International Patent Litigation in Austria

The owner of the patent may bring proceedings against the infringer. If the patent is owned by more than one party, any one of those parties may initiate infringement proceedings without the consent of the other co-owners. Exclusive licensees have the right to bring proceedings for patent infringement in respect of any infringements of the patent committed after the date of the license. A non-exclusive licensee has the right to initiate proceedings if the licensor has given the licensee express authorisation to do so in the license.

In invalidity proceedings at the ÖPA (“Österreichisches Patentamt” – Austrian Patent Office), it is possible to join an additional party as defendant. Any number of parties may join.

In patent infringement proceedings at the Handelsgericht Wien (Commercial Court Vienna), any number of parties
may be added. Only the claimant may require that a defendant be joined to the proceedings. The court cannot order this ex officio.

Suppliers and other third parties may be defendants if they are direct or indirect infringers of the patent. Besides, third parties may join proceedings if the outcome of a dispute is relevant for the third party. Parties to proceedings may inform an affected third party with a dispute notice (“Streitverkündung”). The affected third party may then join the ongoing proceedings either supporting the claimant or the defendant (“Nebenintervention”).

All claims will be time-barred after three years from the date the rights holder obtains knowledge of both the infringement and the identity of the infringer.

No, there is no such requirement. As long as the claims are not time-barred, the patent proprietor may assert claims against the infringer. However, if the patent proprietor claims that another of its patents is infringed by the same action of the defendant, the Court may join the new proceeding with the ones already launched i.e., the claim for infringement of the first patent.

Civil actions in patent infringement proceedings are brought exclusively before the Handelsgericht Wien. The Austrian Patent Office – Nichtigkeitsabteilung (ÖPA- invalidity division) is the competent body for invalidity and declaratory proceedings.

Infringement and validity issues are not decided in the same proceedings.

Yes, a local division of the UPC is to be established in Vienna.

Yes. The owner of a patent may apply for the declaration that a third party’s product is covered by its patent and is infringing. Furthermore, the manufacturer or supplier of a product, as well as the commercial user of a procedure, may apply for a declaration that the product or procedure is not covered by a specific patent and is not infringing.

On average, if no proceedings for preliminary injunctions have been initiated, the first oral hearing in infringement proceedings is held three months after the action is initiated.

Usually, the proceedings on the merits are joined with proceedings for a preliminary injunction. In such circumstances, the main proceedings remain pending until the preliminary proceedings are finalised, either  by judgment or settlement. Preliminary orders may be appealed by both parties to the Oberlandesgericht  Wien (Higher Regional Court Vienna). Under certain circumstances, preliminary proceedings may be brought before the Austrian Supreme Court (Oberster Gerichtshof, OGH). Consequently, it may take several months  (or even a year) for a claim to reach trial in the main proceedings.

Main infringement proceedings may be ongoing for a year until a first instance decision is issued. The duration of the main proceedings will depend on the number of trial days required, to take evidence, get an expert opinion and subsequently discuss the expert opinion. Validly proceedings may also be ongoing for a year until a first instance decision is issued. In infringement cases where parties raise doubts regarding validity of the patent, the Courts are entitled to pause the infringement proceedings until invalidity proceedings are finally concluded. If the infringement proceedings are paused to await the result of separate validity proceedings, the proceedings will last on average longer than a year.

The IP departments of the Handelsgericht Wien and the relevant Appellate Court, the Higher Regional Court Vienna (Oberlandesgericht Wien) have technical experts. However, the technical experts in the courts sometimes lack the necessary expertise as they may be experts in another technical field than that to which the case actually refers.

If there is a related opposition at the EPO, the court must stay infringement proceedings if:

• the defendant contests the validity of the patent (whether expressly or by implication);
• the court considers that there is a likelihood that the patent is invalid; and
• the claim of invalidity by the defendant is considered relevant to the infringement proceedings.

Yes. Actions for nullification of a patent are filed at the Austrian Patent Office. Patent infringement actions are filed at the Handelsgericht Wien. These are separate proceedings.

However, in many cases, a nullity action against a patent is filed in response to a patent infringement action.

