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Patent Law 1970

Patent Law, 1970 TABLE OF CONTENTS* Sections I. General Provisions Patent Protection 1 Inventions Not Protected by Patents 2 Novelty 3 Right to a Patent 4, 5 Employees Inventions 6 to 19 Right of the Author of an Invention to be Named as Inventor 20 Representatives 21 Effect of a Patent 22 to 26 Relationship of Co-Patentees 27 Duration of the Patent 28 Expropriation 29 Patentees Obligation to Comply with the Law 30 to 32 Transfer 33 Liens 34 Voluntary Licences 35 Compulsory Licences 36 Transfer of Licences 37 Abuse of Patent Rights 38 to 42 Entry in the Patent Register 43 Charges 44 Entries Relating to Disputes 45 Expiry 46 Revocation 47 Declaration of Nullity 48 Declaration of Lack of Title 49 Declaration of Dependence 50 Right of Retaliation 51 Time Limits 52 to 56 II. Patent Authorities and Institutions Scope of the Patent Offices Activity 57 Location and Composition of the Patent Office 58, 59 Sections and Sub-Offices 60, 61 Decisions in the Sections 62 to 66 Official Dress 67 Business Routine 68, 69 Appeals against Decisions of Sections 70 to 73 Supreme Patent and Trademark Chamber 74, 75 Reasons for Exclusion 76 Representatives of the Parties 77 Prohibition of Unauthorized Legal Representation or Opinions 78 Patent Gazette 79 Patent Register 80 Access to Documents 81 Administrative and Disciplinary Penalties (Ordnungs- and Mutwillensstrafen) 82 to 84 Service of Documents 85, 86 III. Procedure A. Grant of Patents Filing of an Application 87 Scope of the Application 88 Content of the Application 89 Attachments to the Application 90 Description of the Invention 91 Formal Requirements for the Application 92 Priority 93 to 98 Preliminary Examination 99 Rejection of Applications 100 Publication and Laying Open for Public Inspection 101 Opposition 102 Procedure for Opposition 103 Assessment of the Evidence and Decision 104 Costs 105 Application for a Patent by Opponent 106 Grant of Patent Without Opposition Proceedings 107 Appeals 108 Letters Patent Publication 109 Patents of the Federal Authorities 110 Refusal 111 B. Challenge of a Patent Making an Application 112 Immediate Rejection 113 Form and Contents of the Application 114 Procedure for Applications Challenging a Patent 115 Preliminary Proceedings 116 Termination of Proceedings Without a Hearing 117 Public Notice of the Hearing 118 The Hearing 119 Evidence and the Taking of Evidence 120 Deliberation and Vote 121 Costs 122 Contents of the Decision 123 Announcement of the Decision 124 Record 125 Assistance of the Courts 126 Reopening of Proceedings 127, 128 Restoration of Rights 129 to 136 Execution 137 Appeals 138, 139 Proceedings before the Supreme Patent and Trademark Chamber 140 to 145 Restriction of Applications 146 IV. Infringement of Patents and Obligation to Provide Information Infringement 147, 148 Intentional Infringement 149 Importance of Patent Description in Infringement Cases 150 Confiscation and Destructions of Infringing Articles 151, 152 Infringing Articles Exempt from Confiscation 153 Damages 154 Publication of Conviction 155 Precautionary Measures 156 Provisional Patent Protection 157 Preliminary Questions 158 Jurisdiction for Civil Actions 159 Civil Actions 160, 161 Infringement of a Patented Process 162 Application for a Declaration 163 Liability for Unjustified Precautionary Measures 164 Obligation to Provide Information regarding Patent Protection 165 V. Fees Application Fee and Annual Fees 166 Fee for Amendments of the Description 167 Procedural Fees 168 Method of Payment of Fees 169 Stamp Duty 170 Exemption from Payment of Fees 171, 172 VI. Implementation 173 I. General Provisions Patent Protection 1. (1) Inventions that are new and industrially applicable shall be protected under this Law. (2) For such inventions patents shall be granted on application. Inventions Not Protected by Patents 2. Patents shall not be granted: (i) for inventions whose purpose or use conflicts with law or morality or which relate to matters governed by a monopoly of the Confederation (Bund): or where the offering for sale or marketing of goods manufactured through the invention or through the process in the case of inventions relating to a process is restricted by legal provisions; (ii) for inventions of: (a) foodstuffs or luxury goods (Genussmittel) for human consumption, (b) medicaments. (c) substances produced by chemical processes. in so far as the inventions referred to under (a) to (c) do not relate to a particular technical process for the manufacture of such goods. Novelty 3. (1) An invention shall not be new if, before the filing of the application under this Law: (i) it has been described in printed publications so as to enable its use by persons skilled in the art: (ii) it has been used, exhibited or demonstrated in Austria and has become sufficiently public as to enable its use by skilled persons; (iii) it has been the subject, in the territory to which this Law applies, of a privilege or valid utility model which has subsequently become part of the public domain. (2) The Federal Government shall be empowered to grant foreign States the privilege, to be notified in the Patent Gazette (Patentblatt) (Section 79), under which descriptions of patented inventions officially published by them are assimilated to printed publications within the meaning of this Law, not from their date of publication but from the end of a period, not exceeding six months, following that date. Right to a Patent 4. (1) Only the author of an invention or his successor in title shall have a right to the grant of a patent. Until otherwise proved, the first person to apply for a patent shall be regarded as the author of the invention. No subsequent application shall give a right to a patent if the invention is already the subject of a patent or of an earlier application which leads to the grant of a patent. If these circumstances apply only in part, the later applicant shall only have a right to the grant of a patent made subject to corresponding restrictions. (2) Where an improvement or other extension of an invention which is already protected by a patent or for which a patent has been applied for and is eventually granted is the subject of an application by the original patentee or by his successor in title, the patentee or his successor in title may apply either for an independent patent for such improvement or extension or for a patent of addition dependent on the original patent. (3) Where the industrial application of an invention for which a patent has been applied for entails the full or partial use of an invention already patented, the patent applied for shall, at the request of the earlier patentee (Section 102(5)), be issued with the statement that the patent is dependent on the earlier patent, which must be clearly specified (declaration of dependence). This statement shall also be included in the publication regarding the grant of the patent and in the Letters Patent. 5. (1) The first applicant shall not however be entitled to the grant of a patent, where he is not the author of the invention concerned or the authors successor in title, or where the essence of his application has been usurped from the descriptions, drawings, models, implements or installations of a third person or from a process used by him and where, in the first case, the author or his successor in title or, in the second case, the injured party opposes the grant of the patent. (2) In the case of several persons who have usurped an invention one after the other, an earlier possessor shall, in the event of dispute, have priority over a later possessor. Employees Inventions 6. (1) Employees shall also be entitled to the grant of a patent (Section 4) for inventions they have made during their employment relationship, unless otherwise provided by agreement (Section 7(1)) or in the circumstances of Section 7(2). (2) Employees shall mean salary and wage earners of every kind. 7. (1) Agreements between employers and employees under which any future inventions of the employee are to belong to the employer or which grant the employer a right to use such inventions shall be valid only if the invention is a service invention (subsection (3)). To be valid, the agreement must be in writing; this requirement shall be satisfied if the agreement is included in a collective agreement (Federal Law of February 26, 1947). (2) Where a person is employed under public law, the employer may, even in the absence of agreement with the employee, claim the service inventions of the latter or the right to use such inventions, such right being also binding on third parties. In such cases, the following subsection, Sections 8 to 17 and Section 19 shall apply mutatis mutandis. (3) A service invention shall be our made by an employee which, by reason of its subject matter, falls within the activities of the enterprise in which the employee works, provided that: (a) the activity which has led to the invention forms part of the employees employment obligations; or (b) the invention was suggested to the employee by his work in the enterprise; or (c) the invention was greatly facilitated by the use of the experience or resources of the enterprise. 8. (1) An employee shall be entitled to special and fair remuneration where his invention becomes the property of his employer or subject to the employers right of use. (2) Where however the employee has been appointed expressly to create inventions in the employers enterprise and where this was in fact his principal activity and where such activity has led to an invention, the employee shall be entitled to special remuneration only to the extent that the higher pay received under the employment contract in view of his inventive activity does not constitute adequate remuneration. 9. For the assessment of remuneration (Section 8), the following shall in particular be taken into account: (a) the economic importance of the invention for the enterprise; (b) the possible exploitation of the invention in Austria or abroad; (c) the role which the suggestions, experience, preparatory work or resources of the employers enterprise or service instructions have played in bringing about the invention. 10. (1) On the application of one of the parties, the remuneration may subsequently be varied, on an equitable basis, where the circumstances on which the amount was assessed have fundamentally changed. Payments received by the employee on the basis of an earlier assessment shall however in no case be refunded. Similarly, payments already made or becoming due on the basis of an earlier assessment may not subsequently be supplemented, except where remuneration is in the form of a non-recurring payment. (2) The employee may also claim a variation of remuneration where the invention has been transferred by the employer to a third party, if the proceeds obtained by the employer through such transfer are manifestly disproportionate to the remuneration paid by the employer or if the employer continues to participate in the exploitation of the invention and obtains a return manifestly disproportionate to the remuneration paid to the employee. (3) The application (subsections (1) and (2)) may be made only after one year from the previous assessment of remuneration. 11. (1) Where the amount of remuneration (Sections 8 to 10) has been made dependent on the exploitation of the invention by the employer and where the employer fails to work the invention to an extent commensurate with its economic importance for the enterprise, the remuneration shall be assessed as if the employer had worked the invention to an extent commensurate with its economic importance for the enterprise. (2) The remuneration shall be assessed in the same way where the employer has transferred the invention to a third party or has otherwise alienated it, unless the employee has given his consent to such transfer or alienation and fails to prove that such transfer or alienation was only a pretense. (3) The employer shall be released from the obligation under subsection (1) to pay remuneration, if he undertakes to assign the right to the use of the invention to a third party designated by the employee. The third party benefiting from such right shall compensate the employer for his share in the invention assessed on the basis of Section 9(c). A variation of such compensation may be applied for subsequently in accordance with Section 10. (4) The claim (subsections (1) and (2)) may not be made if the employer, with due regard to the circumstances of the case, cannot be expected to work the invention at all or to a greater extent than he has done or could be expected to do had there been no transfer or other alienation. Where however the employer derives an advantage from the invention without working it, fair remuneration shall be payable to the employee. 12. (1) In the case of an agreement under which future inventions of the employee are to belong to the employer (Section 7), the employee shall immediately notify the employer of every invention that he makes other than those which clearly are not covered by the terms of the agreement. The employer shall, within four months of receiving such notification, inform the employee whether he claims the invention on the basis of the agreement as a service invention. (2) Where the employee fails to make such notification, he shall be liable to the employer, without prejudice to the employers right to the invention, for damages in respect of the loss, which shall also include loss of earnings. Where the employer fails to claim the invention or expressly does not claim it, the invention shall belong to the employee. 13. (1) The employer and the employee shall be under an obligation of secrecy with regard to inventions which are the subject of the notification and claim referred to in Section 12(1). (2) The employees obligation of secrecy shall lapse where: (a) the employer has failed to make the claim provided for in Section 12(1) or expressly makes no claim within the period prescribed; or (b) the employer has claimed the invention in time (Section 12(1)) and has waived secrecy. (3) The lapse of the obligation of secrecy in accordance with the above provision shall not affect any obligation of secrecy which may otherwise be incumbent on the employee. (4) The employers obligation of secrecy shall lapse where he has claimed the invention in time (Section 12(1)) and the employee has not opposed that claim. (5) The obligation of secrecy shall not preclude the employer and the employee from applying for a patent or from taking other steps to protect their rights. (6) Any employer or employee violating the obligation of secrecy shall be liable to remedy the loss sustained by the other party, including loss of earnings. 14. Where an employer who has paid remuneration to an employee for a service invention finds that another of his employees had in fact made the invention or had contributed to it, the employer shall be under no obligation to pay the remuneration to the rightful claimant either in its entirety or in proportion to the rightful claimants share in the invention, provided that the employer has made payment in good faith and that the invention belongs to him also under his legal relationship with the rightful claimant. 15. (1) Where an employer has made an agreement with an employee in respect of a service invention, he may at any time wholly or partially waive his rights to the invention. In such case, the employee may request the transfer to him of the rights to the invention that have been waived. (2) Where the employer waives the whole of his rights to an invention, the obligation to pay remuneration shall cease from the moment that the waiver is made. In the event of partial waiver, the employer may ask for a corresponding reduction of the remuneration, to the extent that the rights transferred to the employee are capable of being assessed separately. (3) The obligation to pay remuneration in respect of the period preceding the waiver shall remain unaffected. 16. The rights of the employer and employee arising from Sections 6 to 15 shall not be affected by the termination of employment. 17. The employees rights under Sections 6 to 16 may not be withdrawn or restricted by agreement. 18. In the case of an employment relationship arising from a private contract, the Labor Courts shall have jurisdiction over disputes based on Sections 7 to 17, between employers and employees or between employees. 19. Claims of employers and employees under Sections 7 to 15 shall be statute-barred after three years. Right of the Author of an Invention to be Named as Inventor 20. (1) The author of an invention shall be entitled to be named as the inventor. (2) The right may not be transferred or inherited. Renunciation of the right shall have no legal effect. (3) The inventor shall be named on application by entry of his name in the Patent Register, in the official publication of the application (invitation for opposition, Section 101), in the Letters Patent, in the advertisement of the grant of the patent and in the separate printed copies of the patent (Patentschriften) (Section 109). Where the Letters Patent have already been issued or where the publications referred to have already been made, a special certificate naming the inventor shall be issued or a special notice shall be published in the Patent Gazette. The inventors name shall also be included in any documents certifying priority issued by the Patent Office. (4) The claim to be named as inventor may be made by the author, the applicant for a patent or the patentee. Where several persons are entitled to make the claim, the claimant shall produce proof that the other persons entitled agree, unless the claim is made jointly by all those entitled. Where a person other than the one already named as inventor is to he named as such in addition or in place of the person so named, proof of the consent of the person already named shall also be produced. (5) Where the applicant, patentee or person already named as inventor refuses his consent, the claim shall be submitted to the Patent Office within the periods set out below, on pain of inadmissibility: (a) for claims against the applicant or patentee, within one year of the notification of the grant of the patent in the Patent Gazette (Section 109): or, where the author has transferred the patent, for claims against the transferee, within one year from the Patent Offices receipt of the application to have the transfer recorded (Section 43); (b) for claims against the person already named as inventor, within one year of the publication of that persons name as inventor (subsection (3)). (6) The claim (subsection (5)) shall be dealt with in accordance with the procedural law relating to disputes as to title. The issue of the patent shall not be suspended in consequence. Where a final decision allowing the claim has been given, action under subsection (3) shall be taken, if the rightful claimant so requests. Representatives 21. (1) Anyone acting as a representative before the Patent Office or before the Supreme Patent and Trademark Chamber shall be resident in Austria. He shall evidence his authority by producing the original written power of attorney or a certified true copy thereof. If several persons are so authorized, each one of them may act as a representative. (2) If a representative acts without a power of attorney, the action taken by him in the proceedings shall be valid only if he submits a regular power of attorney within the time limit prescribed therefor. (3) Persons having neither residence nor establishment in Austria may claim rights under this Law before the Patent Office and before the Supreme Patent and Trademark Chamber only if they are represented by a representative as defined in Section 77. (4) The locality in which the representative is resident, or in the absence of a representative, the locality in which the Patent Office is established shall, in matters concerning the patent, be deemed the residence of a patentee not resident in Austria. (5) For each application, a separate power of attorney shall be submitted. This shall also apply where a representative is empowered to act in respect of a patent already granted. (6) Where an attorney-at-law or a patent attorney has been authorized to act as a representative before the Patent Office, his power of attorney shall entitle him as of right to exercise all rights deriving from this Law before the Patent Office and before the Supreme Patent and Trademark Chamber. In particular, he may file an application for a patent, restrict or withdraw such application, file opposition, lodge and withdraw applications or appeals to be dealt with by the Nullity Section, conclude friendly settlements, accept service of documents of every kind, receive payment of official fees and of the cost of proceedings and representation from the adverse party and appoint a representative. (7) The power of attorney under subsection (6) may be limited to a particular right or to representation in particular proceedings. The power of attorney shall not however expire on the death of the principal or as the result of a change in his legal capacity. (8) If the representative is, in addition, to have power to surrender, in whole or in part, a patent granted, he must be expressly authorized to do so. A power of attorney for the transfer of a patent application or a patent itself must be publicly certified. Effect of a Patent 22. (1) A patent shall vest exclusive authority in the patentee to produce the subject of the invention industrially, to put it on the market, to offer it for sale or to work it. (2) If the patent has been granted for a process, it shall be effective also in respect of the products manufactured directly by that process. 