IP matters may obtain protection by registration (e.g. patents, utility models, designs, trademarks) or granted protection by a court decision as a result of a proceedings (e.g. protection of innovations, designations, copyright).
Since January 1, 2014 all remedies against decisions of first instance of the Austrian Patent Office (Legal Department, Technical Department, Nullity Department) are to be brought before the Vienna Upper Provincial Court. Afterwards, depending on the case, a recourse or revision to the Supreme Court is possible. Furthermore, the Vienna Commercial Court has competence in the first instance not only for patent infringement matters but also for all civil-law trademark litigations.
Patents are granted on inventions which are novel, which - having regard to the state of art - are not obvious to the person skilled in the art, and which are susceptible of industrial application.
After an application is prepared and filed with the Austrian Patent Office it is examined by the Office. It may be converted into a utility model application in the course of such examination.
After completion of the examination a patent may be granted. Within a period of four months after the granting date an opposition may be lodged. Against a decision passed in opposition proceedings recourse may be brought before the Vienna Upper Provincial Court.
A patent application shall be published eighteen months after the application or priority date, possibly already together with a search report.
A granted patent enjoys a maximum period of protection of 20 years (starting with the filing date) and may be contested during that period on the grounds of nullity. An appeal to the Vienna Upper Provincial Court may be lodged against a decision of the Nullity Department of the Patent Office.
Moreover, it is possible to file a petition for a declaratory statement by the Austrian Patent Office whether a process or a subject matter is partly or entirely encompassed by a particular patent. Furthermore, proceedings for a declaration of dependence, lacking authorship, fraudulent abstraction, for the grant of compulsory licenses etc. are possible.
Within one year as from the filing date, applications based on an Austrian first application may be filed in almost all countries of the world, enjoying the priority of the Austrian first application.
European patents may be filed through the Austrian Patent Office in Vienna or directly at the European Patent Office in Munich. On completion of the central grant procedure the patent has to be validated in the individual designated countries, if necessary by submitting translations.
Within nine months as from the grant a European patent may be opposed centrally at the European Patent Office, later only in the individual designated countries. The maximum period of protection is 20 years, maintenance in the individual countries is effected separately.
European Patents granted in English or French require, in the course of validation in Austria, translation into German.
International patent applications may be filed directly at the World Intellectual Property Organisation in Geneva (WIPO) or through national Patent Offices (with or without claiming a priority).
These constitute a bundle of national or regional patent applications for which an international search report is prepared centrally at first and - upon request - an international preliminary examination is carried out.
Upon expiry of the international phase - maximum of 30 months - the national or regional phase can be further prosecuted in each designated country or designated region.
Supplementary protection for a maximum of 5 years going beyond the maximum period of protection of a patent may be obtained for patented pharmaceutical products or plant protection products. Pharmaceuticals designed for children may be granted a half-year-prolongation of the protection period.
An SPC can be applied for within six months from the notification of the first market admission or of the grant of the respective patent on which it relies. Recently it was decided that if more than one market admission were based on one and the same patent only that market admission is the first one which refers to the medical product for treating, curing or preventing the specific disease or suffering in question.
Three-dimensional structures of microelectronic semiconductor products may – as far as they have distinctive features, i.e. are not ordinary – be protected for a maximum period of 10 years by filing applications with the Patent Office and registration in the Semiconductor Protection Register.
Novel, commercially usable inventions may, alternatively to patents, be protected as utility models for a maximum period of 10 years. The merit of invention has to be, however, the same as for patents. Programme logics on which the programmes for data processing equipment are based may also be protected as utility models – but not by patents. The logic of a computer program is, however, only protectable if it refers to a technical content. A disclosure of the invention by the applicant or his predecessor within a period of six months prior to filing the application with the Austrian Patent Office does not affect novelty. Examination is only for formal requirements, not for novelty and inventive merit; however, a search concerning the prior art is carried out to which the scope of protection claimed may be adapted. If desired, a utility model application may be converted into a patent application prior to registration. After the granting and simultaneous entry into the register a utility model may only be contested by a nullification request (but not by an opposition).
The original breeder or his successor in title may obtain a registered property right for plant varieties which are distinguishable, homogenous, persistent and novel. The period of protection of vines and woody plants is 30 years, and 25 years for all other varieties.
The application has to be filed with the Plant Variety Office (Federal Institute for Plant Cultivation).
