A is the owner of an Austrian patent for a novel hip prosthesis with a special joint mechanism. A has granted an exclusive license to B for the Austrian patent. In addition, A holds an identical German patent together with K.
Abroad, C manufactures complete hip prostheses in Poland that incorporate all the features of the patent. C is supported by D in Czechia, who supplies essential components and knows that they are intended solely for the manufacture of the prostheses. L supplies C with commercially available raw titanium, which is used for the hip prostheses.
An Austrian intermediary E has good contacts with C. He sends an email to numerous hospitals in Austria, in which he refers to his online sales seminar on the prostheses. After interest has been aroused, C sells the prostheses to a medical dealer F, who delivers the prostheses from Poland directly to hospital G in Graz, where a patient P is implanted with such a prosthesis.
Another intermediary, H, buys prostheses in Poland and sells them to a German hospital, I, in Munich.
Now A and B want to take action against all parties involved and prohibit these persons from using the prostheses. Since A is on the verge of insolvency, he has provisionally assigned the monetary claims arising from the infringement of his German patent to J Bank for the payment of liabilities. J Bank wants to collect these debts.
Right to sue
In principle, only the patent holder has the right to sue, i.e., is entitled to assert claims for patent infringement. He has the exclusive right to demand cessation, removal, and, if necessary, damages. This right exists regardless of whether the patent holder exploits the patent himself or not. Third parties who have no rights to the patent themselves can draw the patent holder's attention to patent infringements, but they only have the right to sue in special cases.
Unless A enters into other contractual agreements with third parties, he alone is entitled to enforce the claims arising from the Austrian patent (damages and injunctive relief). However, special cases may arise due to the license agreement concluded with B and the assignment of claims for damages to J-Bank.
Complications arise when a patent is jointly owned by several persons. Under Austrian patent law, each co-owner can enforce the rights under the patent alone, even if the other owners do not agree or remain inactive. This provision serves to protect enforceability. However, the co-owners may enter into different agreements. While injunctive relief can be sought by each owner individually and can also exist simultaneously, monetary claims can be divided among the co-owners to avoid multiple compensation.
Since the German patent is infringed, both A and K can take action against potential infringers I and H. Both can enforce injunctive relief, i.e., if an infringer does not cease its infringing activities after the judgment, both A and K can take coercive measures against the infringers. However, if the infringement causes damage, this can only be claimed from the infringers once. How the lucrative contract between A and K is to be divided depends on their contractual relationship, otherwise on (German) civil law.
Licensees may also have standing to sue under certain conditions. This applies in particular to exclusive licensees, who are often granted their own right to sue. Whether and to what extent licensees may assert claims depends primarily on the license agreement. In many cases, the entitlement covers both injunctive relief and claims for damages. As with co-owners, however, damages are only payable once in the relationship between the patent owner and the licensee.
Since B has an exclusive license from A to the Austrian patent, B, in addition to A itself, has standing to independently assert injunctive relief claims for patent infringements.
If B is contractually authorized to do so, he can also assert claims for damages against the potential infringers. A also remains entitled to take legal action as the patent holder, so that both A and B can enforce injunctive relief claims in parallel. However, double compensation is excluded, i.e., if monetary claims are asserted, the infringer only has to pay once; the damages must then be divided between A and B in accordance with their contractual relationship.
In addition to the patent owner and licensee, a third party may also have standing to sue if claims arising from a patent infringement have been effectively assigned to them. Under general civil law, payment claims such as damages or the surrender of infringers' profits may be assigned in particular. The assignment does not change the ownership of the patent; only the claim (the claim for damages) is assigned. The acquirer of the claim for damages can sue for the acquired claim in their own name. However, the claim for injunctive relief is non-transferable, as it is directly linked to patent law, i.e., the acquirer of the claim for damages has no right of their own to injunctive relief.
In the present case, A has assigned its payment claims arising from the patent infringement—in particular the claim for damages—to J-Bank in order to settle its own liabilities. J-Bank has thus assumed the position of the claim holder and can assert these claims in its own name, for example against manufacturers, dealers, or other infringers. However, the assignment only concerns monetary claims. The right to injunctive relief remains with the patent holders.
