OGH on the "making available" of an invention (Sec. 3 (1) PatG)
The Austrian Supreme Court (Oberster Gerichtshof, OGH) gave its opinion on the question of "making available" within the meaning of Section 3 (1) Patent Act (Patentgesetz, PatG). It saw reason to do so because there is no recent case law on the subject.
The defendant in the present proceedings was the proprietor of a patent for a method of machining workpieces together with a processing machine. The patent was applied for in 2015. However, such a machine was already installed in 2009 in the production hall of a company where there was an awareness of the existence of trade secrets. Guided tours were also given there for school classes and business partners. The visitors had direct access to the machine.
The plaintiff sought a declaration of invalidity of the patent in its entirety on the grounds that the invention lacked novelty.
According to Section 3(1), an invention is considered new "if it does not constitute prior art. Prior art is everything that has been made available to the public before the priority date of the application (...)".
The court of first instance declared the patent to be partially null and void, the court of appeal declared it to be completely null and void.
The OGH had to answer whether the direct access to the machine by visitors had made the patent available to the public and whether the invention therefore lacked novelty.
This was affirmed, because according to the case law of the former Supreme Patent and Trade Mark Senate, the decisive factor is the possibility of access by a knowledgeable general public, i.e. an indeterminate group of persons who, due to the arbitrariness of their composition, can no longer be controlled by the owner of the invention. This was the case here due to the guided tours through the production hall, especially since it could not be established that the visitors had agreed to an obligation of secrecy. There was therefore a "not merely theoretical" possibility that the visitors could have gained knowledge of the invention.
Therefore, the OGH confirmed the nullification of the patent by the Court of Appeal.
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