23. (1) A patent shall not be effective against a person who, at the time of filing, had already begun, in good faith, to use the invention in Austria or had made the necessary arrangements for doing so (prior user). (2) A prior user may work the invention for the needs of his own business in his plant or workshops or in those of others. (3) This right may be inherited or transferred only together with the business. (4) The prior user may request written recognition of his right by the patentee. If such recognition is refused, the Patent Office shall, on application, determine the claim in accordance with the procedure for disputes as to title. Recognition of the right shall be entered in the Patent Register at the request of the claimant. 24. (1) The military authorities shall have the right, in agreement with the Federal Minister of Commerce, Trade and Industry, to use for their needs, or to arrange for their agents to use, inventions, necessary for national defense, relating to military weapons, explosives or ammunition, fortifications or warships and no rights under a patent shall be effective against them. (2) If no agreement on fair compensation is reached between the patentee and the military authorities with the assent of the Federal Minister of Finance, a decision on the matter shall be taken by the Federal Minister of Finance in agreement with the Federal Minister of Commerce, Trade and Industry and the military authorities. (3) The exercise of the military authorities right of use shall not be affected by the course of the above negotiations. 25. To the extent that the subject of a patented invention is covered by a monopoly of the Confederation (Bund), the patent shall not be effective against the monopoly administration. 26. The patent shall have no effect in the case of vehicles and fittings of vehicles which enter Austria only temporarily in the course of their use in traffic. Relationship of Co-Patentees 27. (1) A patent applied for by several persons as participants in the same invention shall be granted without any determination of each persons share. (2) The legal relationship of the co-patentees shall be governed by the civil law. (3) The right to permit third persons to work the invention shall in case of doubt be exercised only by all the co-patentees jointly. Each co-patentee may however bring proceedings for infringement. Duration of the Patent 28. (1) A patent shall be valid for eighteen years; this period shall begin on the date of publication of the patent application in the Patent Gazette (Section 101). (2) Patents of addition shall expire at the same time as the principal patent. A patent of addition may however be expressly maintained as an independent patent where the principal patent is revoked, annulled or surrendered. Its duration shall in that case be determined in accordance with the day on which the principal patent began to be operative. In respect of the expiry date and the amount of annual fees payable, a patent of addition that has become independent shall replace the principal patent. Expropriation 29. (1) If the interest of the armed forces or of public welfare or any other compelling federal interest require an invention in respect of which a patent has been applied for or granted to be used in whole or in part by the federal authorities or to be made accessible for general use, the federal authorities may expropriate either such patent or the right to the use of the invention in whole or in part pursuant to a decision of the competent Landeshauptmann and on payment of fair compensation. The federal authorities shall use the invention, or render it accessible for general use, in accordance with the decision approving expropriation. The Landeshauptmann of the Land in which the applicant or patentee is resident (or established) (Section 21(4)) shall be competent to take such decision. Where several Länder are involved, the authority applying for expropriation shall have freedom of choice. (2) In the event of imminent danger, the federal authorities may, with the provisional consent of the competent Landeshauptmann, immediately use the invention or make it accessible for general use on the basis of an application for expropriation, subject to a subsequent decision approving expropriation. (3) The Confederation (Bund) shall pay fair compensation to the patentee and to persons entitled to use the invention, where such right is withdrawn. (4) With regard to the amount of compensation, every endeavor shall be made to reach agreement with the applicant for a patent or the patentee and the persons entitled to its use, if any. If no agreement is reached, the decision in any action for compensation shall be rendered by the courts, if necessary after hearing expert opinion. The patentee shall have the right to choose one of the experts. In all cases, the amount of compensation shall be determined solely on the basis of the effects of the expropriation of the patent arising in Austria. (5) The negotiations over the amount of compensation shall have no delaying effect on the exercise of the rights claimed by the federal authorities with regard to the invention, in favor of itself or the general public. (6) Where expropriation of a patent is applied for, interested parties whose names are entered in the Patent Register shall be immediately notified by the Patent Office. Patentees Obligation to Comply with the Law 30. A patent shall not release the patentee from the obligation to comply with the law. 31. (1) Any applicant or his successor in title may work an invention commercially or industrially from the day when his application is published in the Patent Gazette (Section 10 (1)) to the extent that it is protected as laid open for public inspection (Section 101(3)): he shall not be bound by the regulations requiring trade licenses. This privilege shall cover the production, the marketing and offering for sale of the subject of the invention. Where the subject of the invention is a process, the privilege shall also cover the use of that process. (2) Where there are several applicants for a patent, the privilege shall be enjoyed only by those who are entitled to not less than one-fourth of the rights arising from the application. (3) Where the privilege is claimed by a person at a time when the rights arising from the application are shared by not more than four persons, it shall be assumed, until proved otherwise, that such person fulfils the requirement in subsection (2). (4) Subsections (2) and (3) shall apply mutatis mutandis where a patent is granted to several patentees. Section 27(2) shall not be affected. (5) Where the application has been withdrawn, rejected or is deemed under Section 166(6) to be withdrawn, or where a patent is declared null and void or the patentee is declared to have no title, an invention may thenceforth be commercially worked only on the basis of the trade license for the activity concerned. The same shall apply for any commercial exploitation no longer covered by the patent rights where the patent rights have been limited, as compared with the description laid open for public inspection (Section 101(3)), or where there has been a declaration of partial nullity or partial lack of title. Where however the patent has expired (Section 16) or has been revoked (Section 47), the privilege under subsection (1) shall continue provided that it had already been claimed at the time of expiry or revocation. 32. (1) Any person desiring to exercise the privilege under Section 31(1) shall inform the district administrative authority within whose jurisdiction the privilege is to be exercised, not later than on the date when working of the invention begins. (2) When providing that information, the person applying for a patent or the patentee shall state his place of residence, his nationality and the place where the invention is to be worked. (3) If the invention is begun to be worked before the grant of a patent, information thereon must be accompanied by a copy of the Patent Gazette containing the patent application and a photocopy of the description as laid open for public inspection (Section 101(3)). Where the invention is worked by a successor in title to the applicant appearing in the Patent Gazette, proof of such title shall be produced. Where a patent is subsequently granted, the printed copy of the patent (Patentschrift) shall be submitted to the district administrative authority within one month of its publication. (4) Where, after information has been provided under subsection (1), the application for a patent is withdrawn, rejected or deemed withdrawn (Section 166(6)), the competent district administrative authority shall be notified within one month after publication in the Patent Gazette. (5) If working of the invention is not begun until after the grant of the patent, information under subsection (1) shall be accompanied by the printed copy of the patent (Patentschrift) and an extract from the Register less than a month old (Section 80(5)). (6) A declaration of nullity or lack of title in relation to a patent for an invention the working of which was communicated under subsection (1) shall be notified to the district administrative authority within one month after the relevant decision has become final. Where a declaration of partial nullity or partial lack of title is made, a certified copy of such decision shall also be submitted. (7) Information under subsection (4) or (6) shall be provided by anyone working the invention at the time when the events referred to in subsection (4) or (6) occur. (8) Persons who discontinue working an invention under the privilege provided for in Section 31 shall inform the competent district administrative authority thereof within one month. (9) Persons failing to provide information under subsections (1), (4), (6) or (8) in time shall be guilty of an administrative offense and shall be liable to a fine not exceeding 3,000 schillings or to detention for a term not exceeding two weeks. Punishment shall be imposed by the district administrative authority. Transfer 33. (1) The rights arising from a patent application or the patent itself shall be inheritable. Such rights shall not pass to the State. (2) Such rights may be transferred to others, either wholly or in shares, by a legal act, by a court order or by a transfer pro mortis causes. (3) Where the rights arising from a patent application are transferred, the patent shall, if granted, be issued to the applicants successor in title. Section 43(5) to (7) shall apply mutatis mutandis. Liens 34. The right to a patent may be subject to a lien. Voluntary Licenses 35. The patentee may permit third parties to work the invention, in all the territory covered by the patent or part thereof. Such right (license) may or may not be made exclusive. Compulsory Licenses 36. (1) The patentee of an invention of considerable commercial or industrial significance which cannot be worked without the use of an invention patented earlier (the earlier patent), may apply for a license to work the earlier patent. Where such license is granted, the earlier patentee may demand a license to work the later patent, to the extent that the two inventions are in fact connected. (2) Where a patented invention is not worked sufficiently in Austria and where the patentee has not taken all steps required for such working, any person may apply for a license to work the patent for the purposes of his business, unless the patentee shows that the invention could not reasonably have been worked, or could not reasonably have been worked to a greater extent, in Austria owing to the difficulties of exploitation. (3) If a license for a patented invention is required in the public interest, any person may apply for such license for the, purposes of his business. (4) A license (subsections (1) to (3)) may not be applied for until four years after the filing of the application, or three years after publication of the grant, relating to the patent for which the license is sought, whichever period last expires. If the patentee refuses to grant a license on reasonable terms, the Patent Office shall, at the request of the applicant for the license, determine the matter under the procedure relating to disputes as to title. If the license is granted, the Office shall fix the royalty, the security which may be required and any other terms governing use, having regard to the nature of the invention and the circumstances of the case. (5) Subsections (1) to (3) shall not apply to patents of the federal authorities. Transfer of Licenses 37. A license granted by a patentee or by the Patent Office may not, without the consent of the patentee, be transferred inter vivos by the licensee except with the business for which it was granted. The license shall not pass on death to the licensees successor in title unless he continues the same business. Abuse of Patent Rights 38. Where an agreement relating to the grant of a license to work a patented invention or to the obligation to grant such license contains a term or where there is a collateral term preventing the licensee from exercising a given activity, or limiting such activity, which does not relate solely to the manner or the extent of working the invention, the Federal Minister of Commerce, Trade and Industry may declare such term to be wholly or partially invalid, if the interests of the national economy, national defense, public safety or other general interest are prejudiced thereby. 39. Section 38 shall apply in particular to agreements prohibiting the licensee from manufacturing, putting on the market, offering for sale or using products for the manufacture of which the patented invention is not needed or from employing a process not covered by the patent, and to agreements requiring the licensee to manufacture products in such a way as to permit or to render impossible or difficult the use of other products or requiring the licensee to refrain from putting on the market, offering for sale or using products not corresponding to such conditions of manufacture. 40. Section 38 shall not apply where, apart from a restriction of the kind referred to in Section 38, the licensee is not subject to any additional contractual payment. 41. The Federal Minister of Commerce, Trade and Industry may revoke a declaration of invalidity under Section 38 if the grounds on which it was made subsequently cease to exist. In his decision he shall determine the date on which the annulled term again becomes valid. 