§ 91 of the Austrian Patent Law (PatG) defines that the claims may only be amended until the issue of a Decision to Grant. At the most, a partial disclaimer is possible according to § 46 of the PatG. In accordance with the practice of the Austrian Patent Office, this was handled over decades in such a manner that in accordance with the possibility of a partial disclaimer only a combination of claims was possible – going along with a limitation of the claims.
The decision 17 Ob 26/08k – Pantoprazol has allowed for the first time in an application for injunction to fall back to claims which in amended wording for the first time include features disclosed in the description. This decision of the Highest Austrian Court (OGH) was discussed controversially in the following. Our office represented the patentee in the decision 133R12/18i – Schankanlage, in which the OLG Vienna had, inter alia, to decide about several auxiliary requests. After the technical division had revoked the patent in the opposition proceedings, several auxiliary requests were filed in which the independent claims in particular incorporated features from the description.
As far as can be seen, in this decision following concepts, which are known from the European Patent Convention (EPC), were transferred for the first time in the Austrian case law without any further discussion in the decision itself:
– intermediate generalization;
– clarity of claims;
– incorportation of features from the description in auxiliary requests in the second instance.
This adoption of corresponding concepts from the EPC into the Austrian Case Law without any reflection by the adjudicating senate not only points to a harmonization of the case law with the case law of the Boards of Appeal of the European Patent Office (which was probably not intended at this point), but also should encourage patent owners to file auxiliary requests in the second instance which are so defined that the patent can be defended at its best.
