Searching decisions in the database of the FPC with a detailed query form

A “simple search” for decisions had already been available on the FPC website since the very beginning, but I have noticed only recently that the FPC has meanwhile enabled much more detailed database queries:

Database query / search for FPC decisions

A manual is also available. This search interface is definitely a valuable tool.

Note, however, that indexing is not exhaustive (e.g., a search for “Costs: Legal aid” in field “GL” does not result in any hits, but there are published cases that inter alia deal with this topic — but the respective tag has not been assigned).

Moreover, there is apparently a difference between the two fields “GL” and “GS”: Both are entitled “Subject”, but searching those fields with the same query yields completely different results. For instance, searching for “Assignment of patent” in field “GL” yields O2012_012 and S2012_009. However, searching for “Assignment of patent” in the field “GS” only results in S2012_005 — a hit that is not at all produced in the field “GL”.

Job opportunity: Court clerk at the FPC

Ms. Susanne ANDERHALDEN is currently the only clerk listed on the website of the FPC. Mr. Jakob ZELLWEGER (formerly First Court Clerk) is no longer listed. Today, an ad has been taken out on the website of the FPC. There is a job opportunity as a court clerk at the FPC:

Job opportunity: Court clerk at the FPC

Applications are to be submitted by 30 June 2014. Please refer to the above job posting for further information.

Switzerland again country of origin of most EP applications in 2013, based on millions inhabitants

Not only the FPC, but also the EPO has recently published its Annual Report 2013. A highlight from Swiss perspective: Calculated as a ratio per millions inhabitants, Switzerland is by far the most active country of origin (analysis based on all European patent applications filed with the EPO, i.e. both direct European applications and International (PCT) applications entering the European phase).

EPO filings 2013 (per million inhabitants)
Source: European Patent Office (EPO)

Beyond patent filing statistics, the Global Innovation Index 2013 takes many more key indicators into account: Switzerland is ranked #1, too.

Reported by Martin WILMING

Parties are expected to promptly inform the FPC about corresponding decisions in other jurisdictions

Recently, a party to proceedings pending at the FPC had informed the FPC of a decision issued by a foreign court in co-pending proceedings. The counterparty requested that this submission be dismissed, in view of the FPC’s case law on unsolicited submissions.

The President took the opportunity to clarify the following:

Even though the FPC does not appreciate unsolicited submissions, harmonisation in Europe in fact requires that the FPC takes corresponding decisions issued in other jurisdictions into consideration. In doing so, the FPC thus first needs to know such corresponding decisions. Consequently, the FPC not only accepts such information, but in fact expects parties to promptly provide such information.

Reported by Martin WILMING

Editorial: Anonymisation and how I deal with it

Most of the decisions issued by the FPC are at least partly anonymised. In the early days of this Blog, I felt it would be easy to discuss such decisions in equally anonymised form. I was wrong. Anonymisation makes nosy. As a patent attorney I am always keen to understand the technical issues and to know the patents in suit. Sometimes, one does not even get the full picture of the barely legal points of an anonymized decision without understanding the technical background. And finally, it is (too) hard for me to beat around the bush when additional information on the case is readily available that can help to better understand the decision.

I will not enter into investigative journalism. But I decided to share the background information that I have gained during preparation of the posts (like in the post of earlier today). Hope you enjoy.

Martin Wilming

Ex parte interim measures: There’s life in the old dog yet

Zoll Douane Alt
Assistance by the Federal Customs Administration in patent matters proved helpful, indeed!

Requests for preliminary injunctions are mostly dealt with by a panel of three judges, since the understanding of a technical matter is of particular significance in patent cases (Art. 23(3) PatCA). However, formation of the panel takes at least a few days. As a rule, this timeframe is used by the FPC to provide the defendant with a possibility to be heard. I thus felt that the FPC might only refrain from hearing the defendant when an element of surprise is of the essence (e.g. in case of confiscation or description / precautionary taking of evidence); cf. this Blog here (item 2).

