Since the reform of IP proceedings in 2014, all appeals from the Austrian Patent Office are to be prosecuted before the Upper Provincial Court in Vienna (OLG Wien) with a further appeal to the Austrian Supreme Court (OGH). This change was demanded by the whole IP profession. It turned out to be successful since now the time from filing an appeal to a decision by the court is very much shorter than before.
A further advantage of the reform is an amelioration of the so–called bifurcation in infringement cases. These appeal courts have a special senate only for IP matters and the same senate also handles all appeals in infringement matters. That means appeals from nullity actions and infringement actions are judged by the same senate.
The language problem is that the Austrian Patent Office in all its proceedings (applications, oppositions and nullity) accepts and uses itself (for example at the ex parte examination stage) documents in German, English and French without the necessity for a translation. This means for example that voluminous patent specifications do not have to be translated if provided in one of these languages, nor documents for proof of use of European trade marks and the like. This rule for the APO facilitates largely all these proceedings: examination, opposition, nullity and all procedures concerning the registers, such as assignments, recordal of licences or pledges and others.
On the other hand, the Austrian Constitution and the rules governing the actions before courts strictly provide that the language used must be German. This also covers all documents provided as proof of any kind. This rule has no exception and therefore requires translations of all foreign language documents into German. This rule also applies to the courts hearing appeals from the APO. This is in contrast to the previous appeal procedure, which was a specialised purely administrative proceeding up to the third instance for which no translations were required.
Since that side effect of the 2014 reform of procedure is cumbersome and costly, the Upper Provincial Court in Vienna (OLG Wien) was looking for a compromise formula. In a recent decision in a trade mark case, where a lot of documents in a foreign language for proof of use played a decisive role, it stated that since – as a rule – all documents offered as proof are subject to assessment by the court, such foreign language documents will be assessed as such if members of the IP Senate can read and understand their decisive parts without translation. This would apply to all languages, not only English and French. However, it remains to be seen whether this practice holds upon a further appeal on that point of law to the Austrian Supreme Court (OGH).
Furthermore, we think that assessing documents for proof of use of trade marks can often easily be understood without translation since their decisive part(s) are the citing of the trade mark, dates, sales numbers, prices or advertisements, and the like, which usually do not much depend on languages. Furthermore, the list of goods and/or services of CTMs is already also provided in German.
However, it is difficult to see how the court can evaluate patent documents and technical articles by such a mere assessment of the value of the proofs without at least partial translations. Up to now, there has been no such decision in a patent case.
In conclusion, the appeal procedure is now very much quicker than before but might entail much higher costs than before due to translation requirements, especially in patent cases.
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Helmut Sonn |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
