Acquisition in good faith in case of a prior sale w/o registration at the IPI?

Reading time: 4 minutes

Case No. O2019_011 | Hearing of 18 February, cont’d on 19 April 2021

Anergy plus logo

Anergy plus seeks the transfer of six patent applications relating to urban heat exchange networks. Anergy alleges that the patent applications had been assigned to it by a contract of 1 February 2017 with the original applicant of the patent applications, i.e. Batinew SA. Anergy argues that it took over several debts of Batinew SA for an amount of approximately CHF 770’000,–, in return for the assignment of the patent applications. Accordingly, in May 2017, the same patent applications could not be transferred anymore by Batinew SA to defendants (1) and (2).

The defendants challenge the validity of the contract dated 1 February 2017 for various reasons. When Batinew SA had assigned the patent applications to the defendants in May 2017, it had still been the lawful owner. In the event that the transfer in May 2017 was invalid, the patent applications remained the property of Batinew SA — which has meanwhile been liquidated.

The patent applications at stake are:

    1. CH 00722/16 (published as CH 712 526 A1, see Swissreg);
    2. CH 00845/16 (published as CH 712 646 A1, see Swissreg);
    3. CH 00897/16 (published as CH 712 665 A1, see Swissreg);
    4. CH 00943/16 (published as CH 712 729 A1, see Swissreg);
    5. CH 01216/16 (published as CH 712 934 A2, see Swissreg); and
    6. CH 01325/16 (published as CH 713 010 A2, see Swissreg).

It appears that defendants (1) and (2) have previously attempted to assign the six patent applications to defendant (3), Keepall S.A., a company domiciled in Luxembourg (meanwhile liquidated).

From the pleadings at the hearing of 18 February 2021 in Neuchâtel, it could be understood that certain accounting documents might be available in support of plaintiff’s intention to take over Batinew’s debts in exchange for the assignment of the patent applications. However, a formal assignment contract had only been signed in April 2017, and the assignment had not been formally registered in Swissreg.

Now, could defendants (1) and (2) acquire ownership in May 2017 in good faith, when Batinew SA actually assigned the patent applications a second time? That’s still a highly controversial question under Art. 33(3) and (4) PatA, even though the Supreme Court had denied this almost 80 years ago (BGE 70 II 124), based on the PatA of 1907. See e.g. Mark SCHWEIZER in Patentgesetz (PatG), N 35 et seqq. re Art. 33 PatA.

During the continuation of the hearing on 19 April 2021 in Lausanne, two officers of Anergy plus stood up as witnesses, i.e. Mr Boris CLIVAZ and Mr Michel ROSSELLAT.

The court in particular enquired why it took so long, from late January till April 2017, for the assignment document to be signed. Mr CLIVAZ explained that two different options of actually establishing the company Anergy plus SA had been been considered, i.e. (i) by way of a name change of MGLB Holding Sàrl; or (ii) by founding a new company from scratch. Option (i) has ultimately been chosen;  MGLB Holding Sàrl is the former name of Anergy plus Sàrl.

A big ‘THANK YOU!’ to Benoît Gilligmann who has attended the hearings and kindly provided me with his notes.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_011 | Hearing of 18 February, cont’d on 19 April 2021

Anergy plus Sàrl (Commercial Register)
./.
(1)
(2)
(3)
François GEINOZ
Marcel CUENI
Keepall S.A. (liquidated)

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Ralph SCHLOSSER
    • Frank SCHNYDER

Judge-rapporteur:

    • n/a

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Stefano FABBRO (FLD)

Representative(s) of Defendant:

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My constant struggles with how the problem-solution approach is applied (or not)

Reading time: 10 minutes

Case No. O2018_004 | Decision of 14 December 2021

Part 1 of 2; to be cont’d in a separate post.

There is so much to write about this judgment that I hardly know where to begin. You might want to catch a glimpse of what is at stake on this Blog here. In my opinion, it is a judgment that would have deserved a headnote, maybe even more than one. A thorough discussion of all aspects will take some time. This is why I chose to take baby steps, to at least get things going. In this post, I will only address a tiny bit of the judgment concering the assessment of inventive step / problem-solution approach. A separat post will cover the other aspects of the decision, hopefully soon.