Well, exceptions prove the rule. In fact, the FPC apparently granted two(!) ex parte interim measures in case no. S2013_001. Unfortunately, these decisions are not published yet (on request of the defendant since details pertaining to a method of manufacturing in the field of pharmaceuticals are at stake). Thus, no information on the merits of the case was publicly available (except for a hearing being scheduled on January 31, 2013; cf. this Blog here) until Simon HOLZER provided some insight into this matter here.

i)  Interim measures to prevent the import of goods retained at the customs

The first ex parte interim measure in case no. S2013_001 relates to pharmaceuticals that were retained at the customs on request of the patentee. In such cases, the patentee is required to obtain an interim measure by the competent court within the very short term of only 10 days (an extension of yet further 10 days may be granted on request); otherwise, the goods are released by the customs (cf. Art. 86a-k of the Federal Act on Invention Patents). Evidently, it would almost never be possible for a patentee to get interim measures granted in inter partes proceedings at the FPC in this short time. These constraints being given: Is assistance by the Federal Customs Administration only a toothless tiger in patent matters? Not at all: The FPC now took a pragmatic approach and instructed the customs authorities to prolong the retention of the goods by an ex parte order without having examined the infringement and the validity of the patent in detail yet.

(A leaflet setting out the details of assistance from the Federal Customs Administration (FCA) can be found here; further information can be derived at the website of the FCA. Note, that the patentee is required to provide compensation for damages suffered due to the goods being retained should interim measures not be ordered or are revealed to be unfounded; a so-called Accountability Statement is to be signed.)

Subsequently, a hearing took place on January 31, 2013. At the occasion of this hearing, both parties had commented on the alleged infringement and the validity of the patent, and the preliminary assessment of the reporting judge tended to confirm infringement and validity of the patent in suit. The interim measure (prolongation of retention of the goods at the customs) was thus upheld.

ii)  Preliminary injunctive relief

Later on, a second ex parte interim measure was granted by the FPC, i.e. for injunctive relief. Even though the reporting judge had confirmed in the aforementioned hearing that the marketing of the pharmaceuticals in suit was infringing patentees’ patent rights, the defendant recognized after the hearing that the defendant had started distributing the pharmaceuticals in German-speaking Switzerland. The patentee immediately filed a request for a preliminary injunction. Since both parties were already given the opportunity to argue on the merits of the case in the prior hearing, the FPC was in a position to order preliminary injunctive relief ex parte. This ex parte injunction was replaced later by interim measures that were rendered by the FPC in the contradictory procedure. The defendant lodged an appeal with the Federal Supreme Court against the FPC’s interim measures. Note, that the appeal has no suspensive effect. This case is to be continued.

Revival of ex parte interim measures?

This case no. S2013_001 is special in that both parties have already had the chance to comment on infringement and validity of the patent in suit in FPC proceedings when the request for preliminary injunctive relief was filed. Most likely, such a situation will not occur soon again. There is no reason to assume that the practice of  the FPC will change in general; ex parte interim measures will only seldom be granted. But in addition to situations when an element of surprise is of the essence (e.g. in case of confiscation or description / precautionary taking of evidence), also in case of goods being retained by the customs.

Reported by Martin WILMING

(Many thanks to Simon HOLZER for a general discussion on procedural aspects of case no. S2013_001.)

Patent litigation under the new Civil Procedure Code: How is it going by now?

At an INGRES conference of 5 December 2012, practitioners had the chance to openly discuss their preliminary experience with the new Civil Procedure Code in intellectual property matters in general. Dr. Dieter BRÄNDLE (President of the FPC) and Dr. Tobias BREMI (Second ordinary judge of the FPC) gave presentations with respect to the FPC. Mario J. MINDER drafted a detailed summary of the conference which is available here (in German language only). Based thereon, here is my personal selection of take-away messages:

1.  Assessment of the reporting judge (so-called Fachrichtervotum)

The reporting judge is technically qualified. Thus, time-consuming and costly court opinions will rarely be necessary (only when there is no technically qualified judge available for a specific subject matter).