42. Where a contractual term is declared invalid under Section 38, the rest of the agreement relating to the grant of a license, referred to in Section 38, or to the obligation to grant a license, shall not be affected. A declaration shall not give ground for requesting the rescission or amendment of the agreement, even where such a request can be made under the contract by one or both of the parties. Entry in the Patent Register 43. (1) Patent rights (Section 33), liens and the other rights in rem relating to a patent shall be acquired by entry in the Patent Register and shall be binding on third parties. (2) The date of acquisition of license rights shall be governed by the civil law. License rights shall be binding on third parties only on their entry in the Patent Register. (3) The order of priority of the rights referred to shall determined by the order in which applications for entry have reached the Patent Office, provided that such applications lead to entry. (4) Applications received at the same time shall have the same priority. (5) Entries in the Patent Register under subsections (1) and (2) and the entry of the lapse of patent rights entered in the Register shall be made on written application by one of the parties or at the request of the courts. (6) An application for such entry shall be accompanied by the instrument on which the entry is to be based. For intervivos transactions, the instrument shall contain the essential particulars relating to the legal act and a declaration of the person alienating his right that he consents to the entry in the Patent Register. An instrument other than a public instrument shall hear the duty certified signature of the person alienating his right. In place of the original, a duly certified copy of the instrument may be submitted. (7) The application for entry and the instrument shall be examined by the Patent Office as to form and substance. Charges 44. Any person requiring a patent shall assume the charges encumbering it which have been entered in the Patent Register, or duly filed for entry, at the time when the application for entry of the transfer is submitted to the Patent Office. Entries Relating to Disputes 45. (1) Disputes pending before the courts regarding the ownership of patents, liens or other rights in rem relating to a patent, disputes concerning a claim to be named as inventor (Section 20(5) and (6)), a right of prior user (Section 23) and the grant of compulsory licenses (Section 36), disputes concerning revocation (Section 47), a declaration of nullity (Section 48), a declaration of lack of title (Section 49) and a declaration of dependence (Section 50) shall, on application, be recorded in the Patent Register (entry relating to disputes) (2) The effect of entry of a dispute shall be to render the subsequent decision fully effective against third parties whose own entry in the Register was effected after the Patent Office had received the application for entry of the dispute. Expiry 46. (1) A patent shall expire: (i) not later than at the end of the eighteenth year, where the annual fees are paid in time; (ii) where an annual fee is not paid in time; (iii) when the patent is surrendered. (2) Where the surrender relates only to certain parts of the patent, the patent shall remain valid with regard to the other parts, provided that these parts may still constitute the subject of an independent patent. (3) In the event of expiry at the end of a period (subsection (1)(i) and (ii)), the patent shall expire at the end of the day following the end of the last year of validity: in the event of surrender (subsection (1)), on the day following notification of surrender to the Patent Office. Revocation 47. (1) A patent may be revoked in whole or in part if the invention is exploited exclusively or mainly abroad and if the grant of compulsory licenses (Section 36(2)) has not sufficed to secure the working of the invention in Austria to an appropriate extent. Revocation shall take effect as soon as the corresponding decision becomes final. (2) Revocation may not be ordered until two years have elapsed since the grant of a compulsory license became effective. A patent may not be revoked if the patentee shows that, owing to the difficulties of exploitation, he cannot reasonably work the invention in Austria or have it worked, at all or to a greater extent. (3) Subsection (1) shall not apply to patents of the federal authorities. Declaration of Nullity 48. (1) A patent shall be declared null and void if it is found: (i) that the subject of the patent was not patentable under Section 1, 2 or 3: (ii) that the invention is the subject of the patent of a prior applicant. (2) Where one of the conditions (subsection (1)(i) and (ii)) applies only in part, the declaration of nullity shall take the form of a corresponding limitation of the patent. (3) The final declaration of nullity of a patent shall be retroactive to the date the patent was filed. In the case of subsection (1)(ii), rights under a license lawfully granted by the later applicant and acquired in good faith by third parties which have been on the Patent Register for a year shall however, provided that they are not the subject of a well-founded entry relating to a dispute (Section 45), be unaffected by such retroactive effect, without prejudice to any claims for compensation which may be made against the later applicant. Declaration of Lack of Title 49. (1) A patentee shall be declared to lack title if it is shown: (i) that the patentee was not entitled to the grant of the patent (Sections 4(1), 6 and 7); (ii) that the essence of the application had been usurped from the descriptions, drawings, models, implements or installations of a third person or from a process used by him. (2) Where one of the conditions referred to (subsection (1)(i) and (ii)) applies only in part, the patentee shall be declared only partially lacking in title. (3) In the first case, only the person entitled to the grant of the patent shall have a right to a declaration of lack of title: in the second case: only the injured person. A claim against a bona fide patentee shall become statute-barred after three years from the entry of the patent in the Patent Register. (4) Claims to compensation and reimbursement arising from a declaration of lack of title shall be governed by the civil law and be the object of civil proceedings. (5) Where the applicants claim is allowed, he may, within a month of the decision becoming final, request transfer of the patent to himself. (6) Failure to request such transfer in time shall be regarded as equivalent to surrender of the patent. (7) In the case of such transfer, rights under a license lawfully granted by the earlier patentee and acquired in good faith by third parties which have been on the Patent Register for a year shall, provided that they are not the subject of a well-founded entry relating to a dispute (Section 45), be binding on the new patentee, without prejudice to any claims for compensation which may be made against the earlier patentee. Declaration of Dependence 50. Any patentee may apply to the Patent Office for a declaration that the industrial application of a patented invention entails the full or partial use of his invention. Such application shall be dealt with by the Patent Office under the procedure relating to disputes as to title. Right of Retaliation 51. Retaliatory measures may be provided for by order of the Federal Government against citizens of a foreign State which accords no protection or incomplete protection to the inventions of Austrian citizens. Time Limits 52. (1) Where a time limit is not prescribed by law or statutory order, the competent authority shall lay down such time limit having regard to the requirements and the nature of each case, unless the President of the Patent Office has issued provisions on the time limits concerned (Section 99(5), second sentence). (2) The time limits laid down by law or statutory order may not, unless provided otherwise, be extended. The time limits laid down by an authority may be extended. 53. (1) Time shall begin to run from the event which is determined by law or statutory order as the starting-point or, unless otherwise provided when the time limit was fixed, from the date when the decision or order fixing the time limit was served on the party or, where the decision or order was not served but published, from the date of publication. (2) Where a time limit is expressed as a number of days, the day of the event, the service or the publication which has been fixed as the starting-point shall not be counted. (3) Where a time limit is expressed in weeks, months or years, the period shall end with the end of the day of the last week or the last month which in name or number corresponds to the date on which time began to run. Where there is no such day in the last month, the period shall end at the end of the last day of that month. 54. (1) The beginning and the end of the period shall be unaffected by Sundays and holidays. (2) If the end of the period falls on a Sunday or holiday or on a working day on which the mail reception center of the Patent Office is closed, the next working day shall be deemed to be the last day of the period. (3) In the case of submissions posted in Austria, the days during which such documents are in the post shall not be counted for the purposes of the time limit. This shall not apply in cases where the day of reception of the submission by the Patent Office is the operative date (Sections 102(1) and 129(3)). 55. Where different time limits are laid down for one and the same action to be taken by several persons concerned in the same case, the action may be taken by any one of those persons as long as the time limit laid down for one of them has not been passed. 56. Where a submission comprises several industrial property rights (patents, marks, industrial designs) or several applications relating to such rights, separate applications may be asked for in respect of each or some of the rights in question, a time limit being set for filing. The separate applications shall, if they have been received in time, be deemed to have been received on the day on which the original submission was received. Sections 114(5) and 163(3) shall remain unaffected. II. Patent Authorities and Institutions Scope of the Patent Offices Activity 57. (1) The Patent Office shall be responsible for the issue and revocation of patents, for declarations of nullity or lack of title, for declarations of dependence of patents, for decisions on naming a person as inventor (Section 20), for decisions on the existence of a right of prior user (Section 23), for decisions on applications for a declaration under Section 163, for the grant of licenses (Section 36), and for all entries in the Patent Register. (2) The Patent Office shall also be under a duty to provide written opinions at the request of the courts on patent matters relevant to evidence which is taken in pending proceedings. The Patent Office shall not however assess the financial return which the patent is likely to yield. The opinion shall be prepared by the Appeal Section consisting of four members, as prescribed for final decisions (Section 63(1)(i)). If the facts of the case are not clear, the Appeal Section shall hear the parties before giving an opinion. A fee of 3,500 schillings shall be payable for the opinion, unless the cost of the legal proceedings is to be borne by the Confederation (Bund). In respect of that fee, the provisions of the Law concerning Fees of 1965 shall apply in legal proceedings. Location and Composition of the Patent Office 58. (1) The Patent Office shall be located at Vienna. It shall constitute an externally independent office as far as its conduct of business is concerned. (2) The Patent Office shall consist of the President, his deputies and the required number of legally qualified and technically qualified members. (3) There shall be both permanent and temporary members. (4) The President and his deputies shall possess the qualifications prescribed for permanent members of the Patent Office, at least one of them possessing the qualifications of a legally qualified member and one those of a technically qualified member. (5) The President, his deputies and the permanent members shall be salaried federal civil servants. (6) The President, his deputies and the members of the Patent Office shall be appointed by the President of the Confederation (Bundespräsident). (7) The President shall be in charge of the Patent Office. In addition to the tasks conferred on him by this Law, he shall direct the Offices activities and supervise the staff. (8) The President of the Patent Office shall also he responsible for the industrial property service of the Federal Ministry of Commerce. Trade and Industry. 59. (1) The legally qualified temporary members shall have completed a university course in law and political science and shall have held, for not less than ten years, a position for which completion of such a course was required. In addition, they shall have engaged in research or practical work in the field of the protection of industrial property. (2) The technically qualified temporary members shall have completed a course at a technically oriented high-school or a course in mathematics or science in the philosophy faculty of a university; they must have special knowledge of a particular technological subject and be not less than thirty years old. (3) Only Austrian citizens of moral integrity and having full legal capacity may be appointed as temporary members. For the duration of their membership, they shall have the title of Counsellor to the Patent Office (Rat des Patentamtes). (4) The temporary members shall be appointed for a period of five years; they may be reappointed. The appointment shall in no case prevent voluntary withdrawal on permanent retirement. (5) A temporary member shall cease to hold office, if he loses Austrian citizenship, if his legal capacity is restricted or if he is convicted of a felony, or misdemeanor committed for gain, or like offense. (6) Temporary members who are not civil servants shall take the following oath before the President prior to exercising their duties: I solemnly promise that I shall perform my duties conscientiously and impartially and that I shall observe secrecy on anything that may come to my knowledge in the course of my official duties. This oath shall be signed. Where an official is reappointed, it shall be sufficient to remind him of the oath he has taken. (7) The temporary members shall receive special-duty pay, in accordance with their assignment: (a) rapporteurs (joint rapporteurs) shall receive from 8 to 40 percent, and (b) assessors shall receive from 4 to 15 percent of the monthly salary of a federal civil servant in active service in salary step 1 of service grade VIII of the General Administration, whenever they are called upon to serve. Special-duty pay shall be determined by the President of the Patent Office for all cases completed in one calendar year, with due regard to the time and labor required for each case. (8) A temporary member shall be asked to serve only where in a particular case no permanent member is available for the subject in question or where his inclusion appears to be desirable having regard to the special nature of the case. Sections and Sub-Offices 60. (1) The Patent Office shall have: (a) technical Application Sections and at least one legal Application Section, (b) at least one Appeal Section, (c) at least one Nullity Section, (d) a Presidents Section. (2) The number of the sections listed in subsection (1)(a) to (c) shall be determined by the President in accordance with existing requirements. (3) Without prejudice to the duties assigned to these sections in other provisions, (a) the technical Application Section shall be responsible for the procedure for the grant of patents and the legal Application Section for matters relating to the transfer of the right arising from an application, to other forms of alienation of such right, to patents granted, and to applications for restoration of rights, to the extent that the Appeal or Nullity Section is not responsible; (b) the Appeal Section shall be responsible for the appeals procedure (Sections 70 and 108) and for the preparation of opinions for the courts (Section 57(2)); (c) the Nullity Section shall be responsible for applications for revocation, for a declaration of nullity or lack of title, for a declaration of dependence of patents (Section 50), for the naming of a person as inventor under Section 20(5), for recognition of the right of prior user (Section 23), for a declaration under Section 163, and for the grant of compulsory licenses; (d) the Presidents Section shall be responsible for matters reserved to the President. (4) For the discharge of the Patent Offices functions, the President shall also establish the necessary sub-offices. (5) The President may place a sub-office directorate in charge of sub-offices. 61. (1) The President shall subdivide the whole field of technology into classes of patents; if required, further subdivisions shall be made. He shall assign questions relating to the various classes or subdivisions to the technical Application Sections in accordance with existing requirements. (2) The President shall establish the various sections for every year in advance. In the course of any one year, the composition of sections may be altered only for important reasons, such as a change in the establishment, leave, illness, excessive workload or insufficient occupation of particular members. (3) The technical Application Sections shall consist of technically qualified permanent members and the legal Application Sections shall consist of legally qualified permanent members. The Appeal and the Nullity Sections shall consist of legally qualified and technically qualified members. The members of the Application Sections may be required to act at the same time in the Appeal and the Nullity Sections. (4) The President shall appoint a section head from among the members of each Application Section to direct and supervise their activities; he shall also appoint the requisite number of chairmen from among the permanent members of the Appeal and the Nullity Sections and make arrangements for others to act as their deputies. The President and his deputies shall be members of the Appeal Section, and if they are legally qualified members, also of the Nullity Section, as chairmen. (5) To every technical Application Section, a legally qualified member shall be assigned for participation in joint decisions and for the submission of opinions (Section 62(4)). A legally qualified member may be assigned simultaneously to several technical Application Sections. (6) The allocation of activities in the Application Section shall be determined by the President for every year in advance on the advice of the section head. Short-term changes in the allocation of business necessitated by illness or other events preventing attendance shall be arranged by the head of the Application Section. (7) In the Appeal and the Nullity Sections, the various cases shall be assigned to the chairmen by the President. In this connection, the workload and in the case of the technically qualified chairmen, also the particular technical subject shall be taken into account. Decisions in the Sections 62. (1) Decisions and orders within the purview of the technical Application Section shall be the responsibility of the competent technically qualified member (examiner), unless otherwise provided in subsections (3) and (4). (2) Decisions and all orders in matters of patent protection falling within the purview of the legal Application Section shall be the responsibility of the member assigned to the technical Application Section (Section 61(5)) whose patent classes or subdivisions comprise the patent or the application in question (Section 61(1)). Where such matters relate to several patents (patent applications), the member responsible shall be the one responsible under Section 61(6) for the patent first mentioned in the application concerned or for the filing of the patent first mentioned. (3) The refusal in whole or in part of an application (Section 100), the grant of a patent after opposition (Section 104), and the imposition of a disciplinary penalty (Section 83) shall be decided by three members of the technical Application Section, two of whom shall be technically qualified members. This board (Senat) shall also consist of the section head and the examiner. The section head shall be the chairman. (4) The legally qualified member assigned to the technical Application Section shall participate in the decision under subsection (3), with the right to vote. If the examiner is entitled to render a decision alone (subsection (1)), he shall first obtain the opinion of the legally qualified member in the following cases: (a) where patentability is to be decided from the stand-point of industrial applicability or on the basis of Section 2(i); (b) where the notoriousness of prior use or the question whether a document should be regarded as a printed publication is in doubt or contested; (c) where opposition is based on Section 102(2)(iii) and (iv); (d) where a decision is to be taken on applications to be dealt with under Section 110; (e) where a decision is to be taken on applications for access to a document or for permission to make copies (Section 81); (f) where a decision is to be taken on priority rights claimed on the basis of international agreements or of the provisions regarding the priority protection of inventions at exhibitions, the legal foundations of such claims being in doubt or contested; (g) where a decision is to be taken regarding an administrative or disciplinary penalty. (5) Where, at a meeting of the Application Section consisting of three technically qualified members, the majority takes the view that one of the matters referred to in sub-section (4) should also be determined, the legally qualified member assigned to the Application Section shall participate in the decision in place of one of the technically qualified members. (6) To the extent to which the composition of the board is not determined by subsections (3) to (5), it shall be settled by the head of the technical Application Section with due regard to the subject matter of the case concerned. (7) Before a decision is taken on matters falling within the responsibility of the legal Application Section (Section 60(3)(a)) and to which technical questions may be relevant, the legally qualified member shall obtain the opinion of the competent technically qualified member. 