Austrian Patent Office (APO)

• Section 1 General
• Section 2  Private and/or non-commercial use
• Section 3  Experimental use and/or scientific research
• Section 4  Preparation of medicines
• Section 5  Prior use
• Section 6  Use of articles on foreign vessels, aircrafts and land vehicles
• Section 7  Acts for obtaining regulatory approval from authorities
• Section 8  Exhaustion of patent rights
• Section 9  Compulsory licensing and/or government use
• Section 10  Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
• Section 11  Other exceptions and limitations

Please note, that the following answers and information is based on the applicable legal provisions, i.e. the Austrian Patent Act.

Section 1: General

1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.

Patents are granted for inventions in all technical fields provided that they are new, not obvious from the state of the art to a person skilled in the art and are susceptible of industrial application (Sec. 1 para 1 Austrian Patent Act).

Inventions which comply with these prerequisites (para 1) shall be patentable, even if they concern a product consisting of or containing biological material or a method by means of which biological material is produced, processed or used, wherein biological material is any material containing genetic information and being capable of reproducing itself or being reproduced in a biological system. These patentable inventions also include

(1) biological material which is isolated from its natural environment or produced by means a technical method may be the subject of an invention even if it previously occurred in nature;
2) an element isolated from the human body or otherwise produced by means of a technical method, including the sequence or partial sequence of a gene, may constitute a patentable invention even if the structure of that element is identical to that of a nature element (para 2).

Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.

The following subject matters or activities shall be excluded from patentability, only to the extend to which protection is sought for such subject matters as such (Sec. 1 para 3 and 4):

- discoveries as well as scientific theories and mathematical methods;
- the human body at the various stages of its formation and development;
- the simple discovery of one element of the human body, including the sequence or partial sequence of a gene;
- aesthetic creations;
- plans, rules and methods for mental acts, for games or for business activities as well as programs for data processing plants;
- the reproduction of information.

The above text is considered to be fully in line with the TRIPs-Agreement.

2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?

The patent entitles the patentee to exclude others from producing the subject matter of the invention, putting it on the market, offering it for sale or using it or importing or possessing it for the above purposes on a commercial basis (Sec. 22 para 1).

3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):

Private and/or non-commercial use;
Experimental use and/or scientific research;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Acts for obtaining regulatory approval from authorities;
Exhaustion of patent rights;
Compulsory licensing and/or government use;
Exceptions and limitations related to farmers' and/or breeders' use of patented inventions.

Section 2: Private and/or non-commercial use

4. If the exception is contained in statutory law, please provide the relevant provision(s):

See question 2.

5. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

<6.(a) What are the public policy objectives for providing the exception?

Balance of interest between private use and commercial use.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

7. If the applicable law defines the concepts "non-commercial", "commercial" and/or "private", please provide those definitions by citing legal provision(s) and/or decision(s):

Commercial use: an economical activity of certain duration, following a unitary concept and suited for repetition, which - without necessarily being acquisitive - does not only serve the satisfaction of personal needs.

8.-10.

[Note from the Secretariat: response was not provided.]

Section 3: Experimental use and/or scientific research

11. If the exception is contained in statutory law, please provide the relevant provision(s):

See question 2.

12. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

13.(a) What are the public policy objectives for providing the exception?

Freedom of scientific research.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:

No. The applicable law assesses the possibly violating action only. If it is considered "non-commercially" then this action does not fall under patent protection.

15.-17.

[Note from the Secretariat: response was not provided.]

18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:

A non-commercial purpose.

19.-22.

[Note from the Secretariat:  response was not provided.]

Section 4: Preparation of medicines

23.-30.

[Note from the Secretariat: the applicable law of Austria does not provide exceptions related to the preparation of medicines.]

Section 5: Prior use

31. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec. 23 para 1: The patent shall not enter into effect against a person who, already at the time of filing of the application, used the intention in Austria or took measures necessary for such use in good faith (prior use).

32. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

33.(a) What are the public policy objectives for providing the exception? Please explain:

Patent protection should not prevent the prior user to make use of his achievement.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

34. How does the applicable law define the scope of “use”? Does the applicable law provide for any quantitative or qualitative limitations on the application of the “use” by prior user? Please explain your answer by citing legal provision(s) and/or decision(s):

The prior use has to be carried out like a “trade-secret”, otherwise patent protection would afterwards not have been granted.

35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:

No.

36. According to the applicable law, can a prior user license or assign his prior user’s right to a third party?

No licensing is not allowed.

37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?

If yes, please explain what those conditions are:

[Note from the Secretariat: response was not provided.]

38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?

Yes.

If yes, please explain the conditions under which such use can continue to apply:

Sec. 136 para 1: If a protective right has been refused, lapsed, expired, or otherwise became ineffective and is reinstated by the grant of reinstatement, it shall not enter into effect against any person who, after the lapse of the protective right and before the day of the official announcement of the grant of reinstatement or not later than on the day of entry of the request in the Register, in all other cases not later than on the day of receipt of the request at the competent authority, started to use the subject matter in Austria or took the measures required for such use in Austria (interim user).

Such person shall be entitled to exploit the subject matter for the requirements of his own business in his own or in other persons’ workshops. This title shall be inherited or sold only in connection with the business. Besides the provisions relating to prior use shall apply.

39.-41.

[Note from the Secretariat: response was not provided.]

Section 6: Use of articles on foreign vessels, aircrafts and land vehicles

42. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec. 26: The effect of a patent shall not extend to vehicles and to arrangements at vehicles which have entered Austria only temporarily for their use for transportation purposes.

43.-44.

[Note from the Secretariat: response was not provided.]

45. The exception applies in relation to:

Vessels;
Aircrafts;
Land Vehicles.

46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):

The effect of a patent shall not extend to vehicles and to arrangements at vehicles which have entered Austria only temporarily for their use for transportation purposes.

47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):

The effect of a patent shall not extend to vehicles and to arrangements at vehicles which have entered Austria only temporarily for their use for transportation purposes.

48.-50.

[Note from the Secretariat: response was not provided.]

Section 7: Acts for obtaining regulatory approval from authorities

51. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec. 22 para 1 second sentence: The effect of the patent does not extend to studies and trials as well as to the consequential practical requirements, as far as they are necessary for obtaining a permission, authorization or registration for putting on the market pharmaceutical products.

52. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

53.(a) What are the public policy objectives for providing the exception? Please explain:

Privilege for the manufacturers of pharmaceutical products with a view to generic medicines. So called “Bolar”-provision.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

54. Who is entitled to use the exception? Please explain:

Manufacturers of pharmaceutical products, especially of generic medicines.

55. The exception covers the regulatory approval of:

Pharmaceutical products

56. Please indicate which acts are allowed in relation to the patented invention under the exception?

Studies and trials as well as consequential practical requirements, as far as they are necessary for obtaining a permission, authorization or registration for putting on the market pharmaceutical products.

57. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):

A direct relation is required between the studies, trials and consequential practical requirements on the one hand and the permission, authorization or registration on the other hand.

58.-59.

[Note from the Secretariat: response was not provided.]

Section 8: Exhaustion of patent rights

60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:

National.

If the exception is contained in statutory law, please provide the relevant provision(s):

If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

61.(a) What are the public policy objectives for adopting the exhaustion regime specified above? Please explain:

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

62. Does the applicable law permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country?

No.

Please explain your answer by citing legal provision(s) and/or decision(s):

[Note from the Secretariat: response was not provided.]

63.-64.

[Note from the Secretariat: response was not provided.]

Section 9: Compulsory licensing and/or government use

Compulsory licenses

65. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec. 36 para 1: If a patented invention cannot be exploited without infringing an invention patented with a better priority (earlier patent), the owner of the later patent shall have claim to a non-exclusive license in the earlier patent, if the invention protected by the later patent constitute an important technical advance of substantial economic significance relative to the invention protected by the earlier patent. Where such license is granted, also the owner of the earlier patent shall have claim to an non-exclusive license in the later patent.