FRAND license

Yes, before initiating an infringement action, holders of standard-essential patent are obliged to contact the presumptive infringer and must inform it about the respective infringement and offer a FRAND license. Otherwise, the patent holder may violate Art 102 TFEU by abusing its dominant market position. Action for determination of a FRAND licence does not have to follow an infringement action.

Compulsory license

Compulsory license proceedings are handled by the Austrian Patent Office. The licensee may initiate compulsory license proceedings if it does not reach  a consensus with the patent holder.

Before initiating infringement actions, holders of standard essential patents are obliged to contact the presumptive infringer in order to offer a FRAND license. If the patent holder does not fulfil this obligation, the presumptive infringer may raise the FRAND defence in the infringement proceedings. So far there is no case law as to whether the FRAND defence is available if the patent holder fully complies with the obligation. However, scholarly opinions hold the position that if the patent holder makes an offer and the potential patent infringer does not react to the offer according to accepted business practices and in good faith, the defence will not be available to it. It is not obliged to accept the offer but if it refuses to accept, it has to propose a reasonable counter offer. In this regard, Austria fully acknowledges the ECJ Huawei / ZTE ruling (16.07.2015, C-170 /13).

So far, there is no relevant Supreme Court case-law in Austria on how to determine license rates according to the FRAND criteria.

Generally speaking, witness evidence by experts nominated by the parties is allowed. However, in some proceedings, such as those before the ÖPA, this form of evidence is not admissible, as some of the members of the chamber are themselves technical experts.

Experts are usually nominated by the court. If this occurs, the experts act as court staff. They prepare reports to be submitted in oral or in written form. If experts are nominated by the parties, they have the same status as regular witnesses. In other words their expertise is not binding on the court; it merely represents the opinion  of the respective party.

During interim injunction proceedings, an expert opinion submitted by either of the parties is a valid piece of evidence, because the court will not appoint an expert (as it may do in the main proceedings).

The rules on evidence and the disclosure of documents are governed by general Austrian civil procedure law and are not specific to patent law. According to the Austrian civil procedure act the claimant has to disclose any evidence necessary to support its claim.

In patent infringement procedures submitted evidence will necessarily be documents on the active patent and evidence of the infringing activities of the defendant. Courts usually do not play an active role in deciding the extend of the disclosure of evidence. Courts may inform the respective party to submit more evidence on the matter. If the party fails to do so, the Court may take this into consideration in a negative manner when assessing the evidence.

There is a specific form of preliminary injunction which enables the claimant to seize evidence relating to a patent infringement. Seizure is only available if named evidence is in danger of being destroyed by the suspected infringer. The court appoints a technical expert who hands over the confiscated documents to the court.

Preliminary injunctions may be issued by the court without consulting the other party if there is a danger of irreparable damage or the destruction of evidence. Even an anonymous letter could be considered a sufficient certification of such danger.

Appeals from the Handelsgericht Wien, the Landes ge richt für Strafsachen and the invalidity division of the ÖPA lie in the Oberlandesgericht Wien (Higher Regional Court Vienna). A final appeal can then be made to the OGH (“Oberster Gerichtshof” – Austrian Supreme Court).

An appeal may be brought if the decision of the lower court was legally wrong or if there was a procedural irregularity. The appeal courts will not rehear the case. Generally factual issues are not considered in the appeal and further evidence is not permitted on appeal.

An appeal to the OGH is only permitted if there is:

• a major point of law or policy that needs to be decided; and
• if the litigation value is higher than five thousand euros (5,000 EUR).

In infringement proceedings it takes, on average, approximately 12 months for the first appeal, and another six months for a second appeal to the Supreme Court. Proceedings at the invalidity division may take longer, so that an average of two years for both instances is common.

In main proceedings, the judgment is suspended while an appeal is pending. However, in preliminary injunction proceedings an appeal does not suspend an issued preliminary injunction.

The options for alternative dispute resolution are amicable settlement, mediation and arbitration. In Austrian patent litigation matters, mediation and arbitration are not often used.

The court cannot order the parties to consider these options, but it often encourages the parties to find an amicable settlement. To refuse a settlement without giving serious reasons could have a negative impact on the court’s approach to a party.