63. (1) For final decisions of the Appeal and the Nullity Sections, the following members shall participate in addition to the chairman: (i) in the Appeal Section, three technically qualified members and one legally qualified member, except in the case of appeals against decisions of a legally qualified member, in which case three members of the Section, two of whom being legally qualified members, shall take the decision; (ii) in the Nullity Section, by two legally qualified members and three technically qualified members. (2) The chairmen of the Nullity Section shall be legally qualified, and the chairmen of the Appeal Section shall be legally qualified in the case of appeals against decisions of a legally qualified member. (3) In the case of interim decisions in the Appeal and the Nullity Sections, the presence of three members shall be sufficient. 64. (1) Decisions of the board shall be taken by a simple majority. The chairman shall have the casting vote. (2) The decisions of the Patent Office shall be accompanied by a statement of reasons, they shall be in writing and served on all parties. If an application to the Application Section is approved in its entirety in ex parte proceedings, the statement of reasons may be dispensed with. (3) All decisions of the Patent Office shall be taken in the name of the Austrian Patent Office, with the addition of the Section or sub-office; in matters reserved to the President the words The President should be included. Written communications shall be dated and signed. Collective decisions shall be signed by the President. The signature may be replaced by an official certification to the effect that the copy delivered is a true copy of the document in question and that the original contains the signature required. Further particulars shall be settled by order. 65. (1) The instructions required to prepare the decision to be adopted by the technical Application Section shall be issued by the examiner. Except in so far as merely formal defects in submissions or the description submitted are to be corrected, a record shall always be taken where parties, witnesses or experts are heard. (2) Decisions shall be taken on the basis of a request substantiated in writing. Amendments adopted at the meeting shall be entered in the text of the request. If the decision departs in essentials from the terms of the request, the text shall be drawn up afresh in consultation with the member on whose draft the decision was based. (3) Each member of the board may change his opinion until the end of the meeting. If, as a result, the decision adopted no longer commands a majority, a new vote shall be taken. (4) If there is no unanimity in the board regarding the decision or the reasons given for it, a record shall be taken showing the views of the members of the board and the result of the vote taken. Otherwise an entry regarding the vote signed by all members of the board shall be sufficient. 66. Boards dealing with cases before the Appeal and the Nullity Sections shall be set up by the chairmen separately for each case. In this connection, the workload, and in the case of the technically qualified members, the subject of the particular case shall be taken into account. Official Dress 67. (1) At all hearings, the members of the Appeal and the Nullity Sections shall wear official dress. An order shall be issued to regulate further the kind of dress and the wearing of such dress. (2) The representatives referred to in Section 77 may wear official dress at hearings of the Appeal and the Nullity Sections and of the Supreme Patent and Trademark Chamber. Business Routine 68. The business routine in the sections and sub-offices shall be regulated by an order of the President of the Patent Office, having regard to the need for orderly and rapid work and to the tasks of the Patent Office. The order shall also determine how applications may be made direct to the Patent Office and when they are deemed to have reached the Office. Care shall be taken to ensure that the time of receipt of the application is precisely identified by day, hour and minute. 69. Against the decisions of the President falling within his responsibility under this Law, an appeal shall lie only if it is expressly provided for in this Law. Section 2(2) of the Law on Administrative Procedure shall not however be affected. Appeals against Decisions of Sections 70. (1) The decisions of the Application Sections shall be subject to appeal. (2) Against the decisions (interim and final) of the Appeal Section, no further appeal shall lie to a higher authority nor may an appeal he made to the Administrative Court. (3) The final decisions of the Nullity Section may be the object of an appeal to the Supreme Patent and Trademark Chamber as the highest authority. (4) No separate appeal shall lie against the rapporteurs acts preparing a decision of an Application Section or a decision of the Appeal or the Nullity Section. (5) Similarly, no separate appeal shall lie against interim decisions of the Nullity Section, but an amendment of the rapporteurs preparatory acts may be applied for in all three sections and an amendment of interim decisions of the Appeal or the Nullity Section may be applied for, in the section concerned. 71. (1) The appeal shall contain a formal application and shall be lodged with the Patent Office within two months from the date when the decision was served; it shall be substantiated not later than one month thereafter. (2) If the appeal is opposed, the submission intended for the Patent Office shall be accompanied by one copy of the appeal and its attachments for each adverse party. (3) Appeals arriving after the time limit referred to shall be dismissed by the Application Section. Appeals which are inadmissible or were not substantiated in time (subsection (1)) or do not comply with other legal requirements shall without more be dismissed by the Appeal Section. In the case of defects of form however, an appeal may be dismissed only after the applicant has failed, on request, to remedy the defects. (4) In proceedings before the Appeal Section, new facts and evidence shall be admissible only to support or refute facts and evidence submitted in time in the first instance; this shall not preclude restriction or clarification of the application for protection. The parties shall be given an opportunity to state their views on the new facts submitted and on the result of any new hearing of witnesses. 72.(1) For appeals against decisions of the technical Application Section, the chairman shall appoint a rapporteur from among the voting members. The rapporteur shall be either a technically qualified permanent member or, if the chairman is not himself legally qualified, the legally qualified member, according to whether technical or legal questions are of greater importance for the decision. For appeals against decisions of the legal Application Section, the chairman shall appoint a legally qualified permanent member as rapporteur. (2) The rapporteur shall send a copy of the appeal with its attachments to the adverse party, requesting him to submit his objections within a period of not less than one month, which may be extended in justifying circumstances. The rapporteur shall also make the necessary arrangements for the rendering of the decision or for the hearing, particularly in view of any further written submissions which may be necessary or for the taking of evidence offered by the parties. (3) At the end of the preliminary proceedings, the rapporteur shall submit the files to the chairman with a written statement of all points of fact and law on which the decision essentially depends, with a statement of his conclusions (report). The chairman may request the rapporteur or any other voting member to supplement the report. 73.(1) The chairman may order a hearing in the appeal. He shall order a hearing if the applicant or any adverse party so requests. The hearing shall not be in public. (2) The chairman shall open the proceedings and satisfy himself as to the identity of all persons appearing; he shall examine their status as parties and any powers of attorney. He shall conduct the hearing, without permitting digression or unnecessary detail, in such a way as to ensure the parties right to be heard. (3) The chairman shall determine the order in which the parties are to be heard, the evidence is to be taken, and the results of earlier evidence or findings are to be submitted and discussed. The chairman or any members of the board appointed by him shall study the case with the parties, on points of fact and law. (4) A record of the hearing shall be taken by a registrar. The record shall show the place, time and subject of the hearing, and in addition the names of the members of the board, the registrar, the parties, their representatives, the witnesses heard and the experts, and also a summary of the contents and course of the proceedings. The record shall be signed by the chairman and the registrar. (5) The Appeal Section shall reach its own decision, having complete discretion as to its evaluation of the facts and evidence submitted. The Appeal Section may substitute its opinion for that of the Application Section, both as to the decision and to the reasons given. It may accordingly amend the decision appealed against in any way. (6) The deliberations and the vote of the Appeal Section shall take place in camera. Section 65(3) and (4) shall apply mutatis mutandis. (7) The rapporteur shall draw up the decision on the basis of the resolutions adopted. If his views were those of a minority, he shall draw up the text of the decision in consultation with the member on whose draft the decision was based. The chairman may however assign the preparation of the text or parts thereof to another member of the board. Supreme Patent and Trademark Chamber 74.(1) The Supreme Patent and Trademark Chamber shall be established in Vienna for appeals against final decisions of the Nullity Section of the Patent Office. The Chamber shall consist of a president, a vice-president, no less than eight other legally qualified members and the required number of technically qualified members as counsellors. During their term of office they shall have the title of Counsellor of the Supreme Patent and Trademark Chamber (Rat des Obersten Patent- und Markensenates). (2) The president and the vice-president shall be or have been members of the Supreme Court as president or vice-president, or chairman of a division. (3) The legally qualified members shall have completed a university course in law and political science and shall have held, for not less than ten years, a position for which completion of such a course was required. In addition, they shall have engaged in research or practical work in the field of the protection of industrial property. At least three members shall be judges; at least three members shall be lawyers of Group A in the Federal Ministry of Commerce, Trade and Industry or legally qualified permanent members of the Patent Office. (4) The technically qualified members shall have completed a course at a technically oriented high-school or a course in mathematics or science in the philosophy faculty of a university; they must have special knowledge of a particular technological subject and be not less than thirty years old. (5) Only Austrian citizens of moral integrity and having full legal capacity may be appointed members. (6) The members of the Supreme Patent and Trademark Chamber shall be appointed by the President of the Confederation for a period of five years; they may be reappointed. The appointment shall in no case prevent a member from voluntarily leaving the Chamber on permanent retirement. (7) The term of office shall end on December 31 of the year in which a member reaches the age of seventy. It shall also end if a member loses Austrian citizenship, if his legal capacity is restricted or if he is convicted of a felony, or misdemeanor committed for gain, or like offense. (8) Members who are not civil servants shall take the following oath before the President prior to exercising their duties: I solemnly promise that I shall perform my duties conscientiously and impartially and that I shall maintain secrecy on anything that may come to my knowledge in the course of my official duties. This oath shall be signed. Where an official is reappointed, it shall be sufficient to remind him of the oath he has taken. (9) The members shall be independent in the exercise of their duties and shall not be bound by instructions from anyone. The decisions of the Supreme Patent and Trademark Chamber may not be annulled or amended by administrative procedures. (10) The registrars shall be appointed by the Federal Minister of Commerce, Trade and Industry from among civil servants of Group A in that Ministry or in the Patent Office. (11) The president of the Supreme Patent and Trademark Chamber as the head of that authority shall be entitled to annual special-duty pay at the rate of 250 percent and the vice-president at the rate of 125 percent of the monthly salary of a federal civil servant in active service in salary step 1 of service grade IX of the General Administration. (12) All other members and registrars shall receive special-duty pay in accordance with their assignment: (a) rapporteurs (joint rapporteurs) shall receive 8 to 40 percent (b) assessors shall receive 4 to 15 percent, and (c) registrars shall receive 3 to 10 percent of the monthly salary referred to in subsection (11), whenever they are called upon to serve. Special-duty pay shall be determined by the Federal Minister of Commerce, Trade and Industry on the advice of the president at the end of the calendar year for all cases completed during the calendar year in question, with due regard to the time and labor required for each case. (13) The secretarial work of the Supreme Patent and Trademark Chamber shall be performed by the Patent Office. 75.(1) The Supreme Patent and Trademark Chamber shall deliberate and take decisions under the chairmanship of the president or if he is unable to attend of the vice-president in boards consisting of five members: a chairman, two legally qualified members and two technically qualified members. The chairman shall ensure that the board includes at least one lawyer of Group A and at least one judge. The lawyer shall be the rapporteur; if necessary, the chairman may appoint further members of the board as joint rapporteurs. (2) At all hearings, the members of the Supreme Patent and Trademark Chamber shall wear official dress. An order shall regulate further the kind of dress and the wearing of such dress. Reasons for Exclusion 76. (1) Members of the Patent Office and of the Supreme Patent and Trademark Chamber may not take part: (i) in cases in which they are themselves parties or in which they have a joint interest or joint liability with one of the parties or may be liable to one of the parties; (ii) in cases concerning their spouses or persons directly related to them through consanguinity or marriage or who are their relatives by a collateral line up to the fourth degree or who are related by marriage up to the second degree; (iii) in cases concerning their foster parents, foster children, wards or children committed to their care; (iv) in cases in which they represent or have represented one of the parties or have had or may have a material advantage or loss; (v) in appeals against a decision in which they have taken part; (vi) for any other major reason likely to place their complete impartiality in doubt. (2) Members of the Patent Office may not take part in decisions of the Appeal Section regarding the filing of a patent or a patent itself, if they have taken part in the Application Sections decision regarding publication or grant of the patent. Nor may they take part in an appeal against the decision of a technical Application Section of which they are members or to which they have been assigned as legally qualified members. (3) Members of the Patent Office may not take part in the work of the Nullity Section and members of the Supreme Patent and Trademark Chamber may not take part in the work of the Chamber: (i) in proceedings concerning applications for a declaration of nullity of a patent, if they have taken part in the decision regarding the publication or the grant of the patent; (ii) in proceedings concerning all other applications within the responsibility of the Nullity Section in the circumstances referred to in paragraph (1), where the proceedings are based on a situation which was the subject of a decision in proceedings before the Application or the Appeal Section. (4) A member of the Patent Office or of the Supreme Patent and Trademark Chamber who regards himself as excluded from participating in a decision (subsections (1) to (3)) shall immediately inform the section head or the chairman, stating his reasons. The section head or the chairman shall, if he regards the reason for exclusion as valid, make the necessary arrangements for a replacement. If the reason for exclusion relates to the section head or the chairman, it must be communicated to the President of the Patent Office in the case of proceedings before the Patent Office and to the president of the Supreme Patent and Trademark Chamber in the case of proceedings before the Chamber. In the case where either of the two presidents was in fact the chairman, the reason for exclusion shall be communicated to his deputy. (5) If, in proceedings before the Patent Office or the Supreme Patent and Trademark Chamber, a party pleads a reason for the exclusion of a member, the procedure set out in subsection (4) shall be followed. Representatives of the Parties 77. Only attorneys-at-law, patent attorneys and officials of the Finanzprokuratur1 may represent parties professionally before the Patent Office and before the Supreme Patent and Trademark Chamber. Prohibition of Unauthorized Legal Representation or Opinions (Winkelschreiberei) 78. (1) Anyone who, in matters relating to the protection of inventions, professionally prepares written submissions, descriptions or drawings for patent applications or documents for proceedings before Austrian or foreign authorities, provides opinions in the field concerned, represents parties before Austrian authorities or offers, in word or writing, to perform such services, having no authorization to represent parties professionally in such matters, shall be guilty of an administrative offense and liable to a fine not exceeding 1,000 schillings or to detention for a term not exceeding two weeks. Punishment shall be imposed by the district administrative authority or by the Federal Police authority in places where such authority