Passive legitimacy answers the question of who can be held liable for a patent infringement. If a natural person commits the infringement as a sole trader, that person is directly responsible. In a corporate context, liability primarily affects the company, as it is responsible for the actions of its employees and management as long as these actions are carried out within the scope of its business activities. Individual managers may also be personally liable, especially if there are concrete indications that they are deliberately promoting infringing activities or will continue them in a new company.
The intermediary H markets the patent-infringing hip prosthesis in Germany. The necessary steps were carried out by employee N, who acted within the scope of his normal work activities. In addition, M, the managing director of H, knew about the patent infringement, approved the distribution, and was already preparing the next delivery.
In this case, the company H is liable for the patent infringement. However, N as the employee who carried out the action and M as the managing director are also personally liable: N because he directly contributed to the infringement through his actions, and M because he knowingly supported the infringement and planned to continue it. This means that all three – the company, the managing director, and the employee – are jointly liable for the patent infringement.
In principle, a company is liable for all patent infringements committed by its organs or employees in the course of business. Only in rare exceptional cases is this liability waived, namely when an employee acts on his own authority and without any advantage for the company. However, this is the exception and difficult to prove in practice. In addition, anyone who intentionally contributes to a third party's patent infringement, whether as an instigator or an accomplice, is also liable. The prerequisite is that he is aware of the infringement and consciously participates in it.
Dr. R, a doctor employed at a hospital, decides on his own authority to purchase hip prostheses from Poland that are covered by a patent protected in Austria. He places the orders through private contacts, then resells the prostheses stored in the hospital's warehouse himself and pockets the proceeds. The hospital is unaware of these transactions and derives no benefit from them. In this case, there is a patent infringement, for which, however, only Dr. R is liable. Since he acted without the knowledge and to the advantage of his employer, the hospital is exceptionally not liable. Dr. K is personally liable for the marketing and sale of the patent-infringing prostheses. His conduct also shows that he acted intentionally and in his own interest.
In practice, patent infringements rarely occur in isolation, but often arise in so-called infringement chains. These are constellations in which several actors are involved in the infringement, either consecutively or jointly. A typical example is the manufacturer who produces the patent-infringing product, the distributor who sells it, and the end user who ultimately uses it. All parties involved are part of the same infringement chain and can therefore be held liable.
In this example, there are two separate chains of infringers:
The first chain of infringers consists of E, the intermediary in Austria who advertises and resells the patent-infringing prostheses, and G, the hospital in Graz that purchases the prostheses and implants them in a patient. Both parties are involved in the same chain: E brings the prostheses to Austria, G uses them. E and G are jointly and severally liable for the resulting patent infringement—each can be held liable for the entire damage caused by this chain.
The second chain of infringers consists of H, another intermediary who purchases prostheses from Poland, and I, a German hospital that takes delivery of these prostheses. H and I also form an independent chain of infringers and are jointly and severally liable for the infringements they cause.
However, it is important to note that E and G are not liable for the damage caused by H and I, and vice versa. Each chain of infringers establishes independent liability.
Under joint and several liability, each party involved in the chain of infringers is liable for the entire infringement. The patent holder is free to choose whom to sue and can claim full damages from each party. The debtors can then assert recourse claims against each other in order to distribute the burden in accordance with their internal relationship.
E markets the patent-infringing prostheses in Austria, and G uses them by implanting them in patients. Both actions are inextricably linked and together constitute patent infringement.
The patent holder can demand compensation for the entire damage from E or from G – he does not have to decide who bears what share. The claim is made against both in full, regardless of whether one of them played a greater or lesser role in the chain. Of course, the patent holder can only claim damages in a single amount.
After payment has been made, a recourse claim arises between E and G: the party who has compensated for the entire damage can demand compensation from the other party in the internal relationship. The amount of recourse depends on the respective internal relationship, i.e., on who is responsible for the patent infringement and to what extent. For example, it could be assumed that E, as a dealer, is liable for the majority of the damages, especially if G contractually required that the prostheses supplied be free of third-party rights.