The parties are provided with the assessment of the reporting judge and may comment thereon in writing or, as the case may be, at the occasion of the oral hearing. If the court nevertheless follows the assessment of the reporting judge, this assessment cannot be challenged other than through an appeal against the decision as such.

Even though the assessment of the reporting judge undoubtedly is a key moment for each case (and a perfect opportunity for the court to induce a settlement in a preparatory hearing according to Art. 8(4) lit. b of the Guidelines on Proceedings before the FPC), the reporting judge does not fulfill the tasks of a single judge. By nature, at least one party will not be fully satisfied with the assessment of the reporting judge, but the case has not yet run out of steam at this point of time. The role of the other judges of the respective board of judges must not be underestimated. Note that all judges have sworn an oath (or taken a vow) pertaining to fulfilling their duties conscientiously; cf. Art. 15 PatCA. This of course includes to critically scrutinize the assessement of the reporting judge rather than letting the assessement through on the nod.

Finally, it is important to recall that the assessment of the reporting judge is no piece of evidence.

2.  Preliminary injuction without hearing the defendant

Requests for preliminary injunctions are mostly dealt with by a panel of three judges, since it is the rule rather than the exception that the understanding of a technical matter is of particular significance (Art. 23(3) PatCA).

Formation of the panel takes at least a few days. This timeframe is used by the FPC to provide the defendant with a possibility to be heard. Only when an element of surprise is of the essence (e.g. in case of confiscation or description / precautionary taking of evidence; cf. below), the FPC might refrain from hearing the defendant beforehand.

3.  Wording of requests for injunctive relief

The proper wording of requests for injunctive relief is crucial: If the wording is insufficient, dismissal of the claim is threatening; cf. herehere and here for examples. The Swiss practice is rather strict. In general, a mere re-formulation of the wording of the patent claim does not suffice; c.f. BGE 131 III 70, r. 3.3. Of course, there may well be exceptions to this rule, e.g. in case of a highly specific wording already in the patent claims, without any functional definitions, umbrella terms, and the like. However, this is what patent attorneys are trained to avoid during patent prosecution at least in the independent claims, in order to obtain the broadest possible scope. In any case, the allegedly infringing embodiment is to be described such that no interpretation or construction of technical terms is required anymore.

4.  Cross-border injunctions

Back in 2006, the ECJ held in C-539/03 (Roche Nederland et al.) that Art. 6(1) of the Council Regulation (EC) 44/2001 / Lugano Convention (to which Switzerland is a member) does not apply to patent infringement proceedings. Moreover, the ECJ held that each country has exclusive jurisdiction in proceedings relating to validity of patents issued by them; cf. C-4/03 (Gat) of same date. Cross-border injunctions have been deemed dead since then.

However, in view of the recent decision C-616/10 of the ECJ, the FPC tends to issue cross-boarder interim measures such as preliminary injunctions in specific cases, namely in cases where defendants are each separately accused of infringing the same national part of a European Patent in yet another Member State and when the same product is concerned. This is good news for litigators. Rest assured that the boundaries will be figured out again.

5.  Amendments of guidelines and regulations

Decisions of the FPC are published in non-anonymised form unless the protection of private or public interests necessitates anonymisation. In case of private interests, Art. 3(3) IR-PatC provided for anonymisation (only) on request. However, the FPC in fact anonymised decisions ex officio for reasons of private interests. Art. 3(3) IR-PatC has been amended accordingly with effect of 01 April 2013 and now reads as follows (non-official translation into English language; amendment marked-up. Please note: This amendment does not yet show up in the English language version of the IR-PatC currently – 17 May 2013 – available on the website of the FPC):

Publication shall take place in non-anonymised form unless the protection of private or public interests necessitates anonymisation. Anonymisation may be carried out ex officio. In the case of private interests, anonymisation shall be done where this is requested and appears to be justified.

