Patents of Invention

– Patents Act 1970, as amended up to Federal Law published in the Federal Law Gazette I No. 51/2023.
– Law of Introduction of the European Patent Convention and of the Patent Cooperation Treaty 1978, as amended.
– Law of Supplementary Protection Certificates 1996, as amended up to Federal Law published in the Federal Law Gazette I No. 126/2013.
– Biotechnology Directive – Implementation Amendment 2005.

Membership in International Conventions

– Paris Convention, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 13, 1968.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 11, 1973.
– Strasbourg Agreement Concerning the International Patent Classification, since October 7, 1975.
– Patent Cooperation Treaty, since April 23, 1979.
– European Patent Convention, since May 1, 1979.
– Budapest Treaty (Deposit of Microorganisms), since April 26, 1984.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Agreement on a Unified Patent Court (UPCA), ratified on August 6, 2013.

Filing

Applicant: inventor or legal successor (individual, legal person). 

Applicants not living in the country: must appoint a professional representative. However, for persons having their residence or place of business in the EEA or Switzerland, it suffices to appoint an authorized person resident in Austria as address for service. 

Naming of inventor(s): not compulsory. 

Nature of the invention: the subject matter of the invention must be must be novel, inventive, capable of industrial use, and of technical character. 

Kinds of protection: (1) patents of invention; (2) patents of addition.

Categories: patents covering a product, a machine or device, a process or the use of a product. If the patent has been granted for a process, its effects shall extend to the products directly obtained by that process.

Novelty: not found in the prior art, i.e. not disclosed to the public by written or oral description, by use, or in any other way or (relating to patents or patent applications applied for on and after January 1, 1994) not comprised in the content of Austrian patent applications, European and PCT patent applications with Austria as designated State and Austrian utility model applications having older priority (whole content approach). An earlier disclosure is non-prejudicial only if it occurred no earlier than six months before the filing date and was due to or in consequence of an evident abuse in relation to the applicant or his predecessor.

Exceptions to protection: discoveries, scientific theories or mathematical methods; aesthetic creations; schemes, rules or methods for performing a mental act, playing a game or doing business, or a program for a computer; the presentations of information; inventions, the publication or exploitation of which would be contrary to the law or public morals; methods for treatment of the human or animal body by surgery or therapy, and for diagnostic methods practiced on the human or animal body (products, substances and compositions for use in any of these methods can be patented, however); cloning methods and methods for alteration of the genetic identity of the germ line relating to human beings; the use of human embryos; methods for alteration of the genetic identity of animals; species or varieties of plants and animals as well as substantially biological methods for breeding plants or animals, and those plants and animals which have been obtained by such methods only. Patents shall not be granted for plant or animal varieties as well as for essentially biological processes for the production of plants or animals. The concept of plant variety is defined by Article 5 of the Regulation (EC) No. 2100/94 on Community plant varieties, Official Journal No. L 227 of September 1, 1994, p. 1, in the version of Regulation (EC) No. 2506/95, Official Journal No. L 258 of October 28, 1995, p. 3. A process for the production of plants or animals is essentially biological, if it consists entirely of natural phenomena such as crossing or selection. Inventions, which concern plants or animals, shall be patentable, if the technical feasibility of the invention is not confined to a particular plant or animal variety. Sentence 1, part 2, according to which patents shall not be granted for essentially biological processes for the production of plants or animals, shall be without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process, wherein microbiological process means any process involving or performed upon or resulting in microbiological material.

Priorities: priority rights must be claimed at the latest within two months of the date of application. One or more partial priorities can be claimed within a period of twelve months as of the filing date of foreign applications according to Paris Convention and as from the filing date of earlier patent or utility model applications filed with the Austrian Patent Office.

Filing requirements for an application (to be sent to agent):
1. Power of attorney (no legalization required);
2. Specification in German with abstract (can be filed in English, translation to be submitted upon request);
3. Drawings (size 29.7 x 21 cm with a free margin of 2 cm);
4. If applicable, sequence listing;
5. If priority is claimed: must indicate country, date and file number of basic foreign application(s); priority document(s) is (are) to be filed on official request only;
6. Full name and address of inventor(s), if any designated. Inventors are required to sign an inventor declaration (no originals, scan is sufficient).

Electronic filing: available.

For a change of name: an extract from the Commercial Register (or equivalent). The document must show both the former and the new name (no legalization required).

For a change of address: no document is required.

Examination Procedure

Examination: the application is examined as to form and unity of invention, novelty and patentability; the Patent Office issues official letters, the time limit for replying of two months being extendible several times, at the discretion of the Examiner, until the Examiner informs about the final extended deadline.  