At present protection is limited to 13 varieties. The Federal Minister of Agriculture and Forestry is responsible for decisions on appeals against decisions of the Variety Office.
All other proceedings (declaration of nullity, etc.) pursuant to the plant variety law which largely conforms to patent law have to be brought before the Austrian Patent Office (Nullity Department) and may be appealed before the Vienna Upper Provincial Court.
After a filing and examination procedure at the Community Variety Office Community variety protection may be obtained for the entire territory of the European Union.
Varieties of all botanical genuses and species, among others also hybrids between genuses or species, may enjoy Community variety protection.
The procedure before the Community Variety Office is similar in material and formal respects to that concerning patents before the European Patent Office.
A design is the model for the (outer) appearance of a commercial product.
Novel and peculiar models may be protected for a maximum of 25 years by depositing and registering them at the Austrian Patent Office. Examination by the Austrian Patent Office is only for formal requirements. The effects of protection are similar to those of patents. Registered designs may be contested by a nullification request in conformance with the usual procedure.
Design protection covers the appearance of a product but neither the original per se nor a product as such manufactured according to the design.
A design is to be regarded as having individual character if none of the known designs shows all its impressing features or if a known design shows different impressive features.
Community designs are registered at the OHIM (Office for Harmonization in the Internal Market) in Alicante, Spain. The scope of protection covers the whole European Union for a maximum period of 25 years. Unregistered designs can also claim protection, however, only three years as from the date of first availability in the European Union.
All signs which can be represented graphically, e.g. words, letters, numbers, pictures and combinations thereof as well as the shape or make-up of an article may be trademarks provided that these are capable of distinguishing the goods or services of one enterprise from those of another enterprise. Even sound marks are registrable, but no olfactory and haptic marks.
The period of protection runs for 10 years and may be extended for 10 years.
After filing with the Austrian Patent Office, the application is examined for legal conformity, upon request, a report on prior registered marks which are deemed to be similar is prepared. However, the same or similar prior trademarks are no obstacle to registration.
Within three months from the publication of the registration an opposition may be filed which may only be based on a senior trademark right. Decisions of the Legal Department of the Austrian Patent Office on oppositions are contestable by recourse to the Vienna Upper Provincial Court. Irrespective of the opposition term, trademarks may be contested on the grounds of confusing similarity with prior trademarks, nonregistered designations, company names etc. or non-use for the past five years by filing a petition for cancellation, with the Nullity Department of the Austrian Patent Office.
An international trademark may be registered on the basis of a national (home) trademark (i.e. first registration in the country of the establishment of the owner) by the World Intellectual Property Organisation (WIPO) either directly or through the original registration office for a plurality of countries, having the same effects in each of these countries as a national trademark.
However, the designated countries may object to protection in their territories within R S Rainer Beetz Sonn & Partner Patentanwalte REDL Life Science Patent Attorneys Sascha Daniel Salomonowitz Schonherr Rechtsanwalte Sattler & Schanda, Rechtsanwalte SCHMIDT KORNFELD WUKOSCHITZ Schonherr Rechtsanwalte GmbH Schwarz Schonherr Rechtsanwalte Sonn & Partner Patentanwaelte Specht Rechtsanwalt GmbH T W Thomas Adocker Scwarz Schonherr WILTSCHEK Wolf Theiss Z Zeiner & Zeiner a certain period of time after international registration, resulting in national proceedings.
Applications for trademarks enjoying EU-wide protection may be filed with the European Union Intellectual Property Office (EUIPO). After an examination for conformity with the law these are first published for possible opposition and ultimately, when all requirements for registration are met, registered.
Appeals against decisions by the Divisions (Opposition, Nullity Divisions) of the EUIPO may be lodged with the Board of Appeal of that office.
The next instances are the General Court and finally the Court of Justice of the European Union. Upon request a filed or registered European Union trademark may be converted into a national trademark application in a EU member state.
Remarkable decisions on Trademarks A three-dimensional trademark for “chocolate goods in tabular arrangement” was denied protection. The Vienna Upper Provincial Court held that it lacks a priori distinctiveness because any additional accessory is missing that would be regarded, in comparison to common sweets, as attractive, peculiar or ingenious and thus would award her the capability of being distinguishable from existent, current usual morphologies in order not to be identified as an arbitrary chocolate piece but instead as a product of a specific enterprise just on basis of its shape.
The Vienna Upper Provincial Court held that the mere use of a trademark for description of an enterprise is not a genuine use. Without a specific relation to goods and services a trademark misses its object as indication of origin.
