OGH: "lack of novelty" and "inventive step" (PatG)

May 12, 2021 Benn-Ibler Rechtsanwälte

In the Austrian Patent Act (Patentgesetz, PatG), opposition proceedings are characterised by the principle of disposition. In principle, unasserted grounds for opposition are not to be taken into account. However, a ground for opposition need not be cited if it arises explicitly from the context.

In the present case, the defendant is the proprietor of a patent. The applicant opposed this patent on the grounds that the subject-matter of the application was neither new nor inventive compared to the prior art.

The Technical Division of the Patent Office (Patentamt) granted the opposition in part, revoked the patent to the extent of some claims and rejected the opposition in all other respects. The plaintiff contested this decision and limited her legal arguments to the lack of novelty. No separate substantiation of the objection of lack of inventive step was submitted.

The Court of Appeal upheld the applicant's appeal and ordered the Technical Division of the Patent Office to make a new decision. The defendant appealed against this decision.

The Austrian Supreme Court considered the separate substantiation of the objection of lack of inventive step to be dispensable, as the lack of inventive step had already been objected to in the opposition. Furthermore, the court considered its decision-making power to be not only encompassed by the content of the substantive request, but also by the factual submission substantiating the request. A decision based on a legal ground other than the one expressly mentioned is thus possible.

The Supreme Court confirmed the legal opinion of the Court of Appeal that there was a close factual connection between lack of novelty and inventive step and did not uphold the appeal. The lack of novelty implied the absence of inventive step. In the case of lack of novelty, the inventive step was therefore no longer relevant. Moreover, the lack of inventive step had already been objected to in the opposition.

OGH 4 Ob 167/20t (18.02.2021)