Lack of financial resources not established, request for legal aid dismissed

Case No. O2013_001 ¦ Decision of 22 April 2013 ¦ “Auszug aus der Verfügung, Abweisung des Gesuchs um unentgeltliche Rechtspflege wegen fehlender Mittellosigkeit und Verletzung der Mitwirkungspflicht”

This decision pertains to a request of one of the defendants for legal aid. In general, a person is entitled for legal aid under two preconditions (Art. 117 CPC):

  • he or she does not have sufficient financial resources; and
  • his or her case does not seem devoid of any chances of success.

With respect to the first criterion: A person is deemed fundless if he or she cannot pay the costs of court proceedings without budget cuts for basic needs. Financial convenants as well as income and assets are to be taken into account. The person requesting legal aid is obliged to thoroughly demonstrate his or her financial situation, supported at least by prima facie evidence. The marital assistance obligation must not be forgotten; the financial situation of the spouse thus has to be included in the assessment. The more complex the financial situation, the higher the duty to cooperate. If the requesting party refuses to provide the required information or prima facie evidence, he or she may be regarded as being solvent (cf. BGE 5A_36/2013, decision of 22 February 2013, r. 3.3, with further reference).

With respect to the second criterion: It is not necessary that the chances of success are outstanding. A case is not deemed to be devoid of any chances of success even if the risk of loss is slightly higher than the profit prospects. However, the profit prospects must not be be substantially lower than the risk of loss (cf. BGE 119 Ia 251BGE 129 I 129BGE 4a_189/2010, decision of 10 January 2011).

Defendant outlined his financial situation essentially as follows:

  • He has a regular income of CHF 29’000,– p.a., corresponding to a monthly net disbursement of CHF 2’364,20.
  • Monthly expenses for basic needs amount to CHF 2’829,95.
  • He has no assets.
  • Debt enforcements of CHF 15’245,45 are pending against him.
  • Certificates of unpaid debts amount to CHF 145’905,43.

The FPC requested the defendant to disclose revenue and expenses pertaining to the presumably infringing items. Defendant did not provide such details, but rather only declared that 70 items were produced in total. 30 items were sold in 2011; the remainder could not be sold anymore in view of a decision issued by the Commercial Court of St. Gall. In view of this insufficient information, the FPC held that the defendant did not sufficiently comply with his duty to cooperate.

In accordance with BGE 5A_36/2013 (see above), the FPC additionally took the regular income of the defendant’s spouse into account. This led to a significant exemption of at least CHF 2’000,– per month. In consideration of BGE 120 Ia 179, r. 3a, the FPC refrained from requesting further information about the financial obligations of the defendant’s spouse: The defendant was represented by a lawyer and a detailed form was used which indicates all required information (if this form does not open correctly in your browser, try to download first with right click → “save as” and then to open it locally).

As a sidenote, the FPC stressed that the defendant requesting legal aid is the sole director of the other defendant (which is a legal entity), according to the Commercial Register. De facto, the requesting defendant himself is thus responsible for the regular income being paid to him.

Consequently, the request for legal aid was dismissed since a lack of sufficient financial resources was not established. The chances of success on the merits could thus remain undecided.

This decision is already res judicata.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_001 ¦ Decision of 22 April 2013 ¦ “Auszug aus der Verfügung, Abweisung des Gesuchs um unentgeltliche Rechtspflege wegen fehlender Mittellosigkeit und Verletzung der Mitwirkungspflicht”

(not identified) ./. (not identified)

Subject(s):

  • Infringement

Board of Judges of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 19KB)

Request for recusal of a reporting judge held unfounded (O2012_022 cont’d)

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

HEADNOTE

Art. 47 CPC: A request for recusal cannot be based on factual circumstances that are not yet reality and for which it is not yet clear whether they will ever come into existence.
(Non-official translation from German into English language)

Two orders in procedural matters have already been published by the FPC in this case; see this blog here and here. Moreover, a hearing is scheduled for 09 July 2013. It was only known by now that the plaintiff sought for a declaratory judgement of nullity in the field of pharmacy. From the present decision, it is at least clear that this case pertains to the field of androgenic alopecia (a specific kind of hair loss); cf. reasons 3 of the decision. No further details on the merits of the case are publicly available by now.