An application for the registration of domain names may be filed through the national Network Information Centre Austria, NIC.AT in Austria.
Such application may be filed by the applicant or his representative directly with NIC.
AT if all the technical and organisational requirements are fulfilled.
Otherwise it is advisable to file the petition through a provider because names are granted on the basis of priority (first come, first serve); all technical and organisational requirements have to be met for the grant of the priority.
The application is not examined for conformity with the law. However, a prerequisite for registration is uniqueness, i.e. each domain name is unique worldwide.
An annual fee has to be paid for the maintenance of the domain name. Disputes in domain matters, in particular on the basis of prior trademark or name rights in the event of unauthorized domain registration (domain grabbing, cybersquatting, typosquatting etc.), have to be taken to the courts of law.
The question whether different top-level domains (i.e. “.com” and “.at”) may prevent confusion between one and the same name of a community (i.e. “Schladming” – a famous skiing center) as second-level domain was solved by the Supreme Court of Austria in that likelihood of confusion was attested. In the same judgement it was held that an infringed name holder has a claim for discontinuance and for cancellation of the infringing domain, however no claim for assignment of that domain.
On basis of the Law Against Unfair Competition any unfair acts of another party may be brought before the respective civil court.
In case that non-registered devices, designs, etc. of one party are copied more or less as a whole the infringer may be sentenced on the grounds of slavish imitation.
A name, a firm name or any other special designation of an enterprise or of a printed matter (even if the latter is not protected by copyright) enjoys protection in case it is misused by a third party in the course of business. However, direct protection is only accepted in case of distinctiveness per se. Otherwise acquired distinctiveness has to be proven. As special designations are regarded e.g. names of establishments or premises, outlets etc as well as domain names, i.e. sub-level domains, as long as they do not correspond to a name or firm name.
The injured party may sue the infringing party at the respective civil court to refrain from infringement whereby the usual remedies (ceasing, destruction, monetary relief etc.) are available.
Unlike the Anglo-American jurisdiction the Austrian "copyright" is in fact a "creator's right". Protection may be granted to a work which is a peculiar intellectual creation in the field of literature (including computer programs), music, visual art (including architecture) and cinematography. In addition protection may be granted for performances, interpretations etc. (derivative or ancillary copyright). Copyright protection expires 70 years after the death of the creator or 50 years after the first performance, interpretation etc.
As there is no (pre)registration of a work available the felt-injured party has to sue the offender at the respective civil court where at first the preliminary question has to be solved of whether or not there exists a protectable work.
In case that a work will be attested the usual remedies are available (ceasing, destruction, adequate monetary compensation, compensation of non-pecuniary damages).
Recently it was ruled that the publication of pictures in social media is not equal to publication in mass media. From a person’s publication of pictures directed to a desired specific public no consent can be derived for a publication directed to the general public.
In another judgement it was held that the digital processing of a person’s hand writing does not constitute a work protected by copyright because the computer writing was neither regarded as a preparation or revised edition nor as an original work based on a pattern or copy without copyright protection.
All intellectual property rights may be the subject matter of license agreements.
After preparation and execution such an agreement may be registered in the respective Register, if any. It is not necessary to register the entire agreement, but a license declaration disclosing the essential data is sufficient. E.g. by registration of a patent license in the Patent Register the license becomes a right in rem (i.e. it adheres to the respective property right independent of its owner) and effective vis-à-vis third parties. However, e.g. the registration of a trademark license has only declaratory effect, i.e. just serves to inform the public.
Intellectual property rights may also be the subject of liens which may be registered upon request in the respective Register of the respective Office (Patent Office, Plant Variety Office).
Pursuant to an EU-wide regulation and the Austrian Product Piracy Act the import, export or transit of counterfeited goods and unauthorized reproductions or imitations may be stopped by the customs authorities of any country of the European Union, which gives the owner of an intellectual property right (except utility models) or copyright or a third party entitled to use that right or an entrepreneur claiming protection under the law against unfair competition, respectively, the chance to bring the case to court (petition for injunction, action etc.).
To this end a petition to the customs authorities containing all the required data and information of identification has to be filed. In the course of the seizure the customs authorities then inform a person and/or domestic expert appointed by the petitioner.
Provided by Peter Israiloff, Austrian Patent Attorney as well as European Patent, Trademark and Design Attorney at Barger, Piso & Partner.
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