exists. (2) The special provisions relating to the treatment of unauthorized legal representation and opinions in the ordinary courts shall not be affected. Patent Gazette 79. (1) The Patent Office shall issue periodically a Patent Gazette (Patentblatt) containing the public notices provided for in this Law and the orders issued by the President of the Patent Office, except where they are solely intended for the sections and sub-offices of the Patent Office. Unless otherwise provided, these orders shall take effect on the day after the issue of the Patent Gazette containing the notice concerned. (2) The preparation and publication of the Gazette shall be regulated by an order of the Federal Minister of Commerce, Trade and Industry. Patent Register 80. (1) The Patent Office shall keep a Patent Register specifying the serial number, subject and period in force of patents granted and the name and residence of patentees and their representatives. The following shall also be recorded: the beginning and end of the period in force, lapse, opposition, revocation, declarations of nullity or lack of title, designation of the inventor, expropriation, declarations of independence of a patent of addition, declarations of dependence, transfers of patents, licenses, liens and other rights in rem relating to a patent, employers rights under Section 7(2), rights of prior user (Section 23), restoration of rights (Section 133), decisions relating to declarations under Section 163 and disputes. (2) The descriptions, drawings, models and samples relating to existing patents and also the applications and documents on which entries in the Register are based shall be kept by the Patent Office. (3) Any person may inspect and take copies of the Patent Register and the descriptions, drawings, models and samples, on the basis of which patents have been granted, and inspect and take copies of patent applications and documents, unless the patent concerned is one which belongs to the federal authorities and has not yet been published (Section 110). (4) The Patent Office shall publish descriptions and drawings of patents granted to the extent that they are open to public inspection, in separate printed copies (Patentschriften). The printed copies shall specify the publications which the Patent Office has taken into consideration in order to delimit the subject of the application having regard to the state of the art. (5) On request, the Patent Office shall issue certified copies of entries in the Register. Access to Documents 81. (1) The parties to proceedings may inspect the relevant documents and make copies. Other persons shall have that right, except in the cases set out in Section 110, with the consent of the parties or on showing a legal interest. (2) Documents relating to patents for which applications have been filed and are still pending may be inspected before publication (Section 101(1)) only with the consent of the applicant or his successor in title. After publication everyone shall have the right to inspect the documents published, to copy them or to have copies made of them. (3) Copies shall be certified by the Patent Office upon request. (4) Information and official certificates as to the date and title of an application, the name and agent (if any) of the applicant, any priority claimed, and the serial number on which priority is based, as well as information on whether the application is still pending and whether and on whom rights resulting from it have been conferred shall be supplied to everyone. (5) Records of deliberations and parts of files relating solely to internal administrative transactions shall not be accessible to the public. Administrative and Disciplinary Penalties (Ordnungs- und Mutwillensstrafen) 82. (1) The person who is in charge of deliberations or an examination or who is taking evidence or hearing a witness shall ensure that order and propriety are maintained. (2) Persons who disrupt official proceedings or violate the rules of propriety by misconduct shall be reprimanded; if the reprimand is not heeded, they may, after a prior warning, be deprived of the right to speak, or removed and ordered to appoint a representative, or sentenced to a fine of 1,000 schillings and, in default, to detention not exceeding three days. In aggravating circumstances, the sentence of detention may be substituted for the fine or imposed in addition. (3) The same disciplinary penalties may be imposed on persons who draw up their written submissions in an insulting manner. (4) Measures under subsection (2) may be taken by the person in charge of the proceedings. In proceedings before the Appeal or the Nullity Section of the Patent Office or before the Supreme Patent and Trademark Chamber, decisions as to the removal of a person taking part in the proceedings or the imposition of a disciplinary penalty shall be taken by the board concerned. Disciplinary penalties under subsection (3) shall be imposed by the board in proceedings where decisions are taken by the board. (5) Disciplinary penalties against public authorities which in the exercise of their duties act as representatives and are not subject to disciplinary regulations may not take the form of detention. Where public authorities and representatives authorized to act for parties on a professional basis are subject to disciplinary regulations, no disciplinary penalty shall be imposed, but the case may be reported to the disciplinary authority in question. (6) The imposition of a disciplinary penalty shall not preclude the institution of criminal proceedings for the same action. 83. Persons who avail themselves of the services of the Patent Office or the Supreme Patent and Trademark Chamber in an obviously frivolous fashion or make incorrect statements in order to obstruct the proceedings may be sentenced to a fine not exceeding 1,000 schillings and, in default, to detention not exceeding three days. In proceedings where the decision is taken by a board, the board shall decide on the disciplinary penalty. 84. (1) The fines referred to shall be made over to the Confederation (Bund). Sections 12, 54 and 67 of the Law on Administrative Penalties. 1950, shall apply to the penalties referred to. (2) The power to impose disciplinary penalties shall lie with the authority in charge of the disrupted proceedings or before which the misconduct took place or which received the submissions referred to in Section 82(3). The power to impose penalties under Section 83 for frivolous conduct shall lie with the authority whose services were frivolously used or before which incorrect statements were made in order to obstruct the proceedings. (3) An appeal shall lie to the next higher authority (Section 70) against decisions of the Application and the Nullity Sections imposing a disciplinary penalty. The appeal shall be made within two weeks and shall have no delaying effect. No appeal shall lie against the decision of the Appeal Section or the next higher authority. Service of Documents 85. The documents drawn up by the Patent Office and the Supreme Patent and Trademark Chamber shall be served by organs of the Patent Office or by post. In all other cases, Sections 22 to 31 of the Law on Administrative Procedure, 1950, shall apply, unless otherwise provided in Section 86 of this Law. 86. (1) Where an application has been made by two or more persons not all of whom live in Austria and until a joint representative or authorized recipient of documents has been designated, the Austrian resident whose signature first appears on the application shall be deemed to be authorized to receive service of documents on behalf of all the interested parties. (2) The authorized recipient shall be sent as many copies as there are interested parties. (3) Service of the documents and their copies on the authorized recipient shall be deemed service on all the interested parties. (4) The authorized recipient shall always, unless otherwise provided by agreement, send the documents received to the interested parties without delay. III. Procedure A. Grant of Patents Filing of an Application 87. (1) Applications for patents shall be filed at the Patent Office in the written form prescribed. Filing may be effected by hand or by post. There shall be an application fee (Section 166(1)). (2) The time of an applications arrival at the Patent Office shall be regarded as the time of filing. Scope of the Application 88. Every invention shall be the object of a separate application. Inventions, however, which relate to another invention as components or as effective means may be combined in one application. Content of the Application 89. The application shall contain: (i) the first name, family name and place of residence of the applicant and, where the application is made through a representative, the same particulars for the applicants permanent Austrian representative; (ii) the request for the grant of a patent; (iii) an appropriate brief designation of the invention to be patented (title). Attachments to the Application 90. The following shall be attached to the application: (i) a description of the invention drawn up in duplicate and in accordance with this Law (Section 91) and signed by the applicant or his representative; (ii) where the application is made through a representative, a power of attorney. Description of the Invention 91. (1) The description shall: (i) describe the invention in a manner sufficiently clear, distinct and complete for the invention to be carried out by persons skilled in the art; (ii) at the end of the description, emphasize precisely and distinctly what is new thus constituting the subject of the patent in one or more claims; (iii) contain the drawings necessary for the carrying out of the invention. The drawings shall be of a durable nature and be accompanied, where necessary, by models and samples. (2) Until the Patent Office has decided to publish the application, amendments may be made to the contents of the description. (3) Any amendments affecting the nature of the invention shall be separated from the application. If the applicant desires protection for them also, they shall be filed separately within the period prescribed. Where such application is filed within the period prescribed, it shall have priority from the moment that the amendment was communicated to the Patent Office in the course of the procedure relating to the earlier application. Formal Requirements for the Application 92. The formal requirements for the application and the description including the drawings, shall be regulated in more detail by order. Such order shall be based, as far as possible, on considerations of expediency and simplicity. Due regard shall be had to the requirements of printing and of the publication of the description. Priority 93. (1) The applicant shall have priority from the time that his application for a patent was duly filed (Sections 87 to 92). (2) From such time he shall have priority over every similar invention the subject of a later application. (3) Where the application contains defects, it may, if such defects are remedied in time (Section 99), be deemed to have been regularly filed at the time of the first filing, provided that the nature of the invention is not affected by such amendments. Where the correction of the defects, made in time, entails a subsequent modification of the nature of the invention, Section 91(3) shall apply mutatis mutandis. 94. (1) Separate priority for separate parts of the subject of the invention (partial priorities) may be claimed only on the basis of international agreements or of the provisions concerning the priority protection of inventions at exhibitions. Such partial priorities shall also be admitted where the time of arrival of the application at the Patent Office is decisive for the priority of part of the application. The parts of the application corresponding to the different priorities shall be covered by separate patent claims. The applicant shall designate the claims to which the various priorities relate (subdivision of priority). (2) The application fee shall be the single fee multiplied by the number of all priorities of the application. Where the fee is not fully paid, priority shall be determined in accordance with the date of complete payment (Section 93). Any amounts paid in excess of the fee for a single application shall be reimbursed. 95. (1) The right of priority granted in Article 4 of the Paris Convention for the Protection of Industrial Property must be expressly claimed. The date and country of the application for which priority is claimed shall be indicated (declaration of priority), as well as the serial number of the application. (2) The declaration of priority shall be submitted to the Patent Office within two months of the arrival of the patent application at the Patent Office. Within that period, an amendment to the declaration of priority may be requested. For such request, a fee amounting to half the application fee, shall be payable (Section 166(1)). In the case of partial priorities (Section 94), the fee shall be the multiple corresponding to the number of priorities to be amended. (3) If the grant or maintenance of the protected right depends on the validity of the claim to priority, the right of priority must be proved. The evidence required for such proof (evidence of priority) and the time of production shall be determined in an order. (4) If the declaration of priority is not made in time, if evidence of priority is not submitted in time, or if the serial number of the application for which priority is claimed or the subdivision of priorities is not notified on official demand within the periods laid down (subsections (1) to (3)), priority shall be determined in accordance with the date of filing in Austria. 96. (1) Inventions which are displayed in an Austrian or foreign exhibition shall enjoy priority in accordance with Sections 97 and 98. (2) The provisions of Sections 97 and 98 shall apply in particular to display in model or merchandise exhibitions. 97. (1) Protection shall be accorded only if the Federal Minister of Commerce, Trade and Industry has granted the exhibition the privilege of priority for the articles exhibited there. (2) Such privilege shall be applied for by the management of the exhibition. The application shall contain the particulars required for a decision regarding the priority claimed. (3) The authorities shall have a discretion to grant or refuse the application, unless an international obligation to grant protection exists. (4) The grant of the privilege of priority protection shall be notified in the Amtsblatt zur Wiener Zeitung and in the Österreichische Patentblatt (Patent Gazette) at the exhibition managements expense. 98. (1) The effect of such protection shall be to give the invention a right of priority (subsection (2)) from the time that the article has reached the exhibition premises, provided the application for a patent is made in accordance with the applicable regulations within three months from the day on which the exhibition closed. (2) Facts occurring after the article has reached the exhibition premises shall not be an obstacle to the grant of protection and the application shall have priority over other applications made after such time. Action taken after such time shall not justify any claim to the right of continued use of the article. (3) If several similar articles reach the exhibition premises at the same time, the article which is the subject of the earliest application shall have priority. (4) The right of priority must be expressly claimed. The exhibition and the day when the article reached the exhibition premises shall be stated (declaration of priority). Section 95(2) shall apply mutatis mutandis. (5) The right of priority shall be evidenced by a description of the article exhibited, together with the drawings necessary for the understanding of the description or with other illustrations, and, where necessary, with models and samples, and also by a certificate issued by the exhibition management stating that the article exhibited is identical with that described and the time when the article was brought to the exhibition premises (evidence of priority). (6) If the declaration of priority is not made in time or if evidence of priority is not submitted on official demand within the period laid down, priority shall be determined in accordance with the time of filing. Preliminary Examination 99. (1) The preliminary examination of the application shall be made by a member of the Application Section. The examination shall not relate to the financial return to be expected from the invention. (2) If the application does not fulfil the requirements laid down, the applicant shall be invited to remedy the defects within a prescribed period. (3) Where the preliminary examination shows, if necessary after experts have been heard, that the invention is manifestly not patentable under Sections 1 to 3, the applicant shall be informed accordingly, if necessary after being invited to appear, and questioned by the examiner. He shall be informed of the reasons and invited to state his case within a prescribed period, which may be extended on request. There shall be no remedy against rejection of an application for extension of the period, but a statement of the case in reply to the preliminary decision may be submitted out of time within two weeks after the decision rejecting the application has been served. (4) If within the period laid down neither a statement of the case in reply to the preliminary decision, nor an application for an extension of the period, is submitted (subsections (2) and (3)), the application shall be deemed withdrawn. This legal consequence shall not take effect if, within four months of the expiry of the period (subsections (2) and (3)), the statement of the case in reply to the preliminary decision is made, if a fee equal to the application fee is paid and if proof (Section 168(3)) of payment of the fee is submitted. If proof of payment is not submitted in time, a period of one month, which may not be extended, shall be prescribed for the applicant. (5) The President of the Patent Office may issue guidelines on the principles governing the preliminary examination and on the procedure for such examination by the members of the Application Section. In particular, he may determine the time limits to be laid down by the Office. In this connection, he shall take account of the need for as rational and careful a preliminary examination as possible and for uniformity in the treatment of applications. Rejection of Applications 100. (1) Where the initial or amended application does not fufil the requirements laid down or where the subject of the application is ex facie not patentable within the meaning of Sections 1 to 3 (Section 99), the application shall be rejected. Where the conditions referred to apply only in part, only the corresponding part of the application shall be rejected. (2) Where the application is to be rejected for a reason which was not already communicated to the applicant during the preliminary examination, he shall be given an opportunity to state his case in regard to that reason within a prescribed period. Publication and Laying Open for Public Inspection 101. (1) Where the Patent Office considers that the application has been made in proper form and that the grant of a patent is not precluded, it shall order