Confidentiality, Public Availability, Public Prior Use

Public availability in consequence of insufficiently observed confidentiality requirements regularly constitutes a point of attack in a patent enforcement.


In particular, before filing a patent application, protection of cross-company information flows and internal awareness of confidentiality are of particular relevance. This is underlined once again by the following decisions.


OLG Vienna, 33R42/20v:

(translated; original in German language)


Machine supplied by W. GmbH to G. GmbH:


[…] First of all, it is essential that the machine was set up at the manufacturer (W. GmbH) for trial operation and a subsequent rebuild phase only. This time obviously served the ongoing development and testing of the machine based on the needs of the customer (G. GmbH) with a corresponding exchange of information between the parties involved.


[…] In this phase, there was a mutual operational interest in not letting the resulting knowledge leak out, so that the public availability of the knowledge gained is to be denied for this reason alone.


[…] However, public availability in connection with the installation of the machine at G. GmbH was established by the fact that further visitors of G. GmbH (such as business partners, service technicians, potential customers) could have recognized and understood the process used for the machine.


[…] Due to the general accessibility of the machine to visitors of the management, there was a general possibility that other professionals would become aware of its technology.


[…] With a visitor to the management, a "business relationship" does not (yet) necessarily have to exist. Unspecified " confidentiality conditions" do not mean that the visitors have made a specific commitment to keep the technology of the machine confidential.


The contested patent was declared invalid.



OLG Vienna, 133R84/19d:

(translated; original in German language)


[…] Among the documents submitted in writing, on forms there is the pre-printed text:

(“This document must not be copied without our written permission, and the contents thereof must not be imparted to a third party nor be used for any unauthorized purpose. Contravention will be prosecuted.“)


[…] This standard wording on certain forms does not imply any obligation to keep the inductor supplied in the case in question confidential from third parties. This declaration only refers to the document itself.


[…] However, a tacit agreement cannot be presumed from the outset. The particular circumstances of the case must be taken into account, considering the relationship between the contracting parties and the subject matter of the use. It is significant whether there was an objectively recognizable interest in confidentiality on the side of a person involved in the contract. Such an tacit agreement could be indicated by the relationship between parent company and subsidiary, a joint venture or the supply of prototypes for testing purposes. An ordinary commercial transaction, on the other hand, and the sale of parts for series production generally do not provide any indications of such an agreement.


[…] The mere fact that it is a custom-made product does not constitute such a special business relationship from which a confidentiality obligation would have to be derived.

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