The reporting judge had provided his assessment of the case on September 16, 2012. With reply of October 26, 2012, the defendant put essentially the following requests on file:

  1. The assessement of the reporting judge shall not be relied on.
  2. A court expert with medical or pharmaceutical background, specifically in the field of androgenic alopecia, shall be appointed.
  3. The parties shall be given the opportunity to comment on the questionnaire.
  4. The reporting judge shall recuse or has to be excluded.

The present excerpt of the decision only deals with the fourth request, i.e. recusal of the reporting judge. It is the first decision being published by the FPC concerning a request for recusal of a judge (based on Art. 47 CPC).

Defendant argued that the reporting judge cannot be expected to be unbiased anymore when it comes to the assessment of the opinion provided by the court expert (since the reporting judge had already provided a written assessment himself); this would contravene the guidelines established by the Supreme Court e.g. in the case no. 4A_3/2012 (r. 2.3).

The Administrative Board of Judges of the FPC is competent to decide on such requests (Art. 11 PR-PatC). The ratio of the decision is clear-cut: It was not established yet whether a court expert will be appointed at all. Thus, the fourth request was held unfounded. Evidently, the fourth request was not construed under the condition of at least the foregoing requests 1. and 2. being granted.

As a sidenote, the Administrative Board of Judges briefly commented on the question whether the defendant should have acted earlier. Apparently, the defendant doubts that the reporting judge is technically competent enough to properly assess the specific questions at stake in the field of androgenic alopecia. However, these doubts were only brought forward when the assessment of the reporting judge was already established, but not when the reporting judge had been appointed. It thus remains to be seen whether the defendant will still be heared with his other request pertaining to the appointment of a court expert. This, however, is a question on the merits of the case which has not to be decided by the Administrative Board of Judges.

This decision of the Administrative Board of Judges is already res judicata.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Administrative Board of Judges of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Second Ordinary Judge)
  • Frank SCHNYDER (Vice President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 13KB)

O2012_021: Federal Supreme Court partly overruled decision of the FPC

Case No. 4A_443/2012 ¦ Decision of 05 February 2013 ¦ “Appeal against the decision of the Federal Patent Court of 07 June 2012

For the background of the case and the underlying decision of the FPC in detail, please see this blog here. In brief, the FPC had ruled that it is competent to decide on claims for injunctive relief and damages, pertaining to infrastructure for collecting the performance-related heavy vehicle fee (HVF) levied in Switzerland.

The Swiss Confederation lodged an appeal against the decision of the FPC. For now, only the issues of competency of the FPC are at stake.

The Supreme Court ruled as follows:

1.  Competency of the FPC with respect to injunctive relief

The Supreme Court stressed that a patentee’s rights are emanating from the Federal Act on Invention Patents which is part of the civil law. A patent is a property in the sense of Art. 26(1) of the Federal Constitution and as such is protected by the constitutional principle of guarantee of ownership (BGE 126 III 129, reasons 8a). The Confederation can be patentee, and on the other hand it has to respect patent rights. Consequently, the Confederation is not entitled to infringe a patent, even if it acts in public interest (reasons 2.3.1).

Das Gemeinwesen wird somit auch im Rahmen der Erfüllung öffentlicher Aufgaben vom Ausschliesslichkeitsrecht nach Art. 8 PatG erfasst und ist insoweit grundsätzlich dem patentrechtlichen Unterlassungsanspruch (Art. 72 i.V.m. Art. 66 PatG) ausgesetzt.

Thus, the Supreme Court confirmed: The Confederation has to face requests for injunctive relief under Art. 72 PatG, and the FPC has exclusive jurisdiction in this respect (Art. 26(1) lit. a PatCA).

In a detailed obiter dictum (reasons 2.3.2 ff), the Supreme Court also expanded on the competency of the FPC to decide on a claim of the Confederation for a compulsory license in the interest of the public. In case of public, non-commercial use it is not mandatory that the Confederation tries to obtain a license under market-reasonable conditions prior to filing a suit to be granted a compulsory license (Art. 40(1) and Art. 40e of the Federal Act on Invention Patents; similar to Art. 31 lit. b TRIPS). The FPC has exclusive jurisdiction in such cases (Art. 26(1) lit a PatCA). Further, the Supreme Court briefly touched on the topic whether the injunctive relief (as a right conferred by a patent) could be subject to expropriation under Art. 32(1) Federal Act on Invention Patents, but did not provide further guidance in this respect.