It hardly ever happens that I disagree with the assessment of inventive step in judgments of the FPC — as far as the result is concerned. But the reasoning sometimes puzzles me.

Case law should be predictable. Towards this end, it is comfy to have standardized tools at hand. This is where the EPO’s problem-solution approach comes into play (Guidelines, G-VII, 5) which the FPC has repeatedly indicated to apply. O2018_004 is no exception to the rule:

As a quick recap, the problem-solution approach involves three main steps:

    1. determining the ‘closest prior art‘;
    2. establishing the ‘objective technical problem‘ to be solved; and
    3. considering whether the claimed invention would have been obvious to the skilled person.

Even though case law should be predictable, individual judgments must be ‘right’. Accordingly, the judgment holds that the problem-solution approach shall not be formalistically but critically applied, to avoid hindsight bias, in particular in the formulation of the objective problem. I do concur (it’s even in the Guidelines, G-VII, 5.2, third but last paragraph).

The judgment goes on to explain why:

Losely translated to English:

If the effects or problems associated with the distinguishing features cannot be inferred from the closest prior art and are not obvious for the skilled person in light of the teaching of the closest prior art, the schematic application of the problem-solution approach can and usually will result in the identified ‘objective technical problem’ already giving an indication of problems or improvements in a certain direction which cannot be inferred from the closest prior art and which is remote therefrom.45

45 T 5/81 of 4 March 1982, OJ 1982, 249, ¶11; T 63/97 of 1 December 1997, ¶3.5; T 170/97 of 23 February 1998, ¶2.3; T 414/98 of 30 November 1999, ¶6.1.

That’s a looong sentence that I had to rehash several times to swallow it — and I am not sure if I’m done yet.

The decision goes on to hold:

In such situations, the objective technical problem must not be formulated in terms of the specific effects associated with the differentiating features; otherwise it would already give the skilled person a retrospective indication to even consider changes in a certain direction for improvements.

Well, … I disagree. It is perfectly fine in the problem-solution approach to include effects (Effekte) or problems (Problemstellungen) into the definition of the objective technical problem which are not disclosed or rendered obvious by the closest prior art. If that was not a given anymore, one would push the door gaping wide open for the test to deliver obviously wrong results.

Here is an example:

Let’s take a prior art document D1 that discloses a snow plow for mounting on a truck. The whole document is about the clever geometry of the plow itself. The mounting for connecting the plow to the truck is only shown schematically, not described in any detail. No discussion whatsoever about the mounting, or that there could be any issues with the mounting. Taken to the extreme: Let’s assume that D1 boldly holds that any mounting will be equally fine.

The later invention builds on the plow of D1, and improves the mounting. Let’s say, the inventive mounting for the plow is more strain resistant than any other mounting that had been known for snow plows of any kind. Let’s assume that this is due to rivetting instead of welding.

There is nothing wrong about a formulation of the objective technical problem to make the mounting of the plow according to D1 more strain resistant: If there is a secondary document or other teaching that fairly suggests a strain resistant mounting for a plow of the kind of D1, the invention is dead on arrival (rightly so). If not, an inventive step is to be acknowledged.

I would only see it differently in the rare case of the discovery of a previously unrecognised problem, so-called problem inventions. In the above example, let’s assume that previously known snow plow mountings rapidly broke and noone had ever understood why. If the issue of strain in comparable mountings had never ever been mentioned in the prior art, the formalistic appplication of the problem-solution approach would indeed lead to ‘wrong’ results. But, frankly, arguing for a problem invention typically is a desperate last resort, evidenced be a whole body of Case Law of the Boards of Appeal. What is more, posing of a new problem must be shown over the prior art as a whole (similar to a technical prejudice), not only vis-à-vis the closest prior art. And the burden is on the applicant / patentee to do so, not on the office or court to come up with it.