Accelerated examination: as such not provided for, but in practice accelerated handling could be asked for a certain case by a formal accelerating request.

Division: upon Examiner’s demand, or voluntarily, at any time during the whole application procedure; within two months after the decision of rejection of the application; within six months after the mention of the grant of the patent; within two months after coming into force of the decision on the opposition. 

Amendments: allowed, up to the decision of the grant of the patent, provided the nature of the invention is not modified and as long as no new matter is introduced. Claims can be limited at any time after grant by waiving part(s) of the patent.

Conversion into a utility model application: possible, until decision of publication of the grant of the patent or rejection of the patent application. 

Publication of the application: takes place eighteen months from the application date or priority date. 

Application kept secret: until publication; after this date, inspection of the complete file is possible.

Granting

The granted patent is entered on the Patent Register; the grant of a patent is published in the Patent Gazette; Letters Patent and the printed specification are issued after a certain period. The usual delay for granting of a patent after filing an application is between two and three years. 

Beginning of protection: from the publication of the grant in the Patent Gazette, however, starting from the publication date of the application, the applicant may demand provisionally adequate compensation. 

Opposition to a granted patent may be raised within four months of the date of publication of the grant of the patent in the Patent Gazette. The well-founded opposition must be filed with the Technical Department of the Patent Office on the last day of the deadline, and the opposition fee paid.

Reasons and procedure for opposition: the opposition must be supported by the following claims based on specific facts: (1) that the object of the application is not patentable (not inventive, excluded from patent protection or not novel); (2) that the invention is the subject matter of a patent or a utility model with an older priority or patent application or utility model application having older priority; (3) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art; (4) that a deposited bilogical matertial fails to have always been available at a depositary institution, unless such failure is rectified or excused; (5) that the matter disclosed in the published application extends beyond that disclosed in the specification as filed. Against the official decision on the opposition of the Technical Department of the Patent Office, recourse may be brought before the Vienna Upper Provincial Court within a non-extendible term of two months. Against these decisions, a revision recourse may be filed within two months with the Recourse Court. 

Duration: for patents, twenty years from the filing date of the application; for patents of addition, the unexpired term of the main or parent patent, even if the patent of addition becomes independent.

Duration of patents in the pharmaceutical and plant protection field: supplementary protection certificates (SPC) for patents valid in Austria may be applied for with the Austrian Patent Office according to SPC Act 1996 and the implemented European Community (EC) Regulations No. 1768/92 relating to pharmaceutical products as from July 1, 1994, and No. 1610/96 relating to plant protection products as from February 8, 1997. Basic patents, with extendible duration by SPC, are those for a pharmaceutical or plant protection product as such, for a process for production of such product or for use of such product. SPC must be applied for within six months of the date of grant of the marketing authorization for the pharmaceutical product in Austria; in case such an authorization is granted before the grant of the patent, SPC must be applied for within six months of the date of grant of the patent. 

Requirements for an SPC application: (a) number and title of the basic patent; (b) a copy of the first marketing authorization in Austria indicating the identity of the pharmaceutical product and particularly containing number and date of the said authorization and a summary of the features of the pharmaceutical or plant protection product; (c) if the authorization in Austria is not the first one within the European Union or Switzerland/Liechtenstein, number and date of the last-mentioned authorization indicating the identity of the pharmaceutical or plant protection product so authorized and the provision by law for that authorization proceedings, and a copy of the publication of the respective marketing authorization in the Official Gazette. The duration of the SPC is equal to the period between the filing date of the patent application and the date of the first marketing authorization within the EC minus five years, but the maximum SPC duration is five years; in case of paediatric pharmaceuticals further extendible for six months.

Annuities – latest term for payment: annuities only become due on Austrian patents once they have been granted and published in the local patent gazette, and are payable for the sixth and each further year on the last day of the month containing the anniversary of the date of filing the patent application. The annuities may be paid three months before they are due and, at the latest six months after they were due with a fine of 20%. For patents of addition only a single fee is payable for the full period of validity. The due date of annuities for SPCs is on the last day of the month containing the anniversary of the date of effectiveness of the SPC. 

Marking of patented goods: not compulsory, but usual. 

Amendment of issued patents: allowed only for correction of misprints. Claims can be limited at any time after grant by waiving part(s) of the patent.

 Assignment: applicant's right to the patent application/patent can be assigned to a third party (legal successor) completely or in parts. A transfer of ownership should be registered to allow the successor all rights as applicant/patentee. The representative may request such transfer declaring that such transfer took effect, without submitting documentary evidence. 

