Beware of missing the right time for submitting evidence

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

1. Background of the case

The parties are anonymised in the present decision (B. GmbH ./. Z. SA). However, the underlying patent is identified (WO 2005/018848).

From a brief review of the patent family, the parties become immediately apparent. In the European phase of the aforementioned PCT application, proceedings are stayed on request of Benteler Automobiltechnik GmbH. This company had sued Z.A.T. Zinc Anticorrosion Technologies SA for partial assignment to co-ownership of the patent application in suit. The writ of 09 February 2009 is available online; it was annexed to the request for interruption of proceedings.

Note that the former applicant of WO 2005/018848 (DaimlerChrysler) had assigned the application to Z.A.T. Zinc Anticorrosion Technologies SA.

For more infomation, please check the file wrapper (online at the EPO).

2. Procedural aspects at stake

Ordinary exchange of written submissions was as follows (submissions with respect to the counterclaim are underlined):

Plaintiff Defendant
i) Writ
(09 February 2009)
ii) Answer ¦ Counterclaim
(29 May 2009)
iii) Reply ¦ Answer
iv) Rejoinder ¦ Reply
(28 February 2013)
v) Rejoinder*
(13 May 2013)

* expressly only commenting on the reply of the defendant of 28 February 2013.

With letter of 14 May 2013, the FPC informed the parties that the exchange of written submissions was finished. However, with letter of 23 May 2013 the plaintiff then expressed his surprise that he was given no further opportunity to comment on facts and evidence raised by the defendant in the rejoinder of 28 February 2013. In the plaintiff’s view, the defendant had denied the plaintiff’s right of action in the rejoinder of 28 February 2013 for the first time. “For the sake of completeness”, the plaintiff submitted assignment agreements signed by the respective inventors back in 2009. Note that the plaintiff had already named these inventors in the writ of 09 February 2009 (marg. no. 17 of the writ). The defendant requested that this submission of the plaintiff be held formally inadmissible; moreover, correctness on the merits was also denied.

First, the FPC held that the plaintiff’s submission of 23 May 2013 was no submission of new facts or evidence in the sense of Art. 229(1) lit. a or b CPC. In contrast, the plaintiff’s intention was obviously to comment on an aspect of the rejoinder of 28 February 2013.

With respect to the initial writ, the ordinary exchange of written submissions was concluded with the rejoinder of 28 February 2013. Only the rejoinder in the counteraction was outstanding, and the FPC accordingly had only set a time limit for this rejoinder. Nevertheless, the plaintiff had the mandatory right to also comment on the rejoinder of 28 February 2013 (“unbedingtes Replikrecht”); no time limit needs to be set by the Court (cf. BGE 138 III 252, r. 2.2; BGE 133 I 98, r. 2.2 and a memorandum of the Supreme Court). However, one has to act immediately in order to safeguard this right. Otherwise, it is deemed that the respective party has abstained from making a further submission. In the present matter, 2 ½ months had lapsed since the plaintiff was served with the rejoinder of the defendant. The FPC held that this was clearly not an immediate action being taken by the plaintiff. Consequently, the FPC excluded the plaintiff’s submission of  23 May 2013 (incl. the assignment agreements) from further consideration, as well as the defendants comments thereon.

As a sidenote, the FPC held that even an immediate comment on the rejoinder of 28 February 2013 would not have helped the plaintiff: The right in the invention had already been discussed in the writ of 09 Februar 2009, and the inventors were already named at that time. The defendant had contested these allegations already in his answer of 29 May 2009. Therefore, this was not a new issue raised only in the rejoinder of 28 February 2013 by the defendant.

Next, the parties will be summoned to the main hearing. The FPC stressed that the parties will then only be allowed to present new facts or evidence in the sense of Art. 229(1) CPC. In view of the above, the plaintiff will thus not be heard anymore with respect to the facts and evidence raised in his submission of 23 May 2013.

Reported by Martin Wilming


Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

Benteler Automobiltechnik GmbH ./. Z.A.T. Zinc Anticorrosion Technologies SA


  • Patent law / Unfair competition

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

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