Applying for a preliminary injunction
Section 151b of the Austrian Patent Act contains a provision providing the possibility to apply for a preliminary injunction (PI) to secure a claim, but also to secure evidence. PIs can be applied for and issued for claims for injunctive relief, removal, reasonable compensation, damages and surrender of profits. A particular urgency is not a prerequisite for issuing such an injunction (Kodek in Angst/Oberhammer, EO3§ 381 EO para 18 (as of 1 July 2015, rdb.at)). This is expressly stated in the Austrian Patent Act, according to which the requirements of the Austrian Enforcement Act – which refers to urgency – do not have to be met with regard to such preliminary injunctions (Burgstaller in Burgstaller, Österreichisches Patentrecht2 § 151 b PatG, p.262 (as of 1 July 2021)).
A preliminary injunction can be issued without hearing the opposing party (ex parte) if it would otherwise be likely that the applicant would suffer irreparable damage or there would be a risk of evidence being destroyed (Burgstaller). Ex parte PIs are, however, not very common in patent proceedings in Austria. Usually, the court decides inter partes in patent PI proceedings.
Austrian law does not provide for an opportunity to submit protective writs.
Upon request, the court may order the applicant to provide a security deposit, and the PI will only become effective if such a deposit is provided. In many cases, however, PIs are rendered without an order to provide a security deposit.
It is not necessary to send a warning letter before filing an application for a PI.
Evidence required
Proof of the facts substantiating the infringement is sufficient in provisional proceedings. The grant of the patent constitutes prima facie evidence of the validity of the patent right.
The objection of invalidity is generally admissible in provisional proceedings, but the court only has to examine the validity of the patent if proof is offered by the defendant and if such an examination is possible with the means of the provisional proceedings, ie if it is not too complex.
Factors that the courts take into consideration
The court (in the first instance in Austria, this is always the Commercial Court of Vienna) considers the merits of the substantive case. This has its limits, however, as the court is not obliged to assess complex and lengthy means of evidence in PI proceedings.
Usually, there is no trial or mini-trial on the merits, and the court decides solely on the basis of the written submissions and the evidence provided with such submissions. Only in cases where the courts deem it necessary to get a direct impression of proof, eg witnesses to be heard, may there be a mini-trial.
Regarding the standard of proof in PI proceedings, if it is more likely than not that the patent is infringed and valid (if the defendant objects to its validity, as mentioned, the court would consider the patent prima facie valid due to its grant), then a PI shall be granted.
In relation to infringement, the court considers all the proof provided by the parties to be assessed without delay. In PI proceedings, no court experts will be appointed. Direct and indirect infringement, as well as literal infringement and equivalent infringement, will be assessed if argued by the applicant.
The applicant does not need to meet any special requirements regarding validity. As mentioned, the patent's grant provides for prima facie evidence of its validity.
If validity is contested, the court makes up its own mind, and although foreign decisions or preliminary opinions of the European Patent Office (EPO) may be helpful to support the arguments and may be considered by the court, the court is not bound by such decisions or opinions.
As the panel of judges consists (in first instance) of two legal judges and one technical judge, the court will usually deal with the technical issues in the same depth as the legal issues. In Austria, commercial factors and proportionality factors do not play a role in PI proceedings. The court only looks at infringement and validity.
It should be noted that the Austrian Supreme Court has ruled that no factual situation which cannot be reversed afterwards can result from a PI, such as an order to destroy products (OGH 4 Ob 134/06v – ecolex 2007, 266; OGH 17.11.2009, 17 Ob 13/09z).
Obtaining a PI
In inter partes PI proceedings – which form the vast majority of PI patent cases – it usually takes between two and six months for a PI decision to be rendered. In ex parte PI proceedings, it may even be possible to obtain a PI within a few days.
Enforcement
The PI is enforceable upon service on the defendant. Enforcement measures are applied by the District Court where the defendant has its seat of business. Usually, the court orders financial penalties if the defendant does not comply with a PI. They may start very low – maybe even with a few hundred Euros – but the maximum penalty in case of continued infringements would be EUR100,000 per day.
Appeal
There are three levels of courts in PI proceedings:
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Commercial Court of Vienna
- Court of Appeal
- Supreme Court
The two lower instances can decide on legal and factual questions, whereas the Supreme Court only deals with legal questions.
If the second-instance court does not consider the case as referring to questions of severe legal importance and therefore does not allow a regular appeal to the Supreme Court, only an 'extraordinary' appeal to the Supreme Court is possible where the applicant has to argue and convince the Supreme Court why there is such a question of severe legal importance at stake, as otherwise the Supreme Court will not deal with the case.
In appeal proceedings, no new facts and evidence can be introduced into proceedings; only the facts and evidence provided in the first instance are considered.
Appeal proceedings in the second and third instance courts are almost always written proceedings. The same as in the first instance court, there are, besides the legal judges, technical judges on the panel (one technical judge in the second instance court and two in the Supreme Court).
An appeal usually has no suspensive effect, but the first instance court may provide such an effect if applied for. However, this is rarely granted.
It can be expected that each instance of appeal proceedings takes around three to eight months before a decision is rendered.
If the PI is later found to be unjustified and cancelled, the counterparty can seek damages. The PI applicant would then be obliged to compensate the defendant for all damages which resulted from the unjustified PI.