Para 4: If a patented invention is not exercised to an adequate extend in Austria, in which context importation also constitutes exercise, and the patentee has not undertaken everything necessary for such exercise, anybody has a claim for his business to a non-exclusive license for the patent unless the patentee proves that the exercise of the invention in Austria can not reasonably be expected at all or on a larger scale than actually effected, due to the difficulties opposing such exercise.

Para 5: If the grant of a license for a patented invention is in the public interest, anybody shall have a claim for his business to a non-exclusive license for the invention. The claim of the federal administrative authority on this matter, however, is not bound to any business.

66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):

Refusal to grant licenses on reasonable terms;
Public health (as far as it is in the public interest);
National security;
National emergency and/or extreme urgency;
Dependent patents.

68.(a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:

The provision intends to protect the public from any abuse of the exclusive right to which the patent owner is entitled.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

69.-74.

[Note from the Secretariat: response was not provided.]

75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:

Sec. 36 para 1: If a patented invention cannot be exploited without infringing an invention patented with a better priority (earlier patent), the owner of the later patent shall have claim to a non-exclusive license in the earlier patent, if the invention protected by the later patent constitute an important technical advance of substantial economic significance relative to the invention protected by the earlier patent. Where such license is granted, also the owner of the earlier patent shall have claim to an non-exclusive license in the later patent.

76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:

Sec. 37 para 1 first and second sentence: If the person entitled to grant a compulsory license refuses grant of the same, although the applicant for the license has taken efforts to obtain his consent within a reasonable term and at reasonable conditions common in business, the Austrian Patent Office shall, on request of the applicant of the license, decide in proceedings prescribed for the contestation of patents. In case a license is granted, an adequate compensation is to be determined, wherein the economic value of the license is to be taken into consideration.

77. If the applicable law provides for the grant of compulsory licenses on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:

Sec 36 para 5: If the grant of a license for a patented invention is in the public interest, anybody shall have a claim for his business to a non-exclusive license for the invention. The claim of the federal administrative authority on this matter, however, is not bound to any business.

There is no definition of “public interest”.

78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:

Very seldom.

79.-80.

[Note from the Secretariat: response was not provided.]

Government use

81. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec 36 para 5: If the grant of a license for a patented invention is in the public interest, anybody shall have a claim for his business to a non-exclusive license for the invention. The claim of the federal administrative authority on this matter, however, is not bound to any business.

82. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:

[Note from the Secretariat: response was not provided.]

83. What grounds for the grant of government use does the applicable law provide in respect to patents (please indicate the applicable grounds):

Refusal to grant licenses on reasonable terms (as far as it is in the public interest);
Public health (as far as it is in the public interest);
National security (as far as it is in the public interest);
National emergency and/or extreme urgency (as far as it is in the public interest).

84.(a) What are the public policy objectives for providing government use in your country?

Securing sufficient rights to the government in case of extreme urgency or public emergency.

(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:

[Note from the Secretariat: response was not provided.]

85.-88.

[Note from the Secretariat: response was not provided.]

Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions

Farmers' use of patented inventions

89. If the exception is contained in statutory law, please provide the relevant provision(s):

Sec 22b para 1: The protection conferred by a patent on a biological material possessing specific characteristics as a result of the invention shall include any biological material directly derived from that biological material through generative or vegetative multiplication in an identical or divergent form and possessing those same characteristics.

Sec. 22c para 1: the protection referred to in Sec. 22b shall not extend to biological material obtained from the generative or vegetative multiplication of biological material, put on the marketing the territory within the European Economic Area by the patentee or with his consent, if the generative or vegetative multiplication necessarily results from the application for which the biological material was marketed, provided that the material obtained is not subsequently used for other generative or vegetative multiplication.

Para 2: Notwithstanding Sec. 22b, the sale or any other form of commercialization of plant propagating material to a farmer by the patentee or with his consent for agricultural use implies authorization for the farmer to use the product of his harvest for generative or vegetative multiplication by him on his own farm, wherein the extend and conditions of this exemption corresponds to those under Article 14 of Regulation (EC) No 2100/94.