22 Oct
2020

Austria

Wildhack & Jellinek Patentanwälte

Q: How can patent owners best enforce their rights in your jurisdiction?

Filing a civil lawsuit is the most frequent route taken to enforce IP rights in Austria. In civil matters, actions and requests for regular and interim injunctions based on alleged infringements may be brought (exclusively) before the Vienna Commercial Court. Preliminary proceedings are a frequently used tool, as they are fast, effective and comparatively low cost.

Jurisdiction in criminal cases lies with the Vienna Provincial Court for Criminal Matters. However, criminal actions are quite rare in patent matters.

Further, the owner of a patent, utility model or supplementary protection certificate (SPC) may apply to the Austrian Patent Office for a declaratory decision against any party that allegedly infringes the patent or SPC.

Q: Are mediation and arbitration realistic alternatives to litigation?

In Austria, it is common practice to send a cease and desist letter to an infringer before filing a lawsuit and – although litigation is not very expensive – it is quite usual to try to settle an issue through negotiation. However, alternative dispute resolution by mediation or arbitration is not a realistic and frequent alternative to litigation.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

Austrian procedural law does not provide for a jury trial. Patent cases are decided by panels of specifically qualified judges. The Vienna Commercial Court (first instance) and the Vienna Upper Provincial Court (second instance) both comprise two professional judges and one technically qualified expert judge, usually a patent attorney. In the main proceedings, the court commonly appoints an expert whose opinion on infringement and validity of the patent is taken into account. At the Supreme Court, the senate comprises three professional judges and two technically qualified expert judges.

Q: What level of expertise can litigants expect from courts?

At the Vienna Commercial Court and the Vienna Upper Provincial Court, specialised IP courts with high competence in and experience with IP-related issues have been established. The technical expertise in patent cases is guaranteed by the presence of technically qualified expert judges (eg, patent attorneys) in the senates.

Q: Are validity and infringement dealt with together in proceedings?

No, Austria has a bifurcated system. The question of validity of a patent ultimately and exclusively lies in the competence of the Austrian Patent Office. However, in infringement proceedings the question of validity may be determined in advance by the court itself. The court may also request a written statement (eg, from the Austrian Patent Office) on the probable validity of the patent. If the court is of the opinion that the patent may be invalid, it will suspend the proceedings. The defendant must then file either a nullity action with the Austrian Patent Office within one month or – if still possible – an opposition with EPO. Otherwise, the proceedings will continue on the assumption that the patent is valid. After the decision on validity has become final, the court proceedings will continue based on this decision.

In preliminary proceedings, however, validity and infringement are dealt with together by the court, albeit on a prima facie basis only.

Q: Who may represent parties engaged in
a dispute?

In patent infringement matters before the courts, parties must be represented by an attorney at law who is regularly accompanied by a patent attorney. There is no statutory requirement for representation before the Austrian Patent Office, provided that the party is based in the European Economic Area or Switzerland. However, a party is usually represented before these authorities by a patent attorney rather than an attorney at law. Appeals against decisions of the patent office must be filed by a professional representative.

Q: To what extent is forum selection possible in your jurisdiction?

In patent matters the exclusive jurisdiction lies with the Vienna Commercial Court.

Q: To what extent is pre-trial discovery permitted?

Austria has no discovery system and the burden of proof lies with the plaintiff. A request for a preliminary injunction in infringement proceedings may be directed to securing not only the claim itself, but also measures for preserving evidence. In criminal as well as civil proceedings, the potential infringer may be ordered to procure documents and evidence to enable the court to determine the question of infringement. The infringer’s premises may also be searched for evidence, which may then be seized.

A preliminary injunction may be ordered ex parte without hearing the defendant if a delay might result in irreparable damage to the plaintiff or if there is a risk that evidence might be destroyed; however, ex parte preliminary injunctions are quite rare in Austria.

Q: To what extent is evidence written and oral
at proceedings?

In the main proceedings, all kinds and types of evidence are admissible, including the use of witnesses. Preliminary injunction proceedings, however, are usually only written proceedings and evidence is restricted to evidence that is readily available and ‘on hand’ (eg, written evidence in the form of documents or declarations). Oral evidence and witnesses are often not considered to be ‘on hand’ and are not admitted in preliminary injunction proceedings.

Q: What role, if any, can expert witnesses play?

On the one hand, Austrian IP courts have technically qualified expert judges, usually patent attorneys, as members of their senates. On the other hand, courts usually appoint additional experts to provide external expertise in questions of validity and patent infringement. Accordingly, the courts regularly have enough competence and expertise. Of course, private expert opinions submitted by parties are admissible and will be considered.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

The Supreme Court has established a doctrine of equivalents similar to that used in Germany. In the required three-step test, the following questions should be asked:

  • Same effect – does the amended feature have the same effect?
  • Obviousness – would the person skilled in the art have been able to identify the amended feature?
  • Parity – are the considerations of the skilled person geared towards the meaning of the patent claim in such a way that the skilled person would consider the potentially infringing product as a technical solution equal to the claimed solution?

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

There are no specific enforcement problems relating directly to the type of patent or the protected subject matter. However, Austrian law excludes specific subject matter, as such, from patentability (ie, discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts and computer programs).

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

There is no formal binding effect of previous decisions of higher courts, courts are bound only by statutory law. However, courts regularly cite prior related decisions and use the arguments of prior decisions. If one of the parties refers to a previous decision, the court regularly deals with it in its reasoning.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Decisions issued by courts in other jurisdictions are not binding on the Austrian courts. However, if one of the parties cites such a case, the court usually takes the reasoning of foreign decisions into consideration, especially decisions from the EPO and the German courts. Decisions from other jurisdictions are of minor relevance.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Each party has the opportunity to submit requests for the extension of terms or postponement of hearings. If such a request is filed by both parties, it is usually granted. If such a request is filed by the defendant with due grounds for consideration, it will also be granted. Otherwise, especially on a counter-request by the plaintiff, a request for delay will often be rejected. However, this is at the discretion of the presiding judge.

