"We protect your intellectual property"

Patents

Patents grant “monopoly rights” to the use of technical inventions.

Central requirements for patent protection:

Only those inventions which at least lie in a field of technology in the wider sense and do not come under the legally provided exclusions from patentability can be protected.

The invention must be new at the time of filing, i.e. it must not be published before the filing date even by the applicant himself. Strict confidentiality is required before filing the application at the patent office! In addition, the invention must not be deduced in an obvious manner from the prior-published prior art, must be industrially applicable and must be described in the patent application so that the person skilled in the art can carry it out.

Patent applicant / patent proprietor

The applicant or patent proprietor has all the rights to the patent. If he is not the inventor himself, he must be able to derive the right to the patent from the inventor. A special group of cases here is the “job-related invention”. If there is a written agreement that inventions are due to the employer - such an agreement can also be included in a collective contract - the employee must offer a job-related invention to the employer. If the employer claims the invention, the employee is due some remuneration.

Patent first application / subsequent application

It is not necessary to file a patent application from the very outset in all countries in which patent protection is desired. The so-called “right of priority” holds open for one year the possibility of extending the protection to further countries without it being necessary to maintain secrecy in the meantime. Thus, a “priority-substantiating” application can be filed in one country, for example, Austria. Within the period for claiming the right of priority, property rights applications can be filed in other countries claiming the priority of the first application. The claiming of priority has the effect that the filing date of these subsequent applications is, as it were, back-dated to the date of the first application. Within the period for claiming the right of priority, usually at least one first search report is obtained from the patent office so that on this basis it can be decided whether further applications seem promising.

In addition to national applications, there is also the possibility of a regional patent application, especially an European patent application, and an international patent application (PCT application). However there is no “international patent”. In the case of an international application, the regional and national phases must be entered in those countries in which the application is to be further prosecuted within a partially country-dependent term of usually 30 months after the priority date. In addition to an international search report, an international patent application therefore primarily brings a “gain in time”.

The progression of a patent

1. Possible searches
2. Prepare and file patent application
3. Patent examination by the patent office
4. Publication of the patent application 18 months after the priority date
5.Grant of patent by the patent office
6. Possible opposition by third party (time-limited)
7. Possible action for annulment by third party (non-time-limited)
8. Annual fees
9. End of longest possible term after 20 years

Scope of protection

The scope of protection is determined by the patent claims and primarily by the independent patent claims. Independent patent claims are those which do not relate to a preceding claim. A dependent claim, on the other hand, can only be infringed if the independent claim to which it relates directly or indirectly is infringed. The description and the drawings of the patent are to be used to interpret the patent claims. Along with “literal” patent infringements, “equivalent” patent infringements are also possible under certain conditions. In the case of “equivalent” patent infringements it is a question among other things as to whether a feature of the patent claim not literally satisfied was replaced by a technically equivalent means.

Effect and enforcement of a patent:

The patent proprietor can prohibit others from using the protected subject matter. “Use” includes in particular the manufacture, distribution (putting into circulation), supply or use, in each case insofar as this is carried out on a commercial basis. Furthermore the patent act grants the patent proprietor further claims such as compensatory damages and disposal. Before the patent is granted, the patent proprietor can only derive limited rights from the published patent application, which in most countries are restricted to a claim for appropriate remuneration. The claim for appropriate remuneration can only be asserted retrospectively after the patent has been granted and is subject to further conditions in most countries.

The rights to the patent are asserted by the patent proprietor in disputed cases by means of an action in the courts. Interlocutory measures against the infringer can be requested in the courts on the basis of the patent but this is usually associated with an increased financial risk for the patent proprietor. Before bringing an action, a warning is usually given with the aim of achieving a rapid out-of-court settlement of the disputed issue. The scope for defence when making an accusation of patent infringement substantially consists in contesting the legal validity of the patent, disputing the infringement or seeking circumventory solutions. Perhaps the patent proprietor is prepared to grant a licence.

 
 

Patentanwälte
Hofmann & Fechner
Hörnlingerstraße 3
Postfach 5
6830 Rankweil
ÖSTERREICH
T: +43 5522 73137
F: +43 5522 73137-10
office@vpat.at

 

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