The court fees do comprise disbursements, but no translation costs or compensation for witnesses or court experts. This practice has been codified in CostR-PatC with effect of 01 April 2013, now reading as follows (non-official translation into English language; amendment marked-up. Please note: This amendment does not yet show up in the English language version of the CostR-PatC currently – 17 May 2013 – available on the website of the FPC):

In the amounts according to paragraph 1, the court fees are governed by the extent and difficulty of the matter in dispute, the form of the proceedings, and the financial circumstances of the parties. The court fee includes flat charge expenses, but not costs for translations and compensation for court experts and witnesses.

The Guidelines on Proceedings before the FPC will soon be so amended as to provide for the possibility of dissenting opinions of judges being annexed to decisions of the FPC. Such dissenting opinions may also be published.

6.  Practical aspects of a description according to Art. 158(1) lit. a CPC in connection with Art. 77(1) lit. b of the Federal Act on Invention Patents

The Swiss Civil Procedure Code provides for precautionary taking of evidence if “the law grants the right to do so”; Art. 158(1) lit. a CPC. The Federal Act on Invention Patents grants such a right, i.e. interim measures of description; cf. Art. 77(1) lit. b of the Federal Act on Invention Patents and BGE 138 III 76, r. 2.4. This is frequently referred to as saisie helvétique. 

However, it must not be forgotten that the requesting party has to establish prima facie evidence of infringement when requesting a description; cf. Art. 77(2) of the Federal Act on Invention Patents. This does not mean that the prima facie evidence has to cover all features of the allegedely infringed claim (evidently, no description would then be necessary anymore). But for the vast majority of the features of the allegedly infringed claim, prima facie evidence of infringement should already be provided. Mere fishing expeditions are frowned upon. See S2012_007 for an example where a description has been ordered.

7.  Practical aspects of the precautionary taking of evidence according to Art. 158(1) lit. b CPC

Similar to the aforementioned description under Art. 77(1) lit. b of the Federal Act on Invention Patents, prima facie evidence of infringement must also be provided when precautinary taking of evidence under Art. 158(1) lit. b CPC is requested. Otherwise, the legitimate interest is not established; cf. Art. 158(1) lit. b. See S2012_006 for an example that failed to pass this bar.

Martin WILMING

Annual Report 2012

The Annual Report 2012 has been published by the FPC on 11 March 2013. It is available online in German, French and Italian language. Some key aspects are summarized below.

1.   GENERAL REMARKS

It is essential for the set-up of the FPC that all non-permanent judges gain hands-on experience, the sooner the better. Indeed, all non-permanent judges with a background in law were involved in at least one case in 2012. On the other hand, only 18 out of 25 non-permanent judges with a technical background were involved in at least one case in 2012 (for reasons of language and technical fields).

As expected, German was by far the most frequently used language of the proceedings, i.e. in more than 90% of the cases. Less than 10% of cases were conducted in French; Italian was not used at all. In one single case, the parties to the proceedings chose English as the language of the proceedings.

2.   ORDINARY PROCEEDINGS

Below is an overview of all ordinary proceedings dealt with by the FPC during 2012, grouped by issues at stake. Moreover, cases received from cantonal courts and cases directly received by the FPC are separately given.

[table “” not found /]


The total amount of 43 ordinary proceedings during 2012 is well within the range that was expected beforehand. However, more cases than expected were received from cantonal courts (32, including some elderly cases initiated more than 9 years ago), and less than expected were received directly (11).

Noteworthy, by far the most ordinary proceedings have been concluded by settlement (65%). The 17 cases that have been finished in 2012 in ordinary proceedings have been concluded as follows:

dyerware.com

 

14 out of 17 cases concluded in 2012 in ordinary proceedings were dealt with by the President alone. One case was decided by a panel of three judges, and two cases were decided by a panel of 5 judges.

A preparatory hearing was conducted in 4 of the 17 cases. A main hearing was held in only one case.

Below is an overview of the IP rights concerned in ordinary proceedings. Expectedly, much more European patents / SPCs (36) were at stake than Swiss patents / SPCs (3). This correlates pretty well with the overall ratio Swiss and European patents currently in force in Switzerland (cf. Annual Report 2011/12 of the Federal Institute of Intellectual Property):

dyerware.com

* Note that some of the cases concerned both European and Swiss patents.

