Austria
DEVELOPMENTS IN THE IP LANDSCAPE
Peter Israiloff
As of January 2019, the Patent Office Fees Act was amended in
that several official fees were reduced. For example, a request
for a change of name encompassing several IP rights of the
same type now requires only a fee for one IP right to be paid.
The Trademark Act was also amended as of January 2019
in order to comply with the Directive (EU) 2015/2436
to approximate the laws of the Member States related to
trademarks. A trademark may now consist of any sign as
long as it is distinctive and may be presented in any way, ie,
not only graphically.
The position of trademark owners was strengthened,
especially with regard to opposition and cancellation
proceedings. The start of the five-year grace period for
use is no longer the registration date but now depends, if
applicable, on the termination of an opposition proceeding.
Patents and supplementary protection
certificates (SPCs)
Equivalence
As a summary of the case, in the course of infringement
proceedings the crucial question was whether the
substitution of one derivative of an active ingredient of a
pharmaceutical by another derivative falls under the scope
of protection by the claims.
On this occasion the Vienna Upper Provincial
Court (VUPC) cited three criteria, known already from
juristic literature, which have to be fulfilled cumulatively
in order to prove equivalence:
• The modified embodiment solves the problem on which
the invention is based by means which are modified but
have, seen objectively, the same effect (equivalent effect).
• A person skilled in the art can realise on basis of her/his
skills that the modified means used in the embodiment
for solving the problem on which the invention is based
have the same effect (obviousness).
• The considerations of a person skilled in the art are
guided by the meaning of the technical solution
protected by the patent claims in that the person
skilled in the art regards the different embodiment with
its modified means as an equivalent solution of the
patented embodiment (equivalence).
Modifications
According to the Austrian Patent Act and European Patent
Regulation, modifications of granted patent claims are
admissible only as long as they do not affect the substance
of the invention. An extension of the scope of protection
is inadmissible.
In the course of a nullification proceeding against the Austrian
part of a European Patent the VUPC stated that any admissible
amendments are restricted to a “minus” of protection.
A “plus” as well as an “aliud” (something else) would not
meet that attribute. Furthermore, a restriction of the scope
of protection would be inadmissible if the reduced scope (or
part of it) would lie outside the original scope of protection.
This case would also constitute an aliud (but not a minus).
Inventive step
In the course of two nullification proceedings against the
Austrian parts of European patents the VUPC cited the
European Patent Convention in that an invention shall be
considered as involving an inventive step if, having regard to
the state of art, it is not obvious to a person skilled in the art.
According to the “problem-solution approach” the closest
state of art is at first to be ascertained, whereupon the
technical task is to be determined and finally it is to be
evaluated whether the invention was obvious to a person
skilled in the art in view of the relevant state of art and the
technical problem.
According to the “could-would approach” a new
development does not automatically lack an inventive step
if a person skilled in the art could have reached it in view
of the state of art. An inventive step would be missing only
if a person skilled in the art would have actually suggested
the development on basis of a sufficient cause expecting an
improvement or advantage.
Active ingredients
The object of an SPC is a product but not the invention
protected by the basic patent. This is according to the rulings
of the Court of Justice of the European Union, which have
said an SPC cannot be granted for active ingredients that are
not disclosed in the claims of the basic patent.
It is, however, not required that the active ingredient is
disclosed in the claims of the basic patent by a structural
formula. A functional formula given in the claims of the
basic patent may also suffice for the definition of a product.
In that case it is, however, a prerequisite that the claim
22 IP Pages 2020 www.worldipreview.com