2.  Competency of the FPC with respect to damages

The plaintiff / respondent requested damages of CHF 62’466’022,85 based on civil law (Art. 73(1) Federal Act on Invention Patents; Art. 41 ff, Art. 62 ff and Art. 423 Code of Obligations). However, the Confederation is only liable under civil law in case of commercial activities, not in case of activities that concern a public function. The Supreme Court held that the use of the infrastructure and the collection of the HVF is undoubtedly carried out by the Confederation in a public function (see also BGE 128 III 76, reasons 1a in this respect).

Die strittige Verwendung der technischen Infrastruktur […] erfolgt unbestreitbar im Rahmen der Wahrnehmung einer öffentlichen Aufgabe. Eine gewerbliche Tätigkeit, die grundsätzlich Privaten wie Nichtprivaten offensteht und bei welcher die Erzielung von Gewinn eine Rolle spielt, liegt beim fraglichen Betrieb der technischen Infrastruktur nicht vor […].

Consequently, the Supreme Court overruled the decision of the FPC with respect to the competency to decide on damages: Liability of the Confederation in this case is to be assessed under the Government Liability Act. The FPC has no jurisdiction in this respect; cf. Art. 10 of the Government Liability Act.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_443/2012 ¦ Decision of 05 February 2013 ¦ “Appeal against the decision of the Federal Patent Court of 07 June 2012

Swiss Confederation (represented by the Federal Department of Finance) ./. Robert Bosch GmbH

Subject(s):

  • Patent infringement
  • Competency

Composition of the Board of the Supreme Court:

  • Dr. iur. Kathrin KLETT (President)
  • Bernard CORBOZ
  • Dr. iur. Gilbert KOLLY
  • Christina KISS
  • Dr. iur. Martha NIQUILLE
  • Dr. iur. Matthias LEEMANN (Court Secretary)

Representative(s) of Appellant:

Representative(s) of Defendant:

Parties for the first time agreed to use English in FPC proceedings

Case No. O2012_037 ¦ Order of 30 July 2012 ¦ “Parteisprache Englisch, Verbindlichkeit der Wahl”

A major advantage of the Act on the FPC (PatCA) in an international environment is that the parties can agree to use English language; Art. 36(3) PatCA. However, even though the parties may use the English language, one of the official languages of Switzerland is still the language of the proceedings. The FPC will always issue its decision in the language of the proceedings (Art. 6(3) PR-PatC).

Parties to FPC proceedings now for the first time agreed to use the English language:

The plaintiff is native Italian speaker, but his representatives are native German speakers. The plaintiff requested in his writ that German language shall be established as the language of the proceedings (Art. 36(1) PatCA, Art. 6(1) PR-PatC), but also indicated that he would agree to English language being used in subsequent motions of the parties. The FPC established German as the language of the proceedings and the defendant was invited to file the counterclaim.

The defendant also agreed to the English language being used by the parties. Consequently, the FPC took due note of the parties’ choice of the English language for their further motions. This mutual consent of the parties being given, no further approval of the FPC is necessary in this respect (Art. 6(3) PR-PatC). However, the FPC held that this choice of the English language is binding, i.e. a waiver to use an official language of Switzerland in later motions and oral proceedings again.

Noteworthy, the FPC held in an obiter dictum that parties might agree on the English language even before FPC proceedings are initiated. In this case, already the writ could be filed in English language.

Reported by Martin WILMING


BIBLIOGRAPHY

Case No. O2012_037 ¦ Order of 30 July 2012 ¦ “Parteisprache Englisch, Verbindlichkeit der Wahl”

(not identified) ./. (not identified)

Subject(s):

  • Financial reporting and monetary claim

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRĄNDLE (President, Single Judge)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Stefano Codoni (Poledna Boss Kurer)

Expert opinions not being sealed / no further explanation of prior order of the FPC (O2012_022 cont’d)

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

This order of the FPC relates to a prior order of 03 May 2012, commented in a separate post. The earlier order of the FPC dealt with the presentation of new evidence / nova. In brief, the FPC did not admit the expert opinions from parallel proceedings in other countries into the proceedings – except as evidence for the conclusions drawn in these expert opinions which were explicitly referred to in the writ of the defendant.

