Higher Regional Court of Vienna of 20 May 2016, 34 R 73/15b

Bifurcation and stay in Austrian preliminary injunctions (PI) proceedings?

Austria is a bifurcation country. In general, a court in infringement proceedings must consider validity of a patent on its own. If the court considers invalidity as likely, it must stay the infringement proceedings until invalidity proceedings are finally completed.

In general, there is no stay in PI proceedings. PI applications are either to be granted or to be rejected on the basis of the infringement court’s assessment of validity (the opinion of a lay judge with technical expertise – usually an Austrian patent attorney – is decisive in this regard).

A recent decision by the Higher Regional Court of Vienna shows that the rule that PI proceedings are not to be stayed is not set in stone in any case.

In this case, the court of first instance considered the defendant’s concerns about the validity sufficiently strong to reject the PI application. The Court of Appeals reversed this decision and granted the PI, since at the time the appeal decision was rendered, the TBA of the EPO had confirmed that the patent is valid. This would not be unusual so far.

It is quite interesting, however, that the Higher Regional Court of Vienna stayed the PI proceedings (!), although in effect only for a few months, until the TBA decision was available in writing and also conducted an oral hearing in the PI proceedings (!) to discuss this TBA decision.

This quite unusual practice might be explained by the following facts:

The TBA had rendered an oral decision confirming the validity of the patent at the time the Austrian PI proceedings were pending on appeal. At this time, it was clear, that the TBA had come to a different result than the Commercial Court of Vienna which – in the first instance PI proceedings – considered the patent as likely invalid.

Given the strong impact of a TBA decision confirming the validity of an EP, the relatively short and predictable additional timeframe until a written TBA decision would be available and probably also to avoid a possible overruling by the Austrian Supreme Court, the Higher Regional Court of Vienna obviously decided to stay its proceedings until the TBA decision would be available in writing. The hearing on appeal became necessary because new facts were debated on appeal.

Such circumstances, last but not least a short and predictable timeline until when a TBA decision would be available, might not be present in many Austrian PI proceedings. Also the content of the expected TBA decision, which completely contradicted the assessment of the court of first instance in the Austrian PI proceedings, might have made the Court of Appeal want to read this TBA decision before reviewing the contested first instance decision on appeal.

The decision to stay the PI proceedings should therefore be perceived against the background of the individual case but may nevertheless serve as a reminder, that case law, according to which provisional proceedings cannot be “stayed” in Austria, is not set in stone in any case and there can be convincing reasons to stay such proceedings at least for a short and predictable period of time.

A copy of the decision can be found here on www.ie-forum.nl.

Head note: Dominik Göbel, Gassauer-Fleissner