged infringer may request a stay of the proceedings. An expedited procedure in nullity proceedings may be requested by a party. Infringement proceedings before the Commercial Court of Vienna are quite often stayed until a decision in a parallel nullity proceeding has been made.

The duration of the main proceeding in a patent infringement case depends heavily on the complexity and whether a stay is possible for the nullity proceeding. As most of the cases are suspended until a final decision in the nullity proceeding, which takes between two and three years, it takes three to four years to receive a first-instance decision. If the proceedings are not suspended, it can take one-and-a-half to two years until a decision in the first instance. Because in Austria preliminary injunctions may be requested in patent infringement cases to stop the infringement fast or to preserve evidence, it is important to understand that there is no urgency requirement – at least before a main proceeding has been initiated. In most of the preliminary injunction cases, the Commercial Court holds inter partes proceedings, which take between three and nine months. A typical timeline for an ex parte preliminary injunction to preserve evidence according to the Enforcement Directive unfortunately is up to four months. The form of a first-instance patent litigation proceeding can be described as follows:

– Plaintiff files a request for a preliminary injunction to preserve evidence (very seldom)

– Plaintiff files online the complaint with the court and pays the court fees

– Court serves the complaint on the defendant

– Defendant files the statement of defence and often initiates a nullity action with the Austrian Patent Office and requests a stay of the proceeding

– Both parties file preparatory briefs

– First hearing before the court with the determination of the further programme; expert will be named by the court; eventually a decision to stay the proceeding until a decision in the nullity action will be made

– Opinion of the court expert will be served to the parties

– Both parties file preparatory briefs

– At least one further hearing

– Parties serve their cost notes according to the Attorney Tariff Act

– Court hands down the judgment

According to a recent decision of the Supreme Court, private expert opinions can be subject to reimbursement of costs by the losing party if the case is complex and the expert opinion is necessary for appropriate legal defence.

Life science will continue to play the key role in Austrian intellectual property field. The reason for this is that quite a few Austrian companies, startups and universities are active in this field.

Since a lot of suppliers in the automotive industry as well as original equipment manufacturers are having to change their product portfolio dramatically and to concentrate on e-mobility, many parts are not necessary anymore. Many companies are working on the most relevant parts and technologies needed for electric cars. There has also been a dramatic rise in patent applications in this field in Austria. So, there will be IP litigation in this field over the next few years and beyond that.

Especially in regard to evidence collecting for patent infringement proceedings, the preliminary injunction for preservation of evidence is of importance, but the tool set based on the preliminary injunction does not fit all the needs and special requirements for such a proceeding. Therefore, whether to install a specific procedure for the preservation of evidence should be considered.

The unitary patent and the new Unified Patent Court (UPC) came into force in June 2023, and already in that summer, a first hearing took place in the local chamber in Vienna. The decision was preceded by an interesting basic clarification on the opt-out of patents. After the plaintiff filed a preliminary injunction action, an appointed patent attorney falsely declared an opt-out for the patent in suit. The judges have now clarified that this is no longer possible once a party has filed a suit. Patents for which a lawsuit has been filed can no longer be opted out of the UPC.

Two decisions on the trade mark side may be worth mentioning:

– The younger word mark, “PUMA Multipower”, which claims protection for machine tools and land vehicles, interferes with the reputation protection of the earlier “PUMA mark”, which is known for sports goods, among other things: The owner of the younger trade mark has completely adopted the well-known earlier trade mark into her trade mark, which means that it is reasonable to assume unfair motives due to the obvious possibility of exploitation of attention in the case of well-known trade marks. The argument that the choice of the younger trade mark is based on Inca mythology, according to which the puma in the Inca cross (Chakana) stands for the principles “I work” and “I do not steal”, did not convince the Upper Regional Court of Vienna (OLG Vienna 22 March 2023, 33 R 80/22k).

– The abstract colour mark RAL 2008 Orange is not distinctive for retail services in the field of DIY and home improvement articles in cl 35 despite a degree of distinctiveness of 50.6% and a degree of association of 48.2% (OLG Vienna 9 November 2022, 33 R 81/22g). It will be interesting to see how green patents and trade marks for renewable energy and sustainable products will change the IP field in Austria.

Finally, it should be highlighted that the Austrian Patent Office has started initiatives to boost IP applications by women and created a “buddy for her” consulting service by female patent examiners.