Subsequently, the plaintiff requested that the expert opinions were to be sealed until a decision of the whole case has become final, in order to prevent that a member of the board of the FPC or a court expert consults these expert opinions any further. The plaintiff argued that the human nature could otherwise prompt a non-permanent judge or a court expert to revert to these expert opinions – contrary to the gist of the prior order of 03 May 2012.

In reply, the defendant requested an explanation by the FPC as to what extent the expert opinions may still qualify as (i) evidence for statements made in earlier writs of the defendant (except for the writ accompanying the expert opinions); and (ii) counter-evidence for statements made in earlier writs of the plaintiff. With respect to the statements made in the writ accompanying the expert opinions, the defendant argued that the FPC must have access to the expert opinions as such, in order to verify the respective citations. However, the parties evidently had a different understanding of whether or not the expert opinions may still qualify as (counter-) evidence for statements made in other writs of the defendant and the plaintiff.

The FPC now reiterated that the prior order of 03 May 2012 only pertained to the writ accompanying the expert opinions, without any further necessity of explanation. Only if facts (not points of law such as e.g. novelty, inventive step or undue extension of subject matter) would remain under dispute which are legally relevant, a procedure of taking evidence will be conducted in accordance with Art. 150 ff. CPC. If the defendant then would rely on the expert opinions, the FPC would have to judge admissibility of this evidence.

The FPC further held that there is no need to seal the expert opinions. These opinions will not be further consulted anyhow, for the time being: Since it is beyond dispute between the parties that the conclusions of the two expert opinions were correctly cited by the defendant in the writ, there is no need for the FPC to revert to the evidence as such.

Kurz, das Fachrichtervotum wird erstattet werden, ohne dass Einsicht in die beiden Gutachten genommen wird, weil sie weder – über die Noveneingabe hinaus – als Parteivorbringen noch, im gegenwärtigen Stadium, als Beweismittel zu berücksichtigen sind.

Consequently, the requests of both the plaintiff and the defendant were dismissed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Competency of the FPC at the borderline of public and civil law

Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”

This case pertains to the performance-related heavy vehicle fee (HVF) levied in Switzerland. The Robert Bosch LLC of Germany (plaintiff) is patentee of EP 0 741 373 B1, entitled “System for detecting the distance travelled by a vehicle in a given area”; cf. Fig. 4 for illustative purposes below.

O2012_021_EP0741373B1_Fig_4

In May 2011 the plaintiff had sued the Swiss Confederation for patent infringement with the Commercial Court of the Canton of Zurich, requesting injunctive relief and damages. In December 2011 the defendant denied the competence of the (civil) court, without expanding further on the merits of the case. It was alleged that the use of the HVF-registering system was a sovereign action / in public interest and that, as a result, the court was not competent. The case was transferred in January 2012; the FPC then had to decide on its competency and whether public or civil law is applicable.

The Federal Act on Invention Patents contains two clauses concerning the restriction of patent rights due to public interest: Art. 40 pertains to the grant of a licence in public interest to use an invention when such a licence is, without sufficient reason, refused by the owner of the patent; such licence is to be asserted in civil proceedings. The second clause (Art. 32) provides for the whole or partial expropriation of a patent by the Federal Council, if public interest so requires. This measure is governed by public law, according to the Federal Act on Expropriation (Art. 16 ff.). The FPC held that both regulations are not applicable in this case since the defendant did not initiate any one of the said actions beforehand, but instead put up with the consequences of a potential patent infringement.

The FPC also expanded on the argument of the defendant that the use of the HVF-registering infrastructure is of sovereign character: It was held that the relation to assessable persons (towards whom the Swiss Confederation acts in sovereign manner) is to be distinguished from the relation to the plaintiff.

Furthermore, the defendant argued that the case is to be dealt with under public law as the HVF-registration system was installed in accordance with a public submission procedure. However, the FPC held that this does not qualify the case as a matter of public law because it cannot be investigated in public law proceedings whether the patent of the plaintiff is infringed or not.

Finally, the FPC considered the various criteria developed by the Federal Supreme Court to distinguish between litigations governed by public and civil law (cf. inter alia BGE 123 III 346, r. 1a; BGE 120 II 11, r. 2a). The FPC held that the plaintiff confronts the defendant as a coequal legal entity and that the requested legal remedies further support the assumption that civil law is to be applied to the present case.

Consequently, the FPC decided to consider the case as the competent court (Art. 59 para. 1 in conjunction with Art. 237 para. 1 CPC).