This means that externally, everyone is liable for all jointly caused damages, while internally, the burden is determined by the degree of causation and responsibility.
Infringing Acts
The manufacture of a patent-protected article that fulfills all the features of the claim constitutes patent infringement. If several companies are involved in the manufacture, those who manufacture an article that has all the features of the patent are liable. Companies that only manufacture a preliminary product may not be directly liable unless they supply an essential means for the invention and know that it will be further processed in a manner that infringes the patent. In such cases, indirect patent infringement applies.
If there is also a valid patent for the hip prosthesis in Poland, C directly infringes this patent by manufacturing complete prostheses that embody all the features of the patent. He is therefore the main infringer.
D, on the other hand, specifically supplies special components that are intended exclusively for the manufacture of the patent-infringing hip prostheses. He knows for certain that C uses these parts for this very purpose. D is therefore liable as an accomplice alongside C. (Indirect patent infringement may also be considered.)
The situation is different for L. He merely supplies commercially available raw titanium, which can be used in a variety of ways. Such raw materials are not considered an essential means of implementing the invention. Even if L knows that C uses the titanium to manufacture prostheses, this does not constitute patent infringement. This means that L is not liable.
A common patent infringement is the marketing of patent-protected items. Marketing occurs when someone transfers a patent-infringing item to a third party, so that it is no longer under their control. Any sale that brings the patent-infringing item onto the market therefore constitutes patent infringement through marketing. This means that not only the manufacturer is liable, but also the intermediary who resells the item.
F purchases the prostheses from C in Poland and resells them by delivering them directly to Hospital G in Graz. In doing so, he places the patent-infringing items on the market in Austria and thus infringes the Austrian patent.
H purchases prostheses in Poland and sells them to a hospital in Munich. With this sale, the patent-infringing prosthesis enters the German market, i.e., it is placed on the market there, thereby infringing the German patent.
The mere offering of a patent-infringing item also constitutes patent infringement. It is not necessary for the article to already exist; it is sufficient for the offer to show that all the features of the patent claim are fulfilled. For example, the presentation of a product in a catalog or price list can be considered an offer if the offer shows that the product has all the patented features.E is therefore already infringing the Austrian patent by offering the product, regardless of whether it is actually sold at a later date.
E is infringing the patent because he actively offers the hip prostheses in Austria. Through his email to numerous hospitals and the advertisement in an online seminar, he makes it clear that he sells prostheses that have all the features of the Austrian patent.
It is irrelevant whether the prostheses are already physically available at this point in time or whether E himself delivers the goods directly. The targeted offering to hospitals alone is sufficient to constitute patent infringement because he is thereby opening up the market in Austria for a patent-protected product.
The use of a patent-infringing object is also considered patent infringement. A company that uses a patent-infringing object commits an act of infringement. This also applies to the use of a patented process. If, for example, a company uses a patented process to manufacture a product, this constitutes patent infringement through use.
Hospital G in Graz uses the patent-infringing hip prosthesis by implanting it in a patient. Through this use, the hospital is using the patent-protected item in the course of its medical activities and thus fulfills the elements of use.
The fact that the hospital did not manufacture or market the prosthesis itself is irrelevant. The mere actual use of a patent-infringing product—in this case, surgical implantation—is sufficient to constitute an act of infringement.
One possible way of circumventing patent protection would be to manufacture a patent-infringing item outside the territorial scope of protection of the patent. To prevent this circumvention, the import of patent-infringing items is considered an act of infringement. The importer is liable as soon as it is proven that the goods are to be placed on the market, offered for sale, or used.
If F is caught at the border with the prostheses originating in Poland before he resells them in Austria, this already constitutes patent infringement through import.
The mere act of bringing the patent-infringing prostheses into the scope of the Austrian patent fulfills the elements of the offense, even if no sale has yet taken place. The purpose of the import is to place the prostheses on the market and use them here. There is no need to wait for this to happen – the infringement occurs as soon as the border is crossed.