the application to be published (invitation for opposition). This shall be done in the form of a notice in the Patent Gazette giving the name and residence of the applicant and an appropriate brief designation of the subject of the invention (title) and the date of the application. (2) The legal effects of the patent (Section 22) shall begin to operate provisionally in the applicants favor on the day of issue of the Patent Gazette, which must be mentioned in the Gazette. (3) The application, together with all attachments, shall be laid open for public inspection in the Patent Office for a period of four months, dating from the day of publication, on all days on which the Patent Office is open for the filing of patent applications. Where appropriate, the Patent Office may order such laying open also at other places. An order shall be issued to determine the details of such inspection; in that connection, every endeavor shall be made to ensure adequate and orderly inspection safeguarding, at the same time, the rights of the applicant. The President shall, with due regard to the interests of the service and of the public interested in the inspection, issue regulations for visitors to the place of display. He may prohibit access, for a period not exceeding six months, by persons who infringe the regulations despite written warnings. (4) At the applicants request, publication and laying open shall be suspended for a period of three months from the date of the decision regarding publication. Publication and laying open may also be suspended at the applicants request for a period of one year from the date referred to. Opposition 102. (1) Opposition to the grant of a patent may be made within four months of the date of publication. Such opposition must reach the Patent Office not later than the last day of the period laid down. (2) Opposition shall be in writing and submitted in duplicate. It may be based only on the following grounds, which must be substantiated by definite facts: (i) that the subject of the application is not patentable (Sections 1 to 3); (ii) that the invention is, in whole or in part, already the subject of a patent or of an earlier application which is pending with a view to the grant of a patent; (iii) that the applicant has no right to the grant of a patent (Sections 4(1), 6 and 7); (iv) that the essence of the application which is opposed has been usurped from the descriptions, drawings, models, implements or installations of a third person or from a process used by him. (3) In the case referred to in subsection (2)(iii), only the person entitled to the grant of the patent, and in the case referred to in subsection (2)(iv), only the injured person, may oppose the grant of a patent. (4) A copy of the opposition shall be served on the applicant, who may submit his written reply within a period of one month, which may be extended on grounds meriting consideration. (5) Within the period prescribed for opposition (subsection (1)), a declaration of dependence (Section 4(3)) may be applied for by an earlier patentee. The provisions concerning opposition shall apply to such application. Procedure for Opposition 103. As soon as the applicants reply has been submitted, or the period for its submission has expired, the rapporteur in charge of the case shall issue instructions relating to any further correspondence that may be necessary, the hearing of the parties, the taking of evidence from the parties, the hearing of witnesses and, in general, any other measures required for the establishment of the facts. Assessment of the Evidence and Decision 104. After the preliminary procedure, the Patent Office (Application Section) shall freely assess the evidence in camera and take its decision on the grant of a patent. Costs 105. In its decision, the Patent Office (Application Section) shall have full discretion to decide the proportions and amount of the costs of the proceedings and of legal representation which are to be charged to the parties. Application for a Patent by Opponent 106. Where, in the cases provided for in Section 102(2) (iii) and (iv), opposition results in the withdrawal or rejection of an application, the opponent may, if he files an application within one month after the Patent Offices decision has become final, request that the date of the application withdrawn or refused be deemed to be the filing date of the new application. Grant of Patent Without Opposition Proceedings 107. Where no opposition (Section 102) has been filed in time against an application filed and published (Section 101) and the first annual fee (Section 166(6)) has been paid in time, the patent shall be deemed to have been granted on the expiry of the period prescribed for the filing of opposition (Section 102(1)). Appeals 108. (1) An applicant may appeal against a decision rejecting the application, in whole or in part, or returning it for amendment (Sections 100 and 104); an opponent may appeal against a decision granting a patent in its entirety, and both the applicant and the opponent may appeal against a decision granting partial patent rights. (2) In all other cases, the provisions of Sections 104 to 106 shall apply mutatis mutandis. Letters Patent Publication 109. When the patent has been finally granted, the Patent Office shall order the entry of the protected invention in the Patent Register, the publication of the grant in the Patent Gazette, the issue of Letters Patent (Patenturkunde) to the patentee, and the printing and publication of the patent description. Patents of the Federal Authorities 110. (1) If the invention is one filed by the federal authorities in the interests of the equipment of the armed forces or in some other federal interest or one concerning which the federal authorities have exercised their right of expropriation (Section 29), the patent shall, at the request of the federal authorities, be granted by a decision without any publication. In this case, there shall also be no laying open for public inspection or printing of the description and no entry of the subject of the invention in the public Patent Register. Publication and complete entry may, however, be subsequently requested by the federal authorities. (2) The duration of such unpublished patents shall date from the final decision granting the patent. (3) The first annual fee shall be payable before any decision regarding the grant of the patent is taken and within two months after the official notice asking for payment has been served. If no payment is made, the application shall be deemed withdrawn. (4) The second and subsequent annual fees shall be payable for each year in advance from the day of the final decision. Payment of these fees shall be governed by the rules which are otherwise applicable regarding payment of annual fees. Refusal 111. (1) Withdrawal of an application after publication (Section 101) or refusal of a patent shall also be published. (2) With the publication of withdrawal or refusal, the effects of provisional protection (Section 101(2)) shall be deemed not to have been operative. B. Challenge of a Patent Making an Application 112. (1) Proceedings for revocation or for a declaration of nullity or lack of title in relation to a patent shall be instituted only on application. The Patent Office may however, ex officio, continue any proceedings for revocation or nullity of a patent, where such application has been withdrawn. (2) Applicants not resident in Austria shall provide security for the costs of proceedings if the defendant so requires. Such request must be made within fourteen days of notification of the application, failing which security may no longer be demanded. (3) The Patent Office shall determine, at its discretion, the amount of security and set a time limit for the deposit thereof. If security is not furnished in time, the application shall be deemed withdrawn. Immediate Rejection 113. (1) Applications for revocation or for a declaration of nullity or lack of title which are manifestly without legal basis, which do not contain any particular request or which the applicant is not entitled to make (Sections 49 and 50) shall be rejected, without more, by the Nullity Section, which shall state the reasons for such rejection. (2) Similarly, applications shall without more be rejected, with a statement of reasons, where the Nullity Section is not competent to take a decision or where a case has been decided or is still pending. (3) Such decisions shall be final. Form and Contents of the Application 114. (1) The application shall contain a brief presentation of the case in dispute, and it shall set out the request that is being made and the evidence to be submitted. (2) Documentary evidence shall be enclosed in the original or in the form of certified copies. (3) Where an application is directed against a single patentee, it shall be submitted with its attachments, in duplicate, to the Patent Office. (4) Where an application is directed against several patentees, in addition to the copy intended for the Patent Office, a copy of the application and its attachments shall be supplied to each of the parties concerned. (5) An application shall be directed against only one patent, including its patents of addition. Procedure for Applications Challenging a Patent 115. (1) The chairman shall appoint as rapporteurs one technically qualified permanent member and one legally qualified permanent member. (2) The legally qualified rapporteur shall, if the application has been considered well-founded, send a copy, together with copies of the attachments, to the defendant inviting him to submit his reply in writing and in duplicate within a period of not less than one month, which may be extended for reasons meriting consideration. Preliminary Proceedings 116. (1) After the reply has been submitted or the period prescribed for it has expired, the legally qualified rapporteur shall, if necessary, arrange for preliminary proceedings (subsections (2) and (3)) to prepare for a hearing. The rapporteur shall seek agreement between themselves in the preliminary proceedings. Differences of opinion shall be decided by the chairman. (2) In the preliminary proceedings, the entire evidence in the dispute shall be prepared for the hearing so that it may, if possible, be conducted without interruption. In particular, the parties shall be heard or statements shall be obtained from them to ascertain the facts not in dispute, wherever they are not apparent from the evidence submitted. (3) The preliminary proceedings shall also include the taking of evidence, such as personal inspection, the hearing of non-local witnesses and time-consuming investigations by experts, if the taking of such evidence during the main hearing would considerably complicate or delay that hearing or cause disproportionately high costs or if it is essential to take the evidence immediately. (4) Whenever evidence is taken in the preliminary proceedings, the parties shall be summoned. Their failure to appear shall not prevent the evidence from being taken. (5) For the taking of evidence in preliminary proceedings, Section 120 shall apply. In the preliminary proceedings there shall be no oral examination of the parties. (6) In the preliminary proceedings, the legally qualified rapporteur shall have all the powers and duties of a chairman provided for in Sections 180 to 185 of the Code of Civil Procedure. (7) The chairman may order an extension of the preliminary proceedings with respect to certain clearly specified facts. (8) After the reply has been received or the period laid down for its submission has expired and also, if applicable, after the preliminary proceedings have been held, the rapporteur shall submit the files to the chairman with a written statement of the facts and of all points of fact and law relevant to the decision, as well as his conclusions (report). The legally qualified rapporteur shall report on legal questions and the technically qualified rapporteur, on technical questions. The chairman may request a rapporteur or other voting member to supplement the report. Termination of Proceedings Without a Hearing 117. If the patent expires (Section 46) during the proceedings before the Nullity Section, the proceedings shall be terminated, unless the applicant insists on completion of the proceedings and is able to substantiate a legal interest in such completion. The applicant shall be entitled to reimbursement of the costs of the proceedings and of representation, unless the defendant has not provoked the application by his conduct and the patent expired during the period prescribed for submission of the reply. The decision concerning the termination of the proceedings shall also settle the question of reimbursement of the costs (Section 122(1)). This decision shall be final. Public Notice of the Hearing 118. (1) The chairman shall give public notice of the hearing. The applicant shall receive the reply not later than the time when public notice was given. (2) The hearing may, for important reasons, be postponed to another date by the chairman on application or ex officio. (3) The parties or their representatives and the witnesses and experts to be questioned during the hearing shall be summoned to attend the hearing. (4) Absence of the parties or their representatives shall not prevent the hearing from being held and the decision from being rendered. (5) The board shall decide on any application for adjournment during the hearing. The Hearing 119. (1) The conduct and direction of the hearing shall be governed, mutatis mutandis, by Sections 171 to 203 of the Code of Civil Procedure. Section 73(3), last sentence, shall apply mutatis mutandis. (2) In addition to the cases set out in Section 172 of the Code of Civil Procedure, the public may be excluded on application for part or all of the hearing, if the presence of the public would endanger a major interest of the Confederation (Bund) or a trade secret of one of the parties or of a witness. (3) Members of the Patent Office and of the Supreme Patent and Trademark Chamber and officials of Group A of the Federal Ministry of Commerce, Trade and Industry shall have access to the hearing even where the public is excluded. Evidence and the Taking of Evidence 120. (1) Unless otherwise provided by this Law, Sections 266 to 383 of the Code of Civil Procedure shall apply mutatis mutandis to the taking of evidence. (2) Depositions of witnesses made before the Patent Office and sworn depositions of the parties made before the Patent Office shall be treated as equivalent to depositions made in court. (3) The above principles regarding the taking of evidence shall apply both to the preliminary proceedings and to the hearing. (4) With regard to witnesses and experts fees, the provisions of the Law on the Scale of Fees, 1965, shall apply. (5) Disciplinary penalties imposed pursuant to Sections 313, 326, 333 and 354 of the Code of Civil Procedure shall not exceed 1,000 schillings nor three-days detention in default of payment. While evidence is taken during a hearing, disciplinary penalties shall be imposed by the board; during the preliminary proceedings, they shall be imposed by the rapporteur (Section 116(1)). Section 84(1) and (3) shall apply. Deliberation and Vote 121. The Nullity Section shall deliberate and vote in camera. Costs 122. (1) In its decision, the Patent Office shall have full discretion to decide the proportions and amount of the costs of the proceedings and of representation which are to be charged to the parties. (2) Any claims under civil law shall be referred to the ordinary courts. (3) Anyone withdrawing an application shall reimburse the costs incurred by the defendant; the amount of such costs shall be determined by the Patent Office. Contents of the Decision 123. The document setting forth the decision shall contain: (i) the designation of the section and the names of the members who took part in the decision; (ii) the designation of the parties, their representatives and agents and the parties case; (iii) the decision; (iv) the facts of the case, consisting of a brief description of the facts resulting from the hearing, with special reference to the main pleas made by the parties; (v) the reasons for the decision; (vi) information as to the means of appeal. Announcement of the Decision 124. (1) The decision, together with the principal reasons for it, shall, if possible, be announced orally immediately after the end of the hearing. (2) At all events, the decision and a full statement of the reasons shall be served on the parties as soon as possible. Record 125. (1) A record shall be taken by a registrar of all evidence in the preliminary proceedings and in the hearing. The record shall be signed by the registrar and by the chairman or, in the case of preliminary proceedings, by the rapporteur in charge of taking the evidence. (2) In all other cases, Section 73(4) shall apply to the record. (3) In the case of a hearing in camera (Section 121), a separate record shall be taken, showing the results of the deliberation and the vote. Such record shall be signed by the chairman and the registrar. Assistance of the Courts 126. The courts shall provide their assistance to the Patent Office and the Supreme Patent and Trademark Chamber. Reopening of Proceedings 127. (1) Where a decision has wholly or partially revoked or annulled a patent, or declared a patentee to lack title, or where an application for such a decision has been rejected, proceedings which have been terminated may be reopened, on the application of a party, in the following cases: (i) where a document on which the decision is based has been forged or falsified; (ii) where the decision is based on a false deposition of a witness or expert or on a perjurious statement of the defendant made during the hearing; (iii) where the decision was obtained through fraud, amounting to a crime, on the part of the representative of the party or the defendant or his representative; (iv) where a member who has taken part in the decision or in an earlier decision on which the decision is based has, to the partys detriment, committed a violation of his official duties amounting to a crime; (v) where the decision was based on a finding made during criminal proceedings which has subsequently been upset in a judgment that has become final. (2) The application to reopen proceedings may, however, only be made by the parties to the dispute within one year after the decision to be annulled has become final and without prejudice to the rights acquired in the meantime by third parties. (3) In particular, persons who have, since the first decision, begun to work the invention or have made arrangements to work it shall acquire the rights of prior user (Section 23). (4) The reopening of proceedings shall be decided by the patent authority (Nullity Section of the Patent Office or Supreme Patent and Trademark Chamber) which took the decision challenged. Where the application to reopen proceedings is allowed by the Supreme Patent and Trademark Chamber, the Chamber shall at the same time decide whether proceedings are to be reopened before it or before the Nullity Section. (5) An application to reopen proceedings shall have no delaying effect on the execution of the decision. 