(Update 10 April 2013: This decision of the FPC was partly overruled by the Supreme Court; see this blog here.)

Reported by Martin WILMING and Jennifer BOESE

BIBLIOGRAPHY

Case No. O2012_021 ¦ Order of 7 June 2012 ¦ “Zuständigkeit”

Robert Bosch GmbH ./. Swiss Confederation (represented by the Federal Department of Finance)

Subject(s):

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Chairman)
  • Dipl. El. Ing. ETH Daniel VOGEL (Judge)
  • Dr. iur. Christoph GASSER (Judge)
  • Dr. iur. Christoph WILLI (Judge)
  • Dr. sc. techn. ETH Markus A. MÜLLER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Saisie Helvétique: Interim measures of description ordered

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

The plaintiff requested interim measures of description of an allegedly infringing method at the premises of the defendant (in accordance with Art. 77 of the Federal Act on Invention Patents) and provided sufficient prima facie evidence of infringement: The patent in suit seemingly pertains to a method of injection moulding, as can be concluded from the wording of the request. Apparently, the temperature of the polymeric material is a critical factor which is decisive for the final product. It was beyond dispute that an antecessor company of the defendant indeed used a method according to the patent in suit. Since the defendant had declared that the products formerly available from the antecessor company and those available from the defendant are “the same”prima facie evidence of infringement was established.

In order to safeguard trade secrets of the defendant which are of no relevance for the matter in suit, the FPC decided that the presence of the plaintiff at the occasion of the description is not permitted. However, the plaintiff’s lawyer and patent attorney were allowed to participate at the occasion of the description, in view of their obligations of confidentiality. Such obligation of confidentiality will only become moot for those aspects of the description which are finally made officially available to the plaintiff anyhow. For any further subject-matter they might get to know at the occasion of the description, their obligation of confidentiality persists. The FPC explicitly held that any violation of the obligation of confidentiality may be considered as disobedience against an official order (according to Art. 292 Federal Criminal Code) and would thus be punishable with fine.

With respect to some practical aspects of the description, the FPC noted the following: The description is to be prepared and printed out immediately at the premises of the defendant, shall be controlled for accuracy and completeness and is to be signed by the defendant. The defendant will later on be given an opportunity to blacken passages of the draft description in order to safeguard additional trade secrets, if any (in accordance with Art. 77(5) of the Federal Act on Invention Patents). It is then up to the FPC to decide on the extent of the description for submission to the plaintiff, taking both parties’ legitimate interests into account.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures / description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Investigating Judge)
  • Dr. iur. Philippe DUCOR (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Urgency of interim measures without hearing the defendant

Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”

Hepp Wenger Ryffel AG / Martin WILMING is involved in this case on behalf of the plaintiff. No detailed comments on the merits will be made here. However, two legal aspects of this order may be of general interest:

First, the FPC held that its competency also extends to interim measures to be taken in cases of concurrent competency with cantonal courts (Art. 26(2) of the Federal Act on Invention Patents).

Second, the FPC expanded on the urgency of the case. If interim measures are requested without hearing the defendant (according to Art. 265 CPC), such request shall be made within one or two weeks after the plaintiff has taken note of the threat to be prevented. Seven weeks were found indicative of no outstanding urgency:

Hätte die Klägerin die Anordnung der Massnahme für so dringlich gehalten, dass keine Zeit für eine Anhörung des Beklagten bleibe, dann hätte sie das Massnahmebegehren auch umgehend – jedenfalls innert ein oder zwei Wochen – stellen müssen. Hat die [Klägerin] damit aber sieben Wochen zugewartet, dann ist sie offenbar selbst nicht von einer besonders dringlichen Angelegenheit ausgegangen, und deshalb ist es ihr nun verwehrt, genau diese zu behaupten.

The defendant was given an opportunity to make representations, in accordance with Art. 253 CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_009 ¦ Order of 12 June 2012 ¦ “Zuständigkeit für summarische Verfahren ausserhalb der exklusiven Zuständigkeit; keine besondere Dringlichkeit”

(not identified) ./. (not identified)

Subject(s):

  • Patent / Utility model (Interim measures)

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

Substantiation of statements in writ by reference to physical records / applicable Procedural Code

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

This nullity case regarding the Swiss part of a European patent filed on 18 July 2008 with the Commercial Court of the Canton of Zurich was transferred to the FPC on 17 January 2012. As of 1 January 2012, the FPC has become the competent court according to Art. 41 in conjunction with Art. 26 PatCA.