If it would happen once in a while that the problem-solution approach cannot / must not be applied as we all know it, then I would expect that this would be mentioned in the EPO Guidelines. But there is … nothing.

Next, the references to case-law of the Boards of Appeal in fn 45 (see above) made me worry whether I missed anything.

Let’s see:

T 5/81 of 4 March 1982 (OJ 1982, 249) is so old, it’s almost prehistoric. The decision even predates T 24/81 of 13 October 1982 which has outlined the problem-solution approach for the very first time. The reasoning in ¶11 of T 5/81 evolves around a comparison of the problem indicated in the closest prior art document and the problem defined in the application as filed. That had been one of many approaches at the time to tackle obviousness. But not so anymore today. T 24/81 in no way sets itself apart from the problem-solution approach.  

As to T 63/97 of 1 December 1997, I feel that the reference to ¶3.5 is besides the point. The definition of the problem (step ii., above) is already done in ¶3.4; ¶3.5 deals with the assessment of obviousness of the solution (step iii., above). I have a vague fealing that the reference is meant to point to ¶3.5.3, holding the following:

An interpretation of the documents as influenced by the problem solved by the invention while the problen was neither mentioned or even suggested must be avoided, such an approach being merely the result of an a posteriori analysis (see decision T 5/81, OJ EPO 1982, 249)

I do concur: Prior art documents must not be interpreted with hindsight. But this concerns the assessment of whether or not the solution had been obvious (step iii., above), not the definition of the objective technical problem (step ii., above).

Reference to T 170/97 of 23 February 1998 does not add much, at least at first glance. The objective technical problem is merely stated without any further ado in ¶2.3. What is interesting, though, is the reference to T 13/84, which is the decision that had introduced the concept of re-formulation of the problem in view of newly cited prior art. In T 13/84, the applicant argued that the preamble of the claim (reflecting the closest prior art) should relate to the same or a similar problem. The Board explicitly disagreed:

I have discussed a very similar issue on this Blog here in relation to the choice of the closest prior art, i.e. when it had been held in O2015_008 that the objective technical problem that is used for the problem-solution approach shall have a «basis or motivation in the closest prior art» document. I feel that T 13/84 supports my view that this is not correct.

T 414/98 of 30 November 1999 is besides the point, again. Reference to ¶6.1 concerns the assessment of obviousness of the solution in the problem-solution approach, i.e. step iii., above. The definition of the objective technical problem is being dealt with in ¶5, in no special way.

In sum, none of the references in fn 45 supports the view that there is a systematic issue with the problem-solution approach when «effects or problems associated with the distinguishing features cannot be inferred from the closest prior art.» If that was indeed an issue, it would almost certainly have been dealt with in quite a number of decision of the Boards of Appeal meanwhile: There are thousands of decisions that have applied the problem-solution approch, over a timeframe of four decades. But it appears that there is not a single precedent.

Now that you followed me through this lenghty exercise to establish a line of reasoning why this approach is mistaken, you might wonder:

Does it make a difference?

Not in the present case, I believe. The secondary reference is technologically so remote from the closest prior art that one could well have denied obviousness in step iii. of the standard problem-solution approach.

But that does not mean it is irrelevant. It significantly impairs predictability of case-law, without any apparent need.

What is more, it might well make a difference in another case, which it shouldn’t. The problem-solution approach is an extremely valuable tool to ensure predictability of case-law since about 40 years in thousands of Boards of Appeal decisions, and tens of thousands of decisions to grant or refuse patent applications at the EPO on (non-)obviousness — each year.

The problem-solution approach surely is not the one and only tool to assess obviousness. But since the FPC opted to apply it as a rule, I would hope that it is only modified with a trembling hand if there really is a need for it. Apart from problem inventions, I cannot see any.

