Property Rights - Patents and Utility Models
Duration of patent or utility model protection
Rights from the patent or utility model, infringement link up
International patent protection
A patent or a utility model is an industrial property right which protects technical inventions for a certain term (max. 20 years for a patent, max. 10 years for a utility model). The requirements for obtaining such a property right are:
- Novelty – the invention must not have been published anywhere in writing, verbally, by usage or by any other way before the filing date (priority date). Your own publications, and publications in a foreign language, also destroy the novelty of your invention. For utility models however there is a novelty protection period of 6 months for your own publications.
- Inventive step – the invention must not be deduced from the known prior art in an obvious manner for the person skilled in the art. For a utility model this requirement is somewhat less stringent.
- Industrial applicability – the invention must be industrially applicable, i.e. capable of being implemented in practice.
However, not everything can be protected with a patent, firstly because discoveries, scientific theories, mathematical methods, the human body, the mere discovery of a component of the human body, aesthetic creative forms, plans and methods for intellectual activities, for games or for business activities, computer programs as well as the reproduction of information, cannot be regarded as inventions and secondly, because inventions which conflict with public order or good morals, as well as surgical, therapeutic or diagnostic methods on humans and animals and plant varieties and animal species, are explicitly excluded from patent protection. These restrictions are reduced for utility models, e.g. computer programs can also be protected with a utility model.
Property rights are granted on request. The request for a patent in Austria must merely contain the name and registered headquarters (domicile) of the applicant, a description of the invention, patent claims, a summary, drawings if appropriate and information on the representative. The description, the claims and the summary can also be filed in English or French, in which case a German translation of these documents must be submitted subsequently. Different requirements may be imposed for applications in other countries.
Applicants with their registered headquarters or domicile outside the EC must be represented by a licensed representative.
The application is published 18 months after the application. On request, the publication can be made earlier. From the date of publication the applicant enjoys preliminary protection by his application.
The patent application is examined by an examiner of the Austrian Patent Office (ÖPA), who can compile an official search report and issue office actions in which objections to the grant of patent can be raised. Office actions must be answered within a set term otherwise the application is deemed to be withdrawn. In the course of the examination proceedings, the application can be amended within the original disclosure. If the examiner has no objections to the grant of patent, the grant of patent will be officially published.
One of the most important differences between the patent and the utility model is in the examination proceedings, since utility models are only examined for formal aspects but not as to whether requirements for protection are satisfied – a utility model is therefore registered as materially unexamined, so that protection can be acquired very rapidly.
Within four months of the granted being officially published, anyone can file opposition against the grant of patent before the Austrian Patent Office. The proceedings take place in writing but oral proceedings can also be held. Each party bears the costs of the opposition proceedings themselves.
Any granted patent can be attacked by requesting a declaration of annulment at any time over its term. An action for annulment is frequently used as a defence in an infringement dispute.
A patent can be protected for a maximum duration of 20 years provided that the annually payable maintenance fee is paid. A utility model is protected for a maximum term of 10 years, also provided that an annually payable maintenance fee is paid. For utility models the second to the fifth fee and the sixth to the tenth fee can be paid at once, giving a reduction in the overall costs.
The property right (patent, utility model) authorises the proprietor to exclude others from manufacturing the protected object industrially, putting it into circulation, supplying, using or introducing or possessing for this purpose. This right must be enforced if necessary with an infringement action against the infringer at the Commercial Court in Vienna.
The infringee has a claim for injunction, removal, publication of judgement, financial claims (appropriate remuneration or compensation), submission of accounts as well as information about the origin and marketing route of the infringing objects. An interlocutory injunction can be taken out against the infringer.
Patent protection can in principle be acquired nationally in any country. In addition to national property rights, there are also regional and international patent agreements such as the European Patent Convention (EPC) or the Patent Cooperation Treaty (PCT).
At the present time a patent can be granted with the EPC for 37 European countries (Staaten EPÜ). The patent is granted centrally at the European Patent Office (EPC) but must be claimed in each country desired (submitting a translation, appointing a representative) and then exists as a national patent. In consequence, for each individual national patent, annual fees must be paid nationally for its maintenance.
With the PCT, a patent application can be examined for the protection requirements for many countries (PCT Staaten). However, no patents are granted in the PCT. Following the examination, in each country or region (e.g. EEA) a request must be made for the PCT application to be pursued. The advantage of the PCT is that the initial international proceedings can be conducted centrally for all countries and in a single language by a single representative, and the decision as to the countries in which patent protection is sought can be postponed for a maximum of 30 months, for most countries, up to a maximum of 31 months from the priority date.
Many possibilities for acquiring property rights in specific countries therefore exist. We should be pleased to advise you as to which of these possibilities is strategically or financially most favourable for particular cases.