The most significant delay is achieved if the defendant succeeds in convincing the court that the patent may be invalid and the court interrupts civil proceedings to have the question of validity discussed and decided by the Austrian Patent Office. Effectively, this delays proceedings and a decision for at least three years, and often more.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

Preliminary injunctions are an important and frequently used tool in Austria, as preliminary injunction proceedings are fast, effective and relatively inexpensive. In order to convince the preliminary injunction senate to issue a preliminary injunction it is necessary to make it prima facie evident that the patent is infringed and that the patent is valid. Preliminary injunctions may be requested together with a demand for a judgment in the main infringement proceedings. In contrast to other jurisdictions, the plaintiff is not obliged to prove any urgency in order to obtain a preliminary injunction.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

A first-instance decision in the main proceedings – without interruption – can be expected to be issued in one to two years. In preliminary injunction proceedings, a first-instance decision will likely be issued within three to six months.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

The overall costs (including the fees of the attorney at law and the patent attorney) incurred to obtain a first-instance decision regarding a preliminary injunction, discussing validity and infringement in two rounds of written submissions, can be estimated to be in a range of around €30,000 to €50,000. Costs could be less if, for example, infringement is not an issue. To obtain a first-instance decision regarding a permanent injunction in the main proceedings, costs are around €30,000, while further costs depend on the number and duration of hearings and whether proceedings are interrupted for the Austrian Patent Office to decide on validity. All these figures reflect only a range of costs and may be higher in complicated matters.

The cost risk and reimbursement will depend on the litigation value, which has a statutory minimum value of €36,000. Disputes over litigation value are rare in Austria and courts usually accept parties’ suggestions.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The losing party must refund a defined portion of the costs of the proceedings and representation to the winning party. However, the amount to be refunded is calculated based on a tariff specified in statutory law, meaning that usually only a fraction of costs is covered and refunded to the winning party.

Q: What remedies are available to a successful plaintiff?

The remedies granted to a successful plaintiff include:

  • interim and permanent injunctions;
  • destruction of infringing goods;
  • information about distribution channels;
  • publication of the decision or judgment; and
  • monetary remedies, depending on the type of infringement.

In cases of mere unauthorised use of a patent, the plaintiff may demand appropriate monetary compensation. In cases of gross negligence or intent, the plaintiff is entitled to twice this amount of monetary compensation. In cases of negligence or wilful patent infringement, the plaintiff may demand damages, including the lost profits or the profits of the infringer directly relating to the infringement. Disadvantages suffered as a result of wilful patent infringement, but not leading to monetary loss, may also be claimed.

Q: How are damages awards calculated?

Appropriate monetary compensation is usually calculated based on equivalent licence fees. Cases of gross negligence or wilful intent result in twice the usual licence fee. In criminal matters, the infringer may be fined up to 360 times the daily rate of calculating fines or, in cases of professional infringement, sentenced to imprisonment for up to two years.

Q: Under what circumstances will courts grant permanent injunctions?

The main claim of a plaintiff in infringement proceedings is generally directed to discontinuation of the infringement (cease and desist). If the claim succeeds, the court must order a permanent injunction. However, if the infringed patent reaches its maximum duration and expires during the trial, the plaintiff’s request will be reduced to monetary remedies only (eg, compensation or damages).

Q: Does the losing party at first instance have an automatic right of appeal?

The losing party at first instance may appeal to the second-instance court (ie, the Vienna Upper Provincial Court). A first-instance decision of the Austrian Patent Office in nullification proceedings may also be appealed to the Vienna Upper Provincial Court.

Q: How long does it typically take for the appellate decision to be handed down?

The timeframe for an appeal is around 12 to 18 months.

Q: Is it possible to take cases beyond the
second instance?

The second-instance judgment must specify whether an ordinary (regular) revision to the Supreme Court is admissible. Even if it is not admissible, the losing party may generally file a request for extraordinary revision. In all cases the Supreme Court may decide on the admissibility of a revision. In general, a revision is admissible only if the second-instance decision raises a legal question of higher importance (eg, if decisions of the Supreme Court regarding this legal question are unavailable or the second-instance court decided against established case law).

Q: To what extent do the courts in your jurisdiction have a reputation for being
pro-patentee?

In light of the abovementioned criteria and the possibilities for both parties to introduce their arguments and have them discussed properly before the respective senates, and in light of the legally and technically qualified experienced senates, it is fair to say that Austrian courts are neither pro-patentee nor pro-defendant.

Q: Are there other fora outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

The Product Piracy Act strengthens the position of rights holders, in addition to the EU Customs Regulation. Goods seized by Customs on a granted application for action will be destroyed with the consent of the rights holder, provided that the importer (and alleged infringer) does not file an opposition within 10 days. Even if a rights holder has not applied for a customs action, its Austrian representative (eg, patent attorney) will be informed by Customs if goods are to be imported which clearly infringe an IP right.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

IP litigation in Austria is fast and effective, decided in experienced courts and inexpensive. Accordingly, Austria has proved to be a good jurisdiction to test a case in multinational litigation.

Wildhack & Jellinek Patentanwälte

Landstrasser Hauptstrasse 50

Vienna 1030

Austria

Tel +43 1 712 10 01

Fax +43 1 712 10 01 20

Web http://www.wildhack.at