UPDATE 14 May 2021:

The decision has been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_004 | Decision of 14 December 2021

Synova AG
./.
(1)
(2)
(3)
(4)
Avonisys AG
Stephan MOHREN
Jens GÄBELEIN
Jeroen HRIBAR

Panel of Judges:

    • Dr. Andri HESS
    • Dr. Tobias BREMI
    • Lara DORIGO

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Michael RITSCHER (MLL)
    • Louisa GALBRAITH (MLL)
    • Werner ROSHARDT (Keller Schneider), assisting in patent matters
    • Stephan KESSLER (Keller Schneider), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Ralph SCHLOSSER
    • Dr. Regula RÜEDI (Blum), assisting in patent matters
    • Dr. Christoph ENGELBRECHT (Blum), assisting in patent matters
    • Dr. Zacharias STELZER (Blum), assisting in patent matters

DECISION IN FULL

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The FPC’s Annual Report 2020

The official Annual Report 2020 of the FPC has been published yesterday. It comes along with an Executive Summary as follows:

At 22, the number of incoming cases remained virtually unchanged compared to the previous year (21 in the previous year). The number of ordinary proceedings increased (18, 13 in the previous year), while the number of summary proceedings decreased (4, 8 in the previous year).

During the reporting year, the Federal Patent Court handled 14 ordinary proceedings, of which two were settled and seven terminated by judgment. One set of proceedings was not admitted and four were declared groundless. A total of three summary proceedings were disposed of during the reporting year, of which one was terminated by judgment and two were declared groundless. The number of cases pending by the end of the year increased slightly (25, 21 in the previous year).

At CHF 796’605, income was down on the all-time high of the previous year (CHF 1’051’936) due to fewer cases being terminated. As expenses were also considerably lower (CHF 1’566’306, CHF 1’753’918 in the previous year), the coverage ratio is still a considerable 51% (all-time high of 60% in the previous year).

A closer look at the numbers

The overall number of incoming cases is slightly on the rise again, after two years of decline:

dyerware.com


 

I am not sure whether it makes much sense to do statistics with these small numbers. But it is always fun to look for pattern. What about this one: A year with a (very) high number of incoming cases (2013 and 2017) is followed by two declining years (2014/15 and 2018/19) and two increasing years (2016/17 and 2020/21)? Anyone taking the bet that 2021 will show again an increase in the overall number of incoming cases?

The overall number of concluded cases fell sharply from an all-time high in 2019 to an all-time low in 2020:

dyerware.com


 

The backlog increased slightly, from an all-time low (20 cases) in 2019 to 25 cases (24/1 main/summary proceedings), which still is the second lowest backlog:

dyerware.com


 

«What had been the rule in the early years of the FPC (and a selling point, so to speak) has meanwhile become the exception: A settlement by compromise.» This is what I wrote already last year. And the trend is continuing: Only about 14% of the main proceedings were disposed of by compromise, and not a single case in summary proceedings. This is an all-time low, by far.

dyerware.com


 

Which is good for me: A non-settled case will be published and can be commented here … 😉

Beyond the numbers

German is still by far the most frequently used language at the FPC. All(!) main proceedings filed with the FPC in 2020 were handled in German, even though the parties agreed in two of them to use English in their written submissions and pleadings.

The pandemic did not significantly impair the FPC’s proceedings. No hearings were held during the first lockdown in spring 2020, and in-person hearings have since resumed with protective measures in place (social distancing, face masks and spex screens).

As to instruction hearings, the FPC rejected requests to broadcast them by videoconference for participants to join who could not attend in person due to travel restrictions. The FPC held that the confidential nature of the settlement discussions do not allow for videoconferencing.

Finally, the FPC notes that the cooperation with the FAC went very smoothly on operative levels. However, the FPC also notes that it requested to be involved early on in projects of the FAC that directly affect the FPC. It is specifically referred to the equipment of the courtrooms (which in fact are mainly used by the FPC) and the business administration software.

This is a pretty lengthy note in the Annual Report. I wonder whether this is only an advance notice / wish of the FPC to be involved, or whether something already did not work out to the FPC’s satisfaction.

Reported by Martin WILMING

ANNUAL REPORT 2020

The Annual Report is also available in German, French and Italian language.

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Referral to the Enlarged Board of Appeal re video-conferencing: All you need to know for now

Reading time: 4 minutes

As reported by the IPKat, with reference to a note of Reddie & Grose on their website, a referral to the Enlarged Board of Appeal is currently in the making. The legality of oral proceedings conducted as video-conference will be looked at.

Note, however, that the referral has not yet been made as per today.

The docket to watch is EP 1 609 239. The parties had not consented to oral proceedings by video-conferencing, but they have nevertheless been summoned to a video-conference. The minutes of the oral proceedings of 8 February 2021 hold:

After deliberation by the Board, the Chairman informed the parties that the Board will refer a question to the Enlarged Board of Appeal. The decision will be given in writing.

The composition of the to-be-referring Board 3.5.02 of Chaiman Richard LORD has then been changed on 11 February 2021; Wilhelm UNGLER (legal member) has been appointed as an additional rapporteur besides Fabian GIESEN (technical member).

One of the parties had filed an auxiliary request by Email, apparently during the oral proceedings. Since the request was in German, I suspect that it was filed by the opponent / appellant. It losely translates as follows:

We hereby submit the auxiliary request to submit to the Enlarged Board of Appeal for decision the question whether oral proceedings pursuant to Art. 116 EPC may be replaced by a video-conference if the parties do not agree thereto.

(On the fun side: Does that mean that a video-conference had been okay if the main request had been granted?)

I don’t think that this will be the question finally being referred to the EBoA because it already assumes that a video-conference is something different than oral proceedings pursuant to Art. 116 EPC. This, in my perception, is already part of the problem to be finally resolved by the EPO.

Once the referral has actually been made, cases with parties being summoned to oral proceedings by video-conference without their consent will likely be stayed. This will concern quite a lot of cases. Accordingly, I would expect that the EBoA will pick it up as soon as possible, like G 2/19 (Haar vs Munich) which had been resolved in less than five months.

UPDATE 16 March 2021:

Decision T 1807/15 of 12 March 2021 (see below) refers the following question to the EBoA:

«Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?»

What is to be hoped for

I am a big fan of oral proceedings in person; see e.g. this Blog here.

Still, I feel it would be a disaster if the EBoA concluded that a whole lot of unsolicited oral proceedings by video-conference during the pandemic were illegal. What I do hope for though is that the EBoA paves the way back to oral proceedings in normal times / after the pandemic as we had been used to have them at the EPO: In person, at least for those who expressly do not consent with video-conferencing.

The best piece of research in this respect that I have seen by now is from Tilman PFRANG, available here.

Further, many submissions have been made during public consultation on the new Art. 15a of the Rules of Procedure of the Boards of Appeal that expressly provides for video-conferencing (at the discretion of the respective Board). Not even a summary of all the submissions is available to date, but quite some associations have made their submissions publicly available. This is a wealth of information on the issue:

If you are aware or come across further publicly available submissions, please let me know and I will include them here.

UPDATE 19 February 2021:

The (very brief) summary of responses to the online user consultation on Art. 15a has been published earlier today; see here.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory Decision of 12 March 2021

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Compad Consulting and Werner & Mertz litigating over entitlement to a patent

Reading time: 2 minutes

As reported by Christopher GILB in the Luzerner Zeitung today, there is some litigation going on at the FPC about entitlement to a European patent pertaining to a washing agent that is free from palm oil.

Where’s the patent?

It appears that Werner & Mertz (well known e.g. for its brands Erdal® and Frosch®) has sued the Swiss start-up company Good Soaps for lack of entitlement to the patent, i.e. unlawful usurpation thereof.

The patent has not been identified in the news. I could not leave it at that and did my homework. The patent application at stake is EP 2 592 134 »; the currently registered applicant is Compad Consulting GmbH. See the European Patent Register for further information. The file wrapper is telling: The complaint of 9 January 2019, the reply of 20 September 2019 (including all appendices) as well as the comments on the rejoinder of 5 December 2019 are available online. The instruction hearing took place on 8 July 2019 — without a settlement being reached.

The main hearing is said to be scheduled for 16 September 2020. I trust this will get interesting …

UPDATE 19 August 2020:

The official announcement of the main hearing has just been published by the FPC. No surprises anymore, it’s indeed all about EP 2 592 134 ».

Reported by Martin WILMING

Header image courtesy of T. K. Naliaka, under CC BY-SA 4.0

BIBLIOGRAPHY

Case No. O2019_001

Werner & Mertz
./.
Compad Consulting GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Dr. Frank SCHAGER

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant / Counterclaimant:

PATENT APPLICATION IN SUIT

Clean version of the DREX, i.e. the version for which the EPO indicated its intention to grant a patent:

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No cherry-picking: Supreme Court endorses EPO case-law re singling out

Reading time: 3 minutes

Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma’s EP(CH) 2 425 821 B1 and EP(CH) 2 425 824 B1 had been revoked by the FPC with decision of 7 November 2019; O2017_009. Accordingly, MundiPharma’s counterclaim for infringement failed. A detailed comment on that decision is available on this Blog here.

MundiPharma had appealed the decision, but only with respect to EP(CH) 821:

The decision of the Supreme Court gives an overview of some relevant decisions of the Boards of Appeal of the EPO concerning Art. 123(2) EPC in ¶ 3.2, which the Supreme Court apparently endorses without hesitation. As to the matter at hand, the Supreme Court confirms that the FPC had correctly applied these principles and that the subject-matter of EP(CH) 821 is the result of an unallowable singling out of at least two features from different lists. The resulting combination of features, i.e. the weight ratio of oxycodone to naloxone of 2:1 in combination with the reduction of obstipation, is not directly and unambiguously disclosed in the application as originally filed; see ¶¶ 3.3 and 3.4. In particular, MundiPharma could not establish how the skilled person would have derived the specific weight ratio and the reduction of obstipation in combination from the application as filed:

Further, the Supreme Court did not spot a violation of MundiPharma’s right to be heard because the FPC allegedly did not take the skilled person’s knowledge into account. The Supreme Court holds that the FPC in fact did take it into account, and that MundiPharma essentially only argues that it had a different opinion of how the law and case-law should be applied to the case at hand:

Finally, the Supreme Court dealt with MundiPharma’s objection concerning the apportionment of costs. It may well be that in a nullity case the necessary expenses incurred by the assisting patent attorney exceeds the amount that can be refunded for legal representation according to the tariff:

Oral proceedings before a Board of Appeal in co-pending proceedings at the EPO are scheduled for 23 September 2021, to be continued on 24 September 2021 if necessary. No preliminary opinion of the Board is available yet.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_613/2019 (Supreme Court) | Decision of 11 May 2020 on appeal against O2017_009 (FPC) | Decision of 7 November 2019

MundiPharma Medical Company (Appellant / Defendant)
./.
Develco Pharma Schweiz AG (Respondent / Plaintiff)

Panel of Judges:

    • Dr. Christina KISS
      • Dr. Fabienne HOHL
      • Dr. Martha NIQUILLE
      • Dr. Yves RÜEDI
      • Marie-Chantal MAY-CANNELLAS

Court Clerk:

    • Christian STÄHLE

Representative(s) of Appellant / Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)

Representative(s) of Respondent / Plaintiff:

DECISION OF THE SUPREME COURT
→ appeal against FPC decision to revoke EP(CH) 2 425 821 B1
Case no.: 4A_613/2019
Decision of: 11 May 2020
The unredacted decision had been submitted by the Respondent / Plaintiff in the co-pending opposition / appeal proceedings at the EPO:

DECISION OF THE FPC
→ Revocation of EP(CH) 2 425 821 B1
Case no.: O2017_009
Decision of: 7 November 2020

PATENT IN SUIT

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No April Fool’s joke: A hard move to videoconferencing at the EPO

Reading time: 8 minutes

I guess most of us have implemented certain changes to business procedures, due to the Covid-19 crisis. There is certainly some truth in the following ‘multiple choice questionnaire’ which I have recently seen first on Twitter (@MBA_ish):

Digitalization driver

Challenging times demand for creative solutions. This certainly holds true for the EPO, too. Clearly, the EPO should not and cannot be shut down completely in these times.

But how to deal with oral proceedings, when crowds of people should be avoided and with all those travel restrictions in place?

The EPO’s approach is to make videoconferencing the general rule for oral proceedings before Examining Divisions; see the Decision of the President of the EPO of 1 April 2020 and the Notice from the EPO of same date.

According to the President’s Decision (Art. 1), face-to-face oral proceedings will only be held

 […] if there are serious reasons against holding the oral proceedings by videoconference such as, in particular, the need to take evidence directly.

The Notice of the EPO (¶3) makes clear that there may be other serious reasons for not holding a videoconference,

[…] for example where an impediment prevents an applicant or representative from participating in oral proceedings held by videoconference.

But at the same token, the Notice makes clear that

[s]weeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard. Equally, the need to consider written evidence will not qualify as a serious reason.

That’s a pretty drastic change — not only during the current pandemic, but even thereafter. Even though videoconferencing as a means for conducting oral proceedings has been available at the EPO since 1998(!) (see OJ EPO 12/1997, 572), it had not gained much practical relevance. To the best of my knowledge, less than 10% of oral proceedings before Examining Divisions had actually been held by videoconference, even in recent times.

Why is that?

First, it is my understanding that it was the EPO that refused requests for videoconferencing quite often. Thus, there was a demand for more videoconferences.

Second, there are people like me. Of course there are pros and cons for both, videoconferencing and face-to-face oral proceedings. You may call me a flat-earther, but I am a big fan of face-to-face hearings. I would never opt for a videoconference in an important case that is at the brink of being refused (which is why one normally is summoned to oral proceedings, right?). Oral proceedings are the last chance to convince the ED that a patent should be granted. There is more to oral proceedings than just the spoken word and a tiny, delayed and sluggish image of the person who is speaking. Compared to a face-to-face hearing, videoconferencing to me clearly is no more than a second-best solution.

If the case at hand is of less importance for a client, a videoconference might well suffice — and I would no doubt make use of videoconferencing in such cases. It all boils down to costs. But there is a difference between cost-worthy and cheap. When I go to oral proceedings, I do make sure that it is cost-worthy in view of the importance of the case for the client, and I am convinced that I can do the best for my client in a face-to-face hearing.

It is hard for me to accept that a second-best solution is now being implemented on the rush as a standard for conducting oral proceedings before EDs. It may be pragmatic in the current situation, and it may be cost-effective in general. But:

Imposing videoconferencing on all users as a general rule, with very limited exceptions, is not user-friendly.

In my perception, there would well have been other, far less strict possibilities to promote increased usage of videoconferencing, e.g. by just accepting the videoconferencing request of parties that are willing to do the oral proceedings by videoconference.

See also the News Release on the epi‘s website: The President of the EPO had sent a letter to epi (received on 27 March 2020) informing about the planned changes, and user representatives have been informed about it at the SACEPO Working Party on Rules meeting of 31 March 2020. epi expressed concerns with letter of same day; these concerns had also been expressed in the said SACEPO WPR meeting.

UPDATE 20 April 2020:

Some Italian colleagues raised their concerns in an open letter of 11 April 2020 to the President of the EPO; the letter is available here.

UPDATE 22 April 2020:

epi is collecting the experiences of users with video conferencing before Examining Divisions and Opposition Divisions (according to the EPO pilot program). Please report good or bad experiences. Have your say on the epi forum here (EDs) and here (ODs). Thank you.

UPDATE 1 May 2020:

As reported on Kluwer Patent Blog, the EPO’s Central Staff Committee (CSC) apparently commented on the EPO’s intranet  as follows (hyperlinks added, for ease of reference):

[It]would make sense to align the Office with the practice as well as with emergency provisions of its host countries. This would also appear mandated by the Protocol on Privileges and Immunities.

Holding oral proceedings as distributed videoconferences with the members of the division participating at different locations in the Office or at home is part of your initiative of generalising and making teleworking mandatory, which constitutes a fundamental change in the working conditions of a[n] major part of staff. It must therefore be subject to statutory consultation with the COