Case No. S2023_001 | ‘Bitumen / asphalt recycling’
👉 Order of 15 February 2023
👉 Judgment of 11 April 2023
Environmental sustainability is a huge thing these days. It affects almost every industry. Even roadworks. Did you ever wonder what happens with waste asphalt? Formerly, it was dumped in landfill. Not so anymore. Recycling has arrived in this industry, too. One approach is to crush and screen the recovered asphalt, and to re-use it as gravel or in mixed products. The common disadvantage is that components get more and more fragmented / the fine portion increases. Further, the valuable bitumen is functionally lost.
Obviously, there is still room for improvement, and this is what the present case is all about.
An employee of Emil Gisler AG Maschinenbau und Hydraulik (the defendant) made an invention pertaining to recycling of asphalt and bitumen, and reported this invention to his employer. This employee, Pius IMHOLZ, has meanwhile left Emil Gisler and founded his own company in order to commercialize this invention, i.e. Imholz GmbH (the plaintiff). But, here’s the issue: His former employer filed the respective patent application for this invention in their own name. It’s the Swiss patent application 70/2022 (still unpublished, but expected to be published in about a month; stay tuned!). Accordingly, it’s a classic dispute concerning the ownership of an invention and the respective patent application.
Swiss law is pretty clear with respect to employee inventions:
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- If an employee comes up with an invention in the course of his work for the employer and in performance of his contractual obligations, such an invention belongs to the employer without any further ado; Art. 332 para. 1 CO. These are so-called ‘Diensterfindungen’.
- Further, the employer may also reserve the right to acquire inventions made by the employee in the course of his work for the employer but not in performance of his contractual obligations. These are so-called ‘Gelegenheitserfindungen’. This requires a written agreement. The employee must notify the employer of such inventions, and the employer must then inform the employee within six months if he wishes to acquire the invention or release it to the employee. See Art. 332 paras. 2 and 3 CO.
To date, the facts are only told by the plaintiff. (Clearly, defendant did not confirm plaintiff’s summary; they reserved the right to put everything into perspective in main proceedings. They just chose their battles wisely: A register ban will hardly ever be denied, anyway.) So, this is what we know for now: Pius IMHOLZ informed his employer about the existence of his invention on 25 October 2021, and disclosed the details thereof in early November 2021. In co-operation with patent attorneys a draft patent application was compiled, the content of which was approved by Pius IMHOLZ on 20 December 2021. On the same date, at the latest, Pius IMHOLZ made clear that he did not intend to give away (t)his invention for free. The defendant (more precisely, their attorneys-at-law since the filing receipt was apparently addressed to them) nevertheless filed the patent application in their own name on 25 January 2022.
The parties could not reach an out of court settlement since then, which is why plaintiff went to court. In particular, the parties dissent about whether the invention at stake is a ‘Diensterfindung’ in accordance with Art. 332 para. 1 CO. Note that Pius IMHOLZ was employed as a sales representative, not in R&D. Still, defendant claims that coming up with the invention was part of Pius IMHOLZ’s side tasks as sales representative.
In co-pending main proceedings (case no. O2023_002), Imholz seeks assignment of the patent application. The present summary proceedings were all about a register ban. With an ex parte order of 15 February 2023, the President acting as single judge held that the invention at stake was quite likely a ‘Gelegenheitserfindung’. In the absence of any written agreement in the sense of Art. 332 para. 2 CO on file, a register ban was issued. The register ban was confirmed after the defendant had been heard, with judgment of 11 April 2023.
A closer look a the technology
It appears that GIPO began to showcase its asphalt competence in 2021, e.g. when plant no. 1’000 was commissioned in August 2021 (mentioning that bitumen is separated from stone, without breaking the stone), and with an advertisement in asphalt 5/2021 (published in August 2021, too):
A hyperlinked category ‘Asphaltaufbereitung’ on GIPO’s website was archived for the first time when crawled on 28 December 2021; the respective hyperlink itself was crawled only on 29 January 2022 for the first time (i.e., a few days after the filing date), with a brochure about GIPO’s asphalt processing / recycling technology.
Here’s how GIPO currently advertises its approach to bitumen / asphalt recycling:
It will be interesting to see (around end of July 2023) what the invention of the Swiss patent application 70/2022 is all about.
✍ Sarah HENTSCHEL / Martin WILMING
BIBLIOGRAPHY
Case No. S2023_001 | ‘Bitumen / asphalt recycling’
👉 Order of 15 February 2023
👉 Judgment of 11 April 2023
Imholz GmbH
./.
Emil Gisler AG
Single Judge:
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- Dr. Mark SCHWEIZER
Court Clerk:
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- Sven BUCHER
Representative(s) of Plaintiff:
Representative(s) of Defendant:
Urteil vom 11. April 2023 i.S. Imholz GmbH v. Emil Gisler AG Maschinenbau und Hydraulik: vorsorgliche Übertragungsbeschränkung, abstrakte Gefahr der Übertragung auf Dritte genügt zur Begründung des nicht leicht wiedergutzumachenden Nachteils, https://t.co/7mueWcmvMa
— Swiss Patent Court (@PatentCourt) April 25, 2023
JUDGMENT
EX PARTE ORDER
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