Pages 146-148

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

AT Austria

Amendment of the Patent Law and other laws

The main provisions of Federal Law 175,1 amending the Patent Law of 1970, the Law Introducing Patent Treaties and the Utility Models Act, entered into force on 1 February 1999.

Summarised below are some of the amendments which have an immediate practical significance. Details of the new Federal Law were published, with explanations, in Österreichisches Patentblatt (Austrian Patent Gazette) 1998, p. 220 ff.

Patent Law (PatG)

Section 3(2) now provides that a previous European patent application establishes a prior right for Austria only if the relevant designation fee has been paid. This amendment was necessitated by the new time limit for payment of the designation fee under the EPC (Article 79(2), Rules 23a and 51(8a) EPC). Euro-PCT and international applications establish prior rights only if the requirements of Article 158(2) EPC and/or Section 16(2) of the Law Introducing Patent Treaties are met.

Section 58a now specifies in detail the services and information to be provided by the Austrian Patent Office as a body having partial legal personality (Teilrechtsfähigkeit).

The new Section 93a establishes the possibility of claiming the priority of a national first filing for national patent applications (domestic priority). Section 93b provides that, where reciprocal arrangements exist, priority may be claimed from patent or utility model applications filed with a receiving Office which is not covered by any international agreement on the recognition of priority rights.

Law Introducing Patent Treaties (PatV-EG)

In Section 3(1) the requirement that published European patent applications designating Austria be mentioned in the Austrian Patent Gazette has been deleted. These mentions have become unnecessary with the amendment of the arrangements for paying designation fees to the EPO (Article 79(2) EPC), as a result of which Austria is initially considered to be designated in all published European patent applications. The European Patent Bulletin, containing all the necessary information on published European patent applications, is open for public inspection at the Austrian Patent Office.

Section 9(1) provides that a European patent application deemed to be withdrawn under Article 77(5) EPC may now be converted into an application for a utility model. The implementing rules in Section 9, concerning requests for conversion under the EPC, have been modified and reworded accordingly.

In Federal Law BGBl. No. 634/1994 the provisions of the Patent Law in respect of prior rights were brought into line with the corresponding provisions of the EPC (the "whole contents" approach). Section 10 of the Law Introducing Patent Treaties has now been amended to take account of the new legal situation regarding the grounds of revocation for European patents. The new grounds of revocation (prior rights under Section 3(2) Patent Law) do not apply to European patents filed before 1 January 1994.

Utility Models Act (GMG)

The new Section 3(2) extends the "whole contents" approach to prior rights in connection with utility models. For the latter, therefore, the content of patent or utility model applications with an earlier priority and published on or after the priority date is also novelty-destroying.

Section 15a introduces the possibility of filing an application for a utility model derived from a patent application. This can be done from any national, European or international patent application designating Austria. The application for a utility model derived from a patent application may still be filed, within the statutory periods, after the drafting of the decision to publish or refuse the patent application, after the final decision to grant, or after the application is deemed to be withdrawn.

Sections 16a and 16b establish the possibility of claiming priority from a national first filing (domestic priority) or, where reciprocal arrangements exist, from patent or utility model applications filed with a receiving Office which is not covered by any international agreement on the recognition of priority rights.