Licenses: exclusive or ordinary licenses may be granted by a licensing agreement and can be limited as to the territory, the duration and the subject of the invention. In relation to third parties licenses become effective only when entered in the Patent Register. 

Reinstatement of invalidated patents to their former state is possible if a patent has become void due to unforeseen or unavoidable circumstances, therefore missing a deadline. The request is to be submitted within two months of the date on which the impediment was removed, but in any case at the latest within twelve months of the date of expiry of the missed deadline.

Modification of Protection after Granting

Right of prior user: the patent has no effect against persons who, at the time of application, have already used the invention within Austria or have made the necessary arrangements for using it. The mere import has not been regarded to justify a right of prior use. Prior use disputes will be decided on request by the Patent Office.

Working: no proof required. 

Compulsory license: a non-exclusive compulsory license may be granted to a patentee of a later filed patent in the cases where (1) working of the later filed patent is not possible without making use of the earlier patent, provided that the later patent constitutes an important technical progress of considerable economic significance compared with the earlier one. In such case, the patentee of the earlier patent is also entitled to a non-exclusive license to the later patent (cross-license); (2) where the invention is not worked to an appropriate extent (but import may be considered as working too), unless the patentee proves that the working of the patent in Austria cannot reasonably be expected at all or on a larger scale than actually effected due to certain difficulties; (3) of public interest (not bound to any business). 

Revocation: may be applied for if the invention has been worked exclusively or mainly abroad and the concession of compulsory licenses has not been sufficient to ensure working of the invention. 

Nullification: the patent shall be declared null and void if: (1) the subject matter is not patentable (because it is not inventive, not novel, excluded from patent protection); (2) the invention is the subject matter of a patent or utility model with older priority; (3) the specification does not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art; (4) the subject matter of the patent extends beyond the content of the application as filed; or (5) a deposited biological material fails to have not always been available at a depositary institution, unless such failure is rectified or excused. There is no deadline for such an action. Actions for nullification are to be filed with the Nullity Department of the Patent Office; appeal from the first instance must be lodged at the Vienna Upper Provincial Court, decisions of which are contestable at the Supreme Court. 

Infringement: any person injured with respect to his patent rights, or apprehending such infringement, may make a claim for cessation, removal of the objects of infringement, modification of the equipment used for the infringement, publication of judgment, consideration, compensation for damages, restitution of profits, submission of accounts, and information regarding the origin and channel of distribution of the infringing goods or services. Normally, actions for infringement must be filed with the Commercial Court, Vienna, but in case of punishable infringements, the District Criminal Court, Vienna, is competent. Preliminary injunctions may be granted.

Special Points regarding the European Patent Convention

1. The published European patent application has effect in Austria against an infringer, only if in the German language, or upon filing a German translation that is published by the Austrian Patent Office, or which has been sent to an infringer. Before grant, the applicant is entitled to claim adequate damages.

2. If the European patent specification is not published in the German language, a translation of the full specification into that language has to be supplied to the Austrian Patent Office within a non-extendible term of three months from the publication of the mention of the grant of the European patent. If the required translation is not filed within the time limit the effects of the European patent shall be deemed not to have been produced from the outset. (Austria has not yet ratified the London Agreement.)

3. The reservation contained in Article 167, par. 2 (a) EPC (1973) ended on October 7, 1987; that means that chemically produced substances, foodstuffs and pharmaceuticals are excluded from patent protection, only if a European patent application was filed before or on October 7, 1987.

4. Persons not having their residence or place of business in Austria may exercise rights deriving from a European patent application before the Austrian Patent Office only through a professional representative resident in Austria. However, for persons having their residence or place of business in the EEA or Switzerland, it suffices to appoint an authorized person resident in Austria as address for service.

5. The due date of annuities for European patents in Austria is on the last day of the month during which the anniversary of the date of filing falls. Annuities are starting with the sixth anniversary of the filing date of the European patent.

6. The minimum time period for paying renewal fees due at validation is three months according to Article 141(2) EPC.

7. On request of the applicant of a European patent application which shall be deemed to be withdrawn (Rule 37(2) EPC 2000) the Austrian Patent Office commences the procedure on grant of a patent or registration of a utility model.

National Phase of a PCT Application filed abroad

Persons not having their residence or place of business in Austria may exercise rights deriving from a PCT application before the Austrian Patent Office only through a professional representative resident in Austria. However, for persons having their residence or place of business in the EEA or Switzerland, it suffices to appoint an authorized person resident in Austria as address for service. 

Time limit for entering national phase: under both Chapter I and Chapter II: 30 months.