F is therefore liable even if he has not yet resold the prostheses, because the import itself constitutes an independent act of infringement.
Finally, the possession of a patent-infringing item also counts as patent infringement if the purpose of the possession is to place the item on the market, offer it for sale, or use it. Here, the purpose of the possession is decisive, and it must be proven that the item is being kept for one of the aforementioned purposes.
If the prostheses are only found in F's warehouse without him having already sold or offered them for sale, a patent infringement may still exist. The decisive factor is whether the possession of the prostheses is aimed at one of the other acts of infringement, i.e., whether F is keeping the items ready to sell, advertise, or deliver to hospitals.
Territoriality
A basic principle of patent law is the principle of territoriality. Patents are only valid in the countries for which they were granted. For example, if a production facility or retail store is located in a country where a patent exists, this may constitute an infringement. However, if the production facility is located outside this country, there is no patent infringement, even if the goods are later imported into the country with patent protection.
Manufacturer C produces hip prostheses in Poland. There, he only commits a patent infringement if a corresponding patent has also been granted in Poland. Since the Austrian and German patents are territorially limited, they do not apply in Poland. C is therefore only liable for production in Poland itself if property rights also exist there.
If the importer infringes the patent in another country by importing patent-infringing items, he is liable for the infringement. However, the manufacturer abroad, who has no knowledge of the import, cannot usually be sued directly by the patent holder unless it can be proven that he is acting intentionally or that the delivery abroad is made for the purpose of distributing the goods in a patent-protected country.
If it can be proven that C knew that his prostheses were intended for the Austrian market, or if he even expressly instructed E to sell the products in Austria, the legal situation changes significantly. In this case, it is no longer a matter of neutral manufacturing abroad, but of intentional participation in a patent infringement in the territory where patent protection exists.
C would then be treated as if he himself were involved in the infringement in the protected territory. The import into Austria would be attributable to him because he specifically promoted it or at least consciously accepted it. This would make C not only an indirect supplier, but also directly responsible for a chain of infringements.
Commercial Activity
Patent law is generally designed for actions in the commercial sphere. Private actions that do not take place within the scope of an economic activity are generally not covered by patent protection. Austrian patent law includes the criterion of commercial activity, which means that an action must be based on an economic activity in order to be considered a patent infringement. This activity does not have to be directly related to earning money; it is sufficient if it is part of economic operations. In practice, however, such private uses are rarely prosecuted because they are often economically insignificant and patent holders are often unaware of them.
If A decides to sue the patient, he will not be successful. Objectively speaking, the patient who had the hip prosthesis implanted has a patent-infringing object in his body and also uses it. However, he does not use it in the context of an economic activity, but exclusively for private purposes. The requirement of commercial use is therefore not met. The patient is therefore not liable and cannot be sued as a patent infringer.
Expiration of the patent
A patent may expire due to the expiry of the term of protection or due to non-payment of annual fees. After expiration, no new injunctive relief claims can arise, as future infringements are no longer possible. However, infringements that took place before the expiry remain relevant: monetary claims can still be asserted as they relate to past actions.
E aber im Jahr 2024 Prothesen in Ă–sterreich auf den Markt gebracht hat
However, if a patent is subsequently declared invalid, all claims are retroactively void. This means that all acts of infringement are considered never to have occurred and no monetary claims can be enforced. This is particularly relevant if proceedings to enforce claims are already ongoing or have been concluded.
If the Austrian patent was declared invalid in 2025, but E placed prostheses on the market in Austria in 2024, these acts no longer have any legal effect in retrospect.
Due to the retroactive declaration of invalidity, the patent is deemed to have never existed. This means that there is no legal basis for asserting claims for injunctive relief or monetary claims. Even proceedings that have already been initiated or concluded would have to take the invalidity into account, so that claims for damages against E would also be retroactively waived. Under Austrian law, A would also have to repay any damages already paid.
