Patent litigation in Austria: how lawyers can help

Typical patent-related challenges where specialised lawyers are needed involve alleged infringements by a third party of the patents a business holds or passive litigation initiated by a third-party patentee. Some businesses must routinely navigate through such patent disputes.

But many other businesses encounter patents and infringement issues only sporadically. For these, the realm of patent litigation is less familiar, and its complexities can be daunting. The role of specialised patent lawyers is to guide businesses through the intricacies of patent law, ensuring they understand the legal landscape and the implications of their case.

What distinguishes a patent attorney from a specialised lawyer?

In Austrian patent litigation, the roles of lawyers (attorneys at law) and patent attorneys are distinct yet complementary. Parties involved in patent infringement matters before Austrian courts must be represented by an attorney at law. They are regularly supported by a patent attorney, a technician familiar with the relevant technical field and trained in legal aspects. This collaboration leverages the legal and procedural expertise of the lawyer and the technical knowledge of the patent attorney. Therefore, a patent attorney utilises technical expertise to supplement or enhance the legal arguments and the course of the procedure laid out by the lawyer. The lawyer usually has pertinent legal expertise in patent and litigation law, but usually lacks the technical training of a patent attorney to allow deep dives into the complex technical issues at stake. 

When to consult a lawyer, a patent attorney or both?

While the domains of both professions overlap somewhat, an attorney at law would be best suited if procedural questions are involved. Is Austria the appropriate venue for an envisaged international litigation strategy? Should a request for preliminary injunction be made and what are the associated risks? When and how should a motion or brief be prepared or filed before an Austrian court? What kind of evidence is needed? Should separate proceedings for securing of evidence be commenced? What is the timing to be expected in Austrian infringement proceedings? These are some of the questions an attorney at law can answer.

Once these procedural issues have been addressed, a specialised lawyer should be consulted. There are then two possible approaches. As the lawyer usually would need at least a superficial understanding of the underlying technical aspects, it may be reasonable to have them provide their perspective on questions of infringement and validity to get a rough idea of the overall chances of success in Austrian proceedings. This can be an efficient way of obtaining a first impression of the case that a patent attorney later builds upon when analysing the technical aspects.

In doing so, the lawyer will usually carefully document the understanding of the technical facts and any assumptions underlying the analysis for the client (who often will have respective technical expertise in-house) to be able to verify the viability of the legal arguments and conclusions drawn. This approach may be particularly valuable when a decision on whether to proceed with litigation or pre-litigation efforts in Austria still needs to be made.

An alternative to this approach would be to involve a patent attorney trained in the pertinent technical field from the very beginning. This results in a more robust analysis of the technical questions by a patent attorney in close cooperation with an attorney at law at an early stage. If litigation clearly will be or has been commenced in Austria such that no preliminary analysis is needed to decide whether to proceed, this approach may be preferrable.

author: Alexander Pabst