 3.   SUMMARY PROCEEDINGS

Below is an overview of all summary proceedings dealt with by the FPC during 2012, grouped by issues at stake. Cases received from cantonal courts and cases directly received by the FPC are separately given.

[table “” not found /]


The total amount of 11 summary proceedings during 2012 is well within the range that was expected beforehand. However, similar to the situation with ordinary proceedings, more cases than expected were received from cantonal courts (5), and less than expected were received directly (6).

Conclusions of cases in summary proceedings were pretty much equally distributed between settlements and decisions:

dyerware.com

 

Contrary to the situation in ordinary proceedings (cf. above), only 3 out of 11 cases concluded during 2012 in summary proceedings were dealt with by the President alone. The remainder of eight cases was decided by a panel of three judges.

A hearing was conducted in 3 of the 11 cases.

Below is an overview of the IP rights concerned in ordinary proceedings. Expectedly, much more European patents / SPCs (9) were at stake than Swiss patents / SPCs (3):

dyerware.com

* Note that some of the cases concerned both European and Swiss patents.

 4.   PRE-EMPTIVE BRIEFS

Apparently, pre-emptive briefs are frequently used (cf. also a separate post in this respect)

[table “” not found /]


Again, much more European patents / SPCs (30) were at stake than Swiss patents / SPCs (3).

Reported by Martin WILMING

Pre-emptive brief: Dos and don’ts

In order to prevent the grant of an interim measure / a preliminary injunction without prior hearing, the potential defendant may file a pre-emptive brief with the competent court; Art. 270 CPC. The counterparty will only be served with the pre-emptive brief if he or she in fact initiates the relevant proceedings (contrary to the practice of some courts before entry into force of the CPC). 

At a recent VESPA seminar, I gained some deeper insight into the practice of the FPC with respect to pre-emptive briefs I would like to share:

  • The FPC accepts pre-emptive briefs in English language.
  • Don’t be too detailed. The FPC prefers briefs of only about 5 to 10 pages, mainly indicating a general outline of arguments why an interim measure / a preliminary injunction should not be granted. If the pre-emptive brief could already be interpreted as a complete counterstatement, this might even be counterproductive.
  • Availability to attend a hearing on short notice should be indicated.
  • What if you are not sure about the identity of the counterparty? The FPC tends to accept pre-emptive briefs not only against attacks of the registered patentee or an exclusive licensee, but also against anyone who invokes rights under the patent (e.g. an owner not yet entered into the patent register). However, be prepared that the FPC will then make available the pre-emptive brief to any such potential plaintiff you might not even have guessed beforehand.
  • A pre-emptive brief becomes ineffective six months after it is filed (Art. 270(3) CPC). If this term is not sufficient, the pre-emptive brief needs not to be filed again but can be renewed by refering to the brief already on file and paying the respective administrative fee again (Art. 2(2) CostR-PatC).

Apparently, pre-emptive briefs have already become a routine measure: About 30 were filed with the FPC in 2012.

Reported by Martin WILMING

Announcement of Public Oral Hearings

The FPC began to publish the dates of forthcoming public oral hearings on the website, at the bottom right of the entry page:

public_hearing_homepage

Further details of the scheduled oral hearing(s) can be found in the Case law Section, or via the hyperlink at the bottom right. As may be concluded from this first occasion, it is the practice of the FPC to announce the following details:

  • Date, time and place
  • Case number
  • Issues at stake
  • Language of the proceedings
  • Remarks

This first announcement of a public hearing only indicates the case number S2013_001, pertaining to patent infringement / preliminary injunction. The language of the proceedings is German. No further details on the merits of this case are available by now:

public_hearing_detail

Update February 5, 2013:
Details of the public hearings are no longer published in the Case law Section. Instead, the hyperlink at the bottom right now leads to a separate pdf document.

Reported by Martin WILMING