After transfer of the case, defendant submitted copies of extensive expert opinions requested by the German Federal Court of Justice and the District Court of Rome, Italy, in parallel proceedings and only briefly referred to their respective conclusions in his written submissions. Plaintiff argued that the expert opinions did not constitute evidence in terms of the Swiss civil procedural code (CPC). Further, plaintiff objected to these opinions being treated as defendant’s submissions as the experts’ technical considerations had been enclosed with but not referred to in defendant’s writ.

According to Art. 27 PatCA, the CPC is applicable in cases before the FPC. However, Art. 404(1) CPC states that the previously applicable procedural code (of the respective Canton) remains applicable to pending cases until proceedings within the respective instance are closed. There are no transitional provisions regarding pending cases that have been transferred from cantonal courts to the FPC; only the Guidelines on proceedings before the FPC (Art. 10(2)) hold that the CPC shall be applicable. It has now been decided that based on the fact that Art. 27 PatCA is a lex specialis with regard to Art. 404(1) CPC phone 8582562535 , it takes precedence over the latter. On entering into force of PatCA, the federal procedural code is to be applied to cases transferred to the FPC. However, the parties will be given an opportunity to make submissions pertaining to any issues that they did not need or were not able to make under the terms of the previously applicable cantonal codes of procedure (cf. Art. 10(3) of the Guidelines on Proceedings before the FPC).

As to the merits of the case, it was held that the foreign court expert opinions submitted by defendant were no court opinions in proceedings before the FPC. Likewise, the foreign court expert opinions are no private opinions since they were not commissioned by the defendant. Thus, court expert opinions from separate proceedings are physical records (Urkunden) in the sense of Art. 177 CPC, only. As such, they are formally to be treated like party submissions. As is the case for all party submissions, any statement made in the writ must be substantiated by indicating how the respective statement relates to the physical record on which it is alleged to be based:

In gleicher Weise wie bei Tatsachenbehauptungen hat eine Partei auch bei Privatgutachten oder Gutachten aus anderen Verfahren ihre darauf gestützten Ansprüche möglichst konkret, d.h. substantiiert zu behaupten. Behauptungen (auch wenn sie in Form eines Gutachtens aus einem anderen Verfahren vorgebracht werden) sind in dem Sinne “zu verknüpfen”, dass ohne weiteres und ohne unzumutbaren Aufwand ersichtlich ist, mit welchen Urkunden bzw. Beweisanträgen welche Tatsachen bewiesen werden sollen ([…]).

Facts that can merely be inferred from enclosures need not be considered by the court. In as far as specific passages within the opinions were not indicated to relate to defendant’s writ these opinions were regarded as inadmissible and were not considered.

Wie erwähnt, geht es nicht an, einen Sachverhaltskomplex (d.h. vorliegend die Schlussfolgerung von Gerichtsgutachten) zu schildern und sich zum Beweis am Schluss dieser Behauptungen pauschal auf einen Stoss Akten zu berufen ([…]).

Reported by Karin BÄTZ

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Beware of trade names of allegedly infringing products in requests for injunctive relief

Case No. S2012_002 ¦ Order of 7 March 2012 ¦ “Formulierung von Rechtsbegehren”

In this interlocutory order, the FPC again objected the wording of a request for injunctive relief (cf. also case S2012_003 for further reference to the case law of the Federal Supreme Court in this respect). Here, the request merely referred to a specific product identified by its trade name and by reference to a flyer pertaining to this allegedly infringing product. However, such reference to the flyer would fail for several reasons:

First, the flyer was obviously made for advertising purposes only, but not in order to identify embodiments of features of the allegedly infringed patent. By means of example: For at least one feature of the claim, it was not readily apparent whether or not it is fulfilled by the product described in the flyer.

Second, the mere reference to a product name in the request is not sufficient anyhow. A product name can be changed, and/or a different product can be sold under the same name. Thus, a product name cannot replace the detailed description of the technical embodiment of the allegedly infringing product.

The Plaintiff was ordered to rectify the request accordingly in the reply; otherwise, the case will not be considered by the FPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_002 ¦ Order of 7 March 2012 ¦ “Formulierung von Rechtsbegehren”

(not identified) ./. (not identified)

Subject(s):

  • Preliminary Injunction

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)