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Austria: Supreme Court examines patent case concerning limitation period

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The general limitation period for juridical actions in Austria is 30 years. However, particular laws can stipulate shorter or longer limitation periods. For example, for claims in patent infringement cases, the limitation period is generally three years. This period begins from the time when knowledge of the infringement and the infringing person is obtained.

In a case recently decided by the Austrian Supreme Court, the plaintiff, a firm based in Germany, was the owner of a European patent concerning a spray gun. The patent was valid both in Germany and Austria. The defendant offered spray guns for sale in its online shop with the top-level domain .de. The plaintiff acquired knowledge of this offering in Germany in 2010. It ordered a German patent attorney to make a test buy. On April 13 2010, the patent attorney printed out an imprint in which the defendant appeared as "distributor centre for Austria and the EU" located in Feldkirch, Austria. The defendant was sued in Mannheim, Germany in 2011 for patent infringement in Germany. In January 2014, the court in Mannheim decided to forbid the defendant from carrying out further patent infringements in Germany and ordered compliance with related claims. One of these was the obligation to provide information on the origin and the distribution channels of the infringing spray guns.

In June 2016, the plaintiff filed an action for patent infringement in Austria asking, along with other requests, for the defendant to be prevented from offering the infringing spray guns for sale in Austria, selling them in Austria or importing them. The defendant did not assert non-infringement, but claimed that the action was statute-barred. Its defence was that the plaintiff already had knowledge of the infringement through the printing of the imprint by the German patent attorney on April 13 2010. According to the defendant, the plaintiff had knowledge that the delivery of the products for Austria and the EU was made by the defendant in Austria. Therefore, the action in 2016 was time-barred since it exceeded the limitation period of three years. The plaintiff argued that the indication in the imprint was not a concrete notice of an infringement in Austria. Only by fulfilling its obligation to obtain information required by the German court decision did it acquire sufficient knowledge to be able to file the action for Austria.

In Austria, actual knowledge is required to activate the limitation period. A need to know is not sufficient. However, there is an obligation on the plaintiff to investigate in cases of justified suspicion in order to obtain the required knowledge.

The court of first instance dismissed the defence that the action was time-barred. The possible suspicion of the German patent attorney could not be attributed to the plaintiff, and the plaintiff therefore had no obligation to carry out further examination. The court of second instance reversed this decision, stating that the imprint was sufficient for the plaintiff to become suspicious. The plaintiff then had an obligation to carry out further investigations, but did not do this.

The Austrian Supreme Court stated that the lower courts were right in averring that the imprint did not provide positive knowledge of an infringement regarding sales or offers in Austria. It was not clear whether all the goods shown on the website were also offered or sold in Austria. The delivery of the test buy to Germany was not covered by the claims of the action. It was also clear that positive knowledge was only acquired by the full information given by the defendant as a consequence of the judgment in 2014.

A breach of its obligation for further investigation cannot be found since the plaintiff filed the action for patent infringement for Germany in time and that action included a claim for information about the origin and the channel of distribution of the spray guns. This claim also encompassed all activities outside Germany. Such a claim relied on European law namely Article 8 of Directive 2004/48/EC of April 29 2004, on the enforcement of intellectual property rights. The right to information in that directive is not territorially limited to the member state of the court action. The aim is to provide the victim of infringement with the chance to check the origin and the whole channel of distribution for all countries. The action in Germany had been successful and had provided the plaintiff with the required positive knowledge. Therefore, there was no fault on the side of the plaintiff and all its claims allowed by the court of first instance remained in force.

Since the EU directive on enforcement of intellectual property has to be executed in all EU member states, an action filed in any of them containing the claim for information will have the same effect of providing positive knowledge of infringement and therefore fulfilling the obligation of further investigations. This is also the case for countries which are not part of the EU but have a similar right for information in their laws. Since the EU Enforcement Directive is not restricted to patent law, the same reasoning also applies to infringement of other intellectual property rights, such as trade mark, design and copyright infringements.


Helmut Sonn

SONN & PARTNER Patentanwälte

Riemergasse 14

A-1010 Vienna, Austria

Tel: +43 1 512 84 05

Fax: +43 1 512 98 05

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