18.08.2021
Patents are not created by the invention itself (unlike copyright law), but rather by an act of sovereignty. The granting of the patent (by the patent office) itself creates the industrial property right, which is limited in time and gives the inventor (or the patent holder) the right to exclude any third party from using the invention.
As such an exclusive right, the Patent Act imposes strict conditions on the granting of a patent: firstly, it must be a technical invention, there is a requirement of "technicality", i.e. the invention must solve a technical problem using technical means. Furthermore, the invention must be "new". It must therefore not be part of the state of the art (Section 3 Paragraph 1 of the Patent Act), which means everything that was made available to the public before the date of application by written or oral description, by use or in any other way. It does not matter whether the inventor knows that his invention is (not) new, and novelty is also assessed worldwide, which is why it does not matter where a public act has already taken place. In addition, there must be an "inventive step", which means that the invention must not be obvious to the expert from the state of the art. Finally, an invention must also be commercially applicable, i.e. it must be able to be manufactured and/or used in some way.
In the case decided by the Supreme Court (4 Ob 220/20m of July 5, 2021), a patent relating to the machining of at least two workpieces on a rotating workpiece carrier was filed in 2015. Such a machine had already been used in the company's production hall since 2009, and tours were organized for school classes, and visitors from management, tool technicians and fitters had direct insight into the machine. In 2015, a patent was filed for the invention and a competitor applied for the patent to be declared invalid. Essentially, it was argued that the invention lacked novelty and was previously known.
The invalidity department of the patent office partially granted the application and declared one of the fifteen patent claims invalid, but upheld the remaining fourteen, saying that they were new and inventive and also feasible. The appeal court, to which the competitor subsequently appealed (the Higher Regional Court of Vienna), declared the entire "patent in dispute" invalid. The machine had become known to the public through visits to the company; business partners, potential customers and fitters had seen the machine and were able to recognize and understand the process used.
The Supreme Court agreed with the legal opinion of the Vienna Higher Regional Court. It also took the view that in the present case, "making available" within the meaning of Section 3 Paragraph 1 of the Patent Act had been given. Such making available would be given if any expert could recognise the content of the technical information, understand it and pass it on to other experts. Informing individual persons also constitutes making available to the public under certain circumstances, and this would already be given if there was a not remote, and therefore not merely theoretical, possibility for the unrestricted group of people to become aware of the patented invention.
Because in the present case the applicant for the patent could not prove that all those people who had seen the machine before it was patented were subject to a duty of confidentiality, in the present case it would have been made available to the public. Confidentiality would not have been agreed with all those who had seen the machine, but on the contrary, at least in individual cases a "performance showcase" would have been organized for the management's customers. The dissemination of the invention could no longer be controlled by anyone, so the patented invention had been made available to the public before it was registered in accordance with the law - and was therefore no longer new and no longer patentable.
A practical tip for inventors is therefore to contact a patent attorney as soon as possible (who, unlike a lawyer, is an expert who usually only has legal training and can also make a final assessment of the technical side of the invention) as soon as there is a possibility that a patentable invention may exist. In any case, it is best to avoid making the invention known to third parties who are not obliged to keep it secret from the alleged inventor, as otherwise the requirement of "novelty" for the granting of a patent may not be met. So the same applies here: speech is silver, silence is gold.