The remedies available in patent infringement cases are:

• appropriate remuneration;
• damages, including loss of profits;
• a recovery of the profits derived from the infringement;
• double appropriate remuneration;
• rendering of accounts;
• a declaration that the patent is valid;
• information about the origin and marketing route  of the infringing objects;
• an order for surrender or destruction of the infringing product; — publication of the judgement; and / or — an injunction.

Remedies are available upon request of the claimant. Thus, courts do not issue automatic injunctions in case of patent infringements.

The claimant may choose between:

• appropriate remuneration;
• compensation for damages, including loss
  of profits;
• a recovery of the profits derived from the
  infringement;
• double appropriate remuneration; and
• compensation for ideal damages.

It may be possible to claim more than one remedy.

Appropriate remuneration can be claimed without having to prove negligence on the part of the infringer. The amount is based on the principles relevant to calculating equivalent contractual licence fees / royalties.

To claim compensation for damages or recovery of the profits derived from the infringement, the claimant must prove that there has been some negligence on the part of the infringer.

To claim double appropriate remuneration, the claimant must prove gross negligence or intent. However, for double appropriate remuneration the claimant does not have to prove its loss or the infringer’s profits.

When filing for damages, the claimant has to specify the damages suffered, otherwise its claim will not formally be accepted. This amount is the maximum amount the court can grant the claimant.

The claimant can only file for rendering of accounts if the claimant cannot substantiate the amount of damages without insight into the infringer’s financial circumstances.

The court will decide in a first step whether a compensation of damages is due at all and in a second step the level of damages payable.

But formally speaking there is no separate proceedings for the determination of the level of damages.

Intentional infringement is a criminal offence. However, it is an offence with private prosecution and is therefore only prosecuted upon the request of the injured party. To claim additional remedies (double remuneration), the claimant must prove gross negligence or intent.

Yes, patent proprietors may obtain an order for recall of infringing products. However, such a recall may only be ordered if the infringing products are still at the infringer’s disposal. This would not be the case if the infringer has already sold the products and is not authorised to dispose of the goods anymore.

Yes, preliminary injunctions are available.

A preliminary injunction will be granted if there is a danger of repetition of the infringing act. However, urgency is not a requirement to obtain a preliminary injunction.

If the preliminary injunction is meant to safeguard a monetary claim, the court must consider that without the injunction there is a threat to the fulfilment of such claim.

Preliminary injunctions can be issued by the court without consulting the other party if there is a danger of irreparable damage or of the destruction of evidence. However, this is quite unusual in Austria. In order to avoid duplicating procedures, the court prefers to hear the defendant before ordering preliminary injunctive relief.

At Handelsgericht Wien, proceedings for preliminary injunctions (except for those where a party is requesting the seizure of evidence) are usually held inter partes, with both parties participating in the proceedings. In such circumstances, preliminary injunctions usually take a few weeks. Expert reports will not usually be required. Evidence is normally presented by private expert opinions and / or the participation of patent attorneys.

It is possible to appeal against an injunction. The appeal does not automatically suspend the injunction. However, a suspension may be granted by the Court of first instance only upon request of the appealing party. The Court of first instance may grant the stay of execution if it does not result in a disproportionate disadvantage for the other party. The Court of first instance may grant stay of execution irrespective of the outcome of the appeal proceedings.

The court may, at its discretion, impose a security obligation on the party requesting a preliminary injunction.

Yes

A cross-border injunction may be available under EU law. An Austrian infringer can be sued in Austria for any infringement of a European Patent, regardless of the country where the infringement took place. For invalidity claims, the exclusive jurisdiction lies within the courts of the State where the patent has been granted.

Under Austrian law, the impact of a patent infringement on the Austrian market is sufficient for national jurisdiction. In such cases, a cross-border injunction can be obtained at Handelsgericht Wien.

A “torpedo” in another jurisdiction may be effective to delay a cross-border injunction. The most common example of a “torpedo” is a negative declaratory claim.

No, ASI are not permissible in Austria since they violate principles set out in European civil procedural laws. ASIs concerning actions being brought in countries outside the EU are subject to Austrian national laws. So far, there is no case law in this context. However, we deem it very unlikely that ASIs concerning actions being brought in countries outside the EU are permissible according to Austrian national laws due to constitutionally guaranteed rights to have access to Courts.