128. If the Patent Office has mistakenly entered a patent in the Register as invalid, it shall, after ascertaining the mistake, order the entry to be removed and the removal to be published. Rights of third parties which have in the meantime been acquired in good faith shall be safeguarded in this case as in that of the reopening of proceedings. Restoration of Rights 129. (1) Any person who is prevented by an unforeseeable or unavoidable event from observing a time limit, and is thus prejudiced by the application of a rule relating to the protection of inventions, may apply for restoration of rights. (2) Restoration shall not be granted: (i) where the time limit for the application for restoration (Section 131(1)) and the time limit for appeal in relation to such application have not been observed; (ii) where the time limits for submission of a statement of the case (Section 99(4)), for opposition (Section 102(1)) and for the opponents appeal (Section 71(1)) are not observed; (iii) where the time limit for lodging a claim in the ordinary courts has not been observed. (3) In regard to the time limit for a declaration of priority, for an amendment to such declaration or for the submission of evidence of priority (Sections 95(2) and (3) and 98(4) and (6)), restoration shall be allowed only if the application, irrespective of the time limits prescribed for its submission in Section 131, reaches the Patent Office not later than the day before publication (Section 101). Where restoration is allowed, any decision to publish a patent (Section 101) or to refuse it (Section 100) shall become inoperative. 130. (1) A decision on the application shall be taken by the section before which the action omitted was to be taken. If an action before a technical Application Section was omitted, the legally qualified member assigned to the Section shall decide the application. (2) In matters within the responsibility of the Nullity Section of the Patent Office, decisions shall be taken by the chairman of the Section, from whom an appeal shall lie to the Supreme Patent and Trademark Chamber in accordance with the relevant provisions. For all other matters within the responsibility of the Patent Office, the other provisions in force shall apply to the manner in which the decision is taken and in which it may be contested. 131. (1) The application for restoration shall be filed within two months from the day on which the impediment ceased to exist and in any case not later than twelve months from the expiry of the time limit concerned. (2) The applicant shall state the facts on which his application is based and, unless they are well known to the authority, he shall produce evidence of them. The action omitted shall be taken at the time the application is made. (3) A copy of the application for restoration and its attachments shall be supplied to any adverse party in the case. 132. (1) The following procedural fees shall be payable when the application is made: (a) where payment of a fee or any action for which a separate fee is payable in addition to stamp duty has been omitted, the fee which was not paid or which is due when the action omitted is taken, in addition to any surcharge applicable; (b) in all other cases, the fee payable on filing. (2) Half the procedural fee shall be refunded if the application is withdrawn before a decision is taken. (3) The procedural fee (subsection (1)) and the fee outstanding (Section 131(2), second sentence) shall be paid at the rate applicable at the time the application for restoration is made. (4) Where a respite may be granted for payment of the fee which was not paid or which is payable in respect of the action omitted (subsection 1(a)) or where such payment may be cancelled, a respite may also be granted for payment of the procedural fee in respect of the application for restoration, or the latter fee may be cancelled. 133. (1) If the application or the action taken belatedly is defective, the applicant shall be asked to remedy the defects within a prescribed period before a decision is taken. (2) In the case of a protected right recorded in a public register, the application and the manner it has been dealt with shall be entered in the register. (3) Any acceptance of restoration shall be published in the Patent Gazette, to the extent that it relates to a protected right the extinction of which requires official publication. 134. (1) Before a decision is taken, any adverse party in the case shall be given an opportunity to make a submission within a prescribed period (Section 131(3)). (2) The applicant shall be ordered to pay the costs incurred by the adverse party in connection with the application (the cost of proceedings and of legal representation) irrespective of whether or not the application is granted. 135. With the acceptance of restoration, the legal consequences resulting from non-observance of the time limit shall cease to have effect. The authority shall issue appropriate instructions to give effect to the decision. 136. (1) Restoration of a right which has been refused, has lapsed, become extinct or otherwise become inoperative, shall not be binding on anyone in Austria who began to use the object of the right or made arrangements for such use (interim user) after the lapse of the right and before the day of official publication of restoration (Section 133(3)) or, in the case of Section 133(2), not later than the day when the application was entered in the register and in any other case not later than the day when the application reached the competent authority. Such person may exploit the object of the right for the needs of his own business in his own or anothers plant or workshops. Such right may be inherited or otherwise alienated only with the business. In all other cases, the provisions governing prior use shall apply. (2) In the case of a license contract made during the earlier period of validity of a right which has been restored, a licensee whose right is restricted by an interim user (subsection (1)) may request an appropriate reduction of the royalties stipulated. If, owing to the above restriction, he is no longer interested in the continuation of the contract, he may rescind it. Execution 137. (1) Final decisions of the Patent Office and of the Supreme Patent and Trademark Chamber shall give a right to execution within the meaning of Section 1 of the Regulations on Execution. (2) The Patent Office shall ex officio make the necessary entries and deletions in its registers to give effect to its own final decisions and to those of the Supreme Patent and Trademark Chamber. In the case of collective decisions of the Patent Office, the President shall issue the necessary instructions; in the case of decisions of the Supreme Patent and Trademark Chamber, this shall be done by the chairman of the Nullity Section. This provision shall also apply to reimbursement of the fees under Section 168(5). Appeals 138. (1) Any party aggrieved by a final decision of the Nullity Section of the Patent Office may appeal to the Supreme Patent and Trademark Chamber. Such appeal shall have a delaying effect. (2) There shall be no separate remedy against the decisions of the Nullity Section in the course of the preliminary proceedings or of the hearing. Such decisions may be challenged by appeal to the Supreme Patent and Trademark Chamber only if they have affected the final decision (Section 70). (3) The appeal shall be lodged in writing with the Patent Office within two months after the decision has been served. It shall contain a request for review with a statement of reasons. (4) The appeal and its attachments shall be submitted in duplicate. Where the appeal is directed against several adverse parties, in addition to the copy intended for the Supreme Patent and Trademark Chamber, a copy of the appeal and its attachments shall be provided for each of the adverse parties. 139. (1) For all matters within the responsibility of the Patent Office concerning appeals to the Supreme Patent and Trademark Chamber, the Nullity Section shall be competent. Its decisions, which shall be taken in camera, shall be final. (2) In the case of appeals lodged in time and containing a substantiated request for review but having formal defects, the Nullity Section shall prescribe a time limit for amendment. If the defects are remedied within the period prescribed, the appeal shall be considered lodged in due form. (3) Appeals lodged out of time or those not containing a substantiated request for review or not amended within the period prescribed (subsection (2)) shall be dismissed by the Nullity Section. (4) In all other cases the Nullity Section shall submit the appeal together with the files to the Supreme Patent and Trademark Chamber. Proceedings before the Supreme Patent and Trademark Chamber 140. (1) Unless otherwise provided hereunder, Sections 113 to 127 and 129 to 136 shall apply mutatis mutandis to proceedings before the Supreme Patent and Trademark Chamber. (2) The Supreme Patent and Trademark Chamber shall not hear further evidence. (3) If the Supreme Patent and Trademark Chamber finds that the Nullity Section has infringed procedural provisions thereby preventing a decision according to law or if the Chamber considers further evidence essential, it shall refer the case back to the Nullity Section. 141. If the appeal has formal defects which have not been raised in accordance with Section 139(2), the rapporteur shall set the appellant a time limit for remedying such defects. 142. (1) The Supreme Patent and Trademark Chamber shall render its decision without preliminary proceedings and without a hearing in the following cases: (i) where the formal defects of the appeal have not been remedied within the period prescribed under Section 141; (ii) where the appellant is not entitled to lodge the appeal; (iii) where the appeal ought to have been dismissed by the Nullity Section (Section 139(3)); (iv) where the appeal is against decisions under Sections 113 and 139(3); (v) where the appeal is against a decision regarding an application for restoration (Section 130(2)); (vi) where the appeal is solely against a decision concerning an application under Section 146; (vii) where the appeal is solely against a decision regarding reimbursement of costs (Section 122); (viii) where the appeal is solely based on the claim that an infringement of procedural provisions has prevented a decision according to law or where the documents in the file show that the case must be referred back to the Nullity Section because of the infringement of such procedural provisions. (2) Where no final decision regarding an appeal is to be rendered, a decision may be taken also internally without a meeting of the Chamber, if the president regards a meeting as unnecessary because of the simplicity of the case. If in these circumstances a member of the Supreme Patent and Trademark Chamber expresses an opinion differing from the rapporteurs proposal, a meeting shall in any event be held. 143. (1) If a party waives his claim to a hearing and if the adverse party does not insist on a hearing within the period prescribed by the rapporteur and if the president does not consider a hearing essential, the case shall be decided in camera. (2) After the case has been called, the hearing shall begin with the reading of the rapporteurs written report. The report shall contain a statement of the principal facts, the content of the appeal and the reply to the appeal; it shall express no opinion as to the decision to be made. (3) The appellant and then the adverse party shall at this point be heard. The adverse party shall in any event be entitled to the last word. (4) The decision shall be rendered only by those members of the board who took part in the hearing. If there is a change in the membership of the board before a decision is rendered, there shall be a rehearing before the reconstituted board. 144. The appeal may be withdrawn before the end of the hearing. If the appeal is withdrawn before the hearing, the adverse party shall, if necessary, be allowed a period in which to substantiate a claim to reimbursement of his costs. If no costs are recorded, the rapporteur shall terminate the proceedings. In all other cases, decisions regarding the close of proceedings and the claim to reimbursement of costs, if any, shall be taken in camera. 145. (1) The Supreme Patent and Trademark Chamber shall render its decision and draw up its statement of reasons by an absolute majority. The chairman shall preside over the deliberations and the vote. He shall take part in the vote like any other member of the board. After the statement of the facts and conclusions by the rapporteur and joint rapporteurs (if any), the chairman shall call upon the voting members to speak in the order in which they have asked for the floor. At the end of the deliberation, he shall put the proposals made to the vote. The chairman shall determine the questions and the order in which they are put to the vote. A member may not refuse to participate in the vote even where he was in a minority over a preliminary question. Before the end of the meeting, any voting member may change his vote. (2) The result of the vote shall be recorded by the registrar and shall be signed by the registrar and the chairman. Any voting member may have the reasons for his opinion included in the record of the vote if his opinion was not incorporated in the decision. (3) The rapporteur shall draw up the decision to be issued on the basis of the decisions taken. If his views were those of a minority, the chairman may assign the preparation of the text or parts thereof to another member of the board. The chairman shall check the decision prepared to ensure its conformity with decisions taken. Restriction of Applications 146. (1) Following an application by the patentee during a dispute concerning nullity, the Nullity Section or the Supreme Patent and Trademark Chamber shall, where justified by the results of the proceedings, order the following entries to be made in the Patent Register: (a) that a particular fact does not preclude patentability (Sections 1 to 3); (b) that the invention is not identical with the subject of an earlier patent or privilege. (2) An entry under subsection (1) shall be made in the Patent Register after the decision has become final and shall have the effect that any fresh application based on the same facts and evidence shall not be admissible, even where made by third parties. IV. Infringement of Patents and Obligation to Provide Information Infringement 147. Any person who without the patentees consent (a) industrially produces the subject of the protected invention, puts it on the market, offers it for sale or works it (Section 22), or (b) works a protected invention which, at the time of filing, he had already begun in good faith to use in Austria or had made the necessary arrangements to use, in any other way than for the needs of his own business in his plant or workshops or in those of others (Section 23), shall commit an infringement. 148. In the case of infringement, the injured party shall be entitled to an injunction restraining further infringement, the destruction of the infringing products, the transformation of the means of infringement, damages or the surrender by the infringer of the enrichment. Intentional Infringement 149. (1) Where infringement is committed intentionally, it shall constitute an offense liable to a fine not exceeding 225,000 schillings or to detention for a term not less than three months and not more than one year, or to such detention combined with a fine not exceeding 225,000 schillings. Punishment shall be imposed by the criminal courts of first instance. (2) Prosecution shall be instituted only on the formal complaint of the injured party as prosecutor (Privatankläger). (3) Prosecution at the same time, under more severe provisions of the Criminal Code, particularly those relating to fraud, shall not be precluded. (4) The fines imposed shall be made over to the Confederation (Bund). Importance of Patent Description in Infringement Cases 150. In any determination of infringement of a patent, the description of the invention (Section 91) on which the patent is based shall be the sole criterion. Any subsequent statement whatsoever of the subject of the patent that is not contained in the description shall be irrelevant. Confiscation and Destruction of Infringing Articles 151. (1) On a conviction for the offense provided for in Section 149, the confiscation of the infringing articles in the convicted persons possession shall be ordered by the court at the request of the injured party, unless security is furnished for the withdrawal of such articles from use until the expiry of the patent. The court shall also order the implements, machinery, and other means serving solely or mainly for the infringement to be made unserviceable for that purpose at the cost of the person convicted, unless the security referred to is furnished. (2) If the patented components cannot be separated from the infringing article without destroying it, confiscation shall extend to the body of the article to which the patented component is firmly attached. (3) In the absence of an agreement between the person convicted and the injured party under which the articles are handed over in part payment of any damages to which the injured party may be entitled, or where the injured party is not prepared to take over the articles in part payment of any damages due to him, at the value to be assessed by the court, the articles confiscated shall be stripped of the features infringing the patent or, if necessary, destroyed. (4) Execution of such orders shall be at the expense of the guilty party, where necessary in consultation with experts. 152. (1) Where prosecution does not lead to conviction but the court finds that an infringement has in fact been committed, it shall, at the request of the injured party, order in its judgment of acquittal the infringing articles to be confiscated and the means of infringement to be made unserviceable in accordance with Section 151. (2) Such order shall be executed where necessary in consultation with experts. (3) The cost of execution shall be borne equally by both parties. Infringing Articles Exempt from Confiscation 153. (1) Infringing articles (Sections 151 and 152) manufactured in fulfilment of a contract with the military authorities and means prepared for their manufacture may not be confiscated, made unserviceable or made the subject of a precautionary measure to that effect (Section 156) if, within a period prescribed by the court, the military authorities prove that they have applied for expropriation (Section 29). (2) The damage caused by the infringing articles to the person whose rights have been expropriated shall be taken into account when compensation for the expropriation is assessed. Damages 154. (1) On a conviction for the offense provided for in Section 149, the criminal court shall, at the request of the injured party, in addition to passing sentence award damages, to the extent that the results of the criminal proceedings enable a reliable assessment of civil-law claims. Damages shall not only cover compensation for actual loss and for loss of earnings; but the court shall also, after freely weighing all relevant circumstances, award an appropriate amount to the injured party in respect of moral damage or other personal disadvantage sustained. Both parties may appeal against the award of damages. (2) An award of damages shall not preclude the submission of a larger claim before a civil court. Publication of Conviction 155. In the case of a conviction, the injured party shall, at his request, be authorized to publish the conviction of the guilty party and, if in the opinion of the court a legitimate interest of the injured party so requires, also the reasons for the decision, in one or more organs of the press at the cost of the party sentenced. The maximum amount of the cost, the other conditions for publication and the time limit for it shall be determined in the decision with due regard to the submissions of the injured party. Precautionary Measures 156. (1) If there is sufficient reason to suspect a person of the offense of infringement and if infringement of a patent can be assumed on the basis of an inspection by the court or expert opinion, appropriate measures shall be taken, at the request of the injured party, to ensure by seizure, safe-keeping or any other means that infringing articles and means of infringement are not withheld from subsequent confiscation or transformation under Sections 151 and 152, or to prevent a continuation or repetition of the action liable to prosecution. Such measures may be taken at any stage of the proceedings and, in the event of imminent danger, even before proceedings have begun. (2) The criminal court shall immediately take a decision on such request. The court may, if it sees fit, authorize the seizure or safekeeping or any other measures requested either unconditionally or against security to be furnished by the injured party. The court may at any time revoke such precautionary measures and shall do so if the accused furnishes appropriate security. (3) If precautionary measures have been approved before institution of the prosecution, the applicant for such measures shall initiate prosecution within eight days after the measures have been adopted, failing which the precautionary measures shall be revoked at the request of the person accused. Provisional Patent Protection 157. (1) Criminal proceedings may be instituted also in the case of a patent not yet granted for an invention which is being used without authorization, where the legal effects of the patent have in the meantime begun to operate within the meaning of Section 101. (2) Judgment may however not be rendered and the precautionary measures provided for in Section 156 may not be ordered before the grant of the patent. Preliminary Questions 158. (1) Where, in the course of criminal proceedings, it is found that the decision depends on a preliminary question as to the validity or effectiveness of the patent infringed, the criminal court shall be empowered to determine also this preliminary question. Where, however, the preliminary question was raised before the Patent Office during, or prior to, the proceedings by an adequately substantiated application of one of the parties, the criminal court may postpone judgment until the preliminary question has been finally determined; the decision shall then form the basis of the judgment. (2) Where, in infringement proceedings, it is for the criminal court to determine a preliminary question, the court may arrange for technically qualified members of the Patent Office to be examined as experts in the main hearing. Members of the Patent Office who have already taken part in a decision regarding the validity or effectiveness of the patent infringed shall not be examined as experts. (3) The courts decision regarding the preliminary question shall be effective only in relation to the criminal case concerned. (4) A certified copy of judgments in which a preliminary question is determined shall be communicated by the courts to the Patent Office. Jurisdiction for Civil Actions 159. The commercial court at Vienna shall have jurisdiction for actions brought under Sections 29(4), 49(4), 136(2) and 148. A division of the court shall determine such cases irrespective of the amount involved. Civil Actions 160. (1) Sections 150, 151, 153 and 156 to 158 shall apply mutatis mutandis to infringement actions brought in the civil courts (Section 148). (2) The injured party shall be entitled to damages under Section 154 from any person guilty of infringement. (3) Even in the absence of guilt on the part of the defendant, the injured party shall have a right to the surrender of the enrichment (Section 148). Claims for the surrender of the enrichment shall be subject mutatis mutandis to the limitation period provided under Section 1489 of the Civil Code. 161. Where claims for damages are submitted to a civil court on the basis of this Law, the court shall have full discretion, after considering all circumstances, to determine the existence and extent of damage and the existence and extent of the enrichment. Infringement of a Patented Process 162. In the case of a civil action concerning infringement of an invention consisting of a process for the manufacture of some new material, any material with the same properties shall be deemed to have been manufactured by the patented process, until proved otherwise. Application for a Declaration 163. (1) Anyone may apply for a declaration certifying that products which he desires to manufacture, put on the market or use or a process which he desires to apply are not covered in whole or in part by a patent designated by him. (2) Such application for a declaration shall be made in writing and in duplicate to the Patent Office. The application must be accompanied by an accurate and clear description, and where necessary, by a drawing of the product or process concerned in four copies. (3) Every application for a declaration shall concern only one patent, including its patents of addition. Proceedings initiated regarding such application may not be continued if the patentee proves that an action for infringement, relating to the same subject, brought by him against the applicant before the application for a declaration was made is still pending before the courts. (4) Proceedings regarding applications for a declaration shall be governed by the rules for the nullity procedure. The cost of the dispute concerning a declaration shall be borne by the applicant if the patentee has not provoked the application by his conduct and has recognized the validity of the claim within the period set for his reply. (5) A copy of the description and drawing which the applicant has submitted of the product or process concerned shall be attached to the declaration. (6) A final declaration that a particular product or process is not covered by a particular patent shall preclude any legal action by the patentee against the applicant for a declaration, in relation to the infringement of the patented product or process designated in the declaration. Liability for Unjustified Precautionary Measures 164. (1) Any person who has obtained from the courts precautionary measures which are subsequently discovered to be unjustified shall remedy any damage thereby sustained by third parties through no fault on their part. (2) Where such claims are made before the end of the infringement proceedings, they shall be determined at the same time as the principal dispute by the civil court. For the assessment of the compensation, Section 273 of the Code of Civil Procedure shall be taken into account. Obligation to Provide Information regarding Patent Protection 165. Any person who describes products in a manner likely to give the impression that they enjoy patent protection shall on request provide information regarding the patent on which the description is based. V. Fees Application Fee and Annual Fees 166. (1) For every patent and for every patent of addition, an application fee of 250 schillings shall be payable on filing. (2) In addition, an annual fee shall be payable for each patent in proportion to the duration of protection requested. (3) The annual fee shall be Schillings For the first year 320 in addition to a fee of 150 schillings for the sixth and every subsequent page of the description displayed and of 150 schillings for the third and every subsequent sheet of the drawings attached to that description, For the second year 320 For the third year 350 For the fourth year 390 For the fifth year 450 For the sixth year 550 For the seventh year 700 For the eighth year 900 For the ninth year 1,100 For the tenth year 1,400 For the eleventh year 1,800 For the twelfth year 2,300 For the thirteenth year 2,800 For the fourteenth year 3,800 For the fifteenth year 4,900 For the sixteenth year 6,000 For the seventeenth year 8,000 for the eighteenth year 10,000 (4) For patents of addition which are not declared independent patents (Section 28), there shall be charged, in addition to the application fee, a single annual fee for the entire period of validity; this fee shall be 800 schillings in addition to 150 schillings for the sixth and every subsequent page of the description displayed and of 150 schillings for the third and every subsequent sheet of the drawings attached to that description. (5) The annual fees shall be payable from year to year in advance, from the day when the application was published in the Patent Gazette (Section 101). Where, however, the patent is granted with legal effect only after the beginning of the second or any subsequent year, counted from the day when the application was published in the Patent Gazette, the annual fees for these years shall be payable on the day after the patentee has been notified of the patents entry in the Patent Register. (6) The first annual fee shall be paid within four months from the publication of the application in the Patent Gazette (Section 101), failing which the application shall be deemed withdrawn. (7) The second and subsequent annual fees may be paid three months before the due date. They shall be paid not later than six months after the due date. Whenever payment is made after the due date, a surcharge of 20 percent of the annual fee shall also be paid. There shall be no surcharge for annual fees which do not become due until notice has been given of the entry of the patent in the Patent Register (subsection (5)). (8) Payment of annual fees may be made by any person interested in the patent. (9) The application fee shall not be refunded. Half of the first annual fee shall be refunded if the application is withdrawn or rejected after publication in the Patent Gazette (Section 101). Any other annual fees which have been paid but have not yet become due shall be refunded if the patent is surrendered, revoked or declared null and void. (10) The number of pages of the description displayed and the number of sheets of drawings attached to the description in accordance with subsections (3) and (4) shall be calculated as follows: (i) up to forty lines shall be counted as a page; (ii) representations of formulae shall be counted as full lines in accordance with the area they occupy on the page; (iii) incomplete pages shall be counted as full pages; (iv) an area with maximum dimensions of 34 cm by 22 cm (13¼ × 8½ inches) shall be counted as a sheet. Fee for Amendments of the Description 167. A fee of 150 schillings shall be payable in respect of any subsequent amendment of the description to be made at the request of the applicant or of his successor in title within the meaning of Section 91. Procedural Fees 168. (1) The following procedural fees shall be payable: Schillings (i) for the filing of opposition (Section 102) 250 (ii) for the filing of an appeal under Section 70 where there is no adverse party 300 otherwise (Section 108) three times the above fee; (iii) for any application to be dealt with by the Nullity Section 1,000 (iv) for any appeal under Section 138 1,500 (v) (a) for an application for entry of the right of prior user (Section 23(4)), an application for entry of a transfer (Section 33(2) and (3)), in the case of transfer inter vivos, an application for entry of a license or the transfer of a license (Sections 35 to 37) or for any of the entries in the Patent Register provided for in Section 43 250 (b) for an application for an entry relating to a dispute in the Patent Register (Section 45) or any entry under Section 146 100 (c) for an application for an extension of the time limit set for the submission of a case in reply to the preliminary decision (Section 99(2) and (3)) 50 (d) for an application for suspension of publication and laying open of a patent application (Section 101(4)), where the duration of suspension requested exceeds three months, the fee shall be that of the application fee for every three months of such period, periods of less than three months being counted as full three months. (2) The fees provided for in subsection (1)(ii) and (v) shall be paid for every patent which is the subject of the appeal or application; the fees provided for in subsection (1)(iii) and (iv) shall be paid also for every patent of addition covered by the application (Sections 114(5) and 163(3)). (3) Payment of the fees due to the Patent Office, with the exception of annual fees (Section 166(3) and (4)) shall be proved by submission of the original receipt for payment or remittance, or if necessary by duplicate receipts. (4) If the proof of payment is not submitted within the period prescribed, the application shall be refused; Sections 99(4) and 171(1) shall not be affected. (5) The fee for an appeal (subsection (1)(ii)) shall be refunded if the appeal is essentially successful and if the proceedings have been conducted without an adverse party. Half of the fees provided for in subsection (1)(iii) and (iv) shall be refunded if the application to be dealt with by the Nullity Section or the appeal is dismissed or the procedure is terminated without any hearing. Half of the fees provided for in subsection (1)(v) shall be refunded if the application is withdrawn before a decision is taken. If, in the case of subsection (1)(v)(d), suspension is not granted for the entire duration applied for and if an amount less than that paid is due for the duration approved, the excess amount shall be refunded. (6) Special fees may be provided for by order, concerning the issue of official documents, publication, official confirmation and certification, extracts from the Register and written information concerning official documents. In the determination of the fees for each particular case, which shall not exceed 100 schillings, account shall be taken of the labor and material required for the official service involved. To the extent to which fees depend on the number of pages or sheets, Section 166(10) shall apply. (7) Where fees are laid down by an order issued under subsection (6), official documents and documents in confirmation or certification may be prepared and issued only after payment of the relevant fee. Applications for official publication and applications which may be accepted only after official publication under this Law shall be refused if the relevant fees are not paid in time. Subsection (3) shall apply mutatis mutandis. Method of Payment of Fees 169. The method of payment of the fees charged within the jurisdiction of the Patent Office shall be laid down by order, which shall specify when any payment of fees to the Patent Office is deemed to have been made in time. The order shall be so framed as to take into account, on the one hand, methods of payment available other than payment in cash and, on the other hand, the need for simple and economical verification by the Patent Office. Stamp Duty 170. Letters Patent issued under this Law shall be exempt from stamp duty. In all other cases, the provisions regarding stamp duty and direct charges shall remain unaffected. Exemption from Payment of Fees 171. (1) The President of the Patent Office shall grant a respite for payment of the application fee and of the annual fee for the first and the second years, or of some of these fees, up to the due date for the second and third annual fees, if the applicant proves that he is without means and the grant of the patent applied for does not appear improbable. The fees in question shall be cancelled if the patent expires by the end of the second year of the period of protection. If the application fee for which a respite had been granted is not paid, the patent shall expire, according to the length of the respite granted, at the end of the first or the second year of the period of protection. These provisions shall apply also to the application fee and the annual fees for patents of addition. The period to be taken into consideration begins on the day of publication of the application for a patent of addition in the Patent Gazette (Section 101). (2) The President of the Patent Office shall cancel the fees provided for in Sections 167 and 168(1)(i) to (iv) and (v)(c) and (d), if the applicant proves that he is without means and if the application or the remedy for which the fee would be payable are not clearly frivolous or without prospect of success. (3) When deciding whether the applicant is without means, the President shall take account of the applicants present or prospective income, his capital and the charges borne by the capital and the number of persons that he is maintaining. (4) Where a respite has been granted for payment of a fee under subsection (1), payment of the fees referred to in subsection (2) which would be payable by the applicant during the procedure concerning his application shall be deemed to have been cancelled. (5) The privilege accorded under subsection (1) shall not pass to the beneficiarys successor in title. Where there are several patent applicants or several parties to a dispute, the respite may be granted only if the requirements are fulfilled by all parties concerned. 172. The privilege under Section 171 may be granted also to citizens of foreign States which, according to a notice to be published by the President of the Patent Office in the Patent Gazette, grant essentially the same privilege to Austrian citizens. Where such a State grants the privilege to Austrian citizens to a smaller extent than that provided for in Section 171, a corresponding restriction may be ordered for citizens of such State. VI. Implementation 173. The following shall be responsible for the implementation of this Law: (i) in the case of Sections 3(2) and 51, the Federal Government, (ii) in the case of Sections 18, 29(4) (in so far as it relates to the determination of the request for compensation), 42, 49(4) and 147 to 162, and also Sections 163(6), 164 and 165, the Federal Minister of Justice, (iii) in the case of Section 24(2), the Federal Minister of Finance in agreement with the Federal Minister of Commerce, Trade and Industry and the Federal Minister of National Defense, (iv) in the case of Section 74(2) and (3) (in so far as it relates to the appointment of judges) and also in the case of Section 126, the Federal Minister of Commerce, Trade and Industry and the Federal Minister of Justice, (v) in the case of Section 85, the Federal Minister of Commerce, Trade and Industry and the Federal Minister of Transport and Nationalized Enterprises, (vi) in the case of Sections 56 and 170, the Federal Minister of Commerce, Trade and Industry and the Federal Minister of Finance, (vii) in the case of Section 168(6), the Federal Minister of Commerce, Trade and Industry in agreement with the Federal Minister of Finance, (viii) in the case of all other provisions of this Law, the Federal Minister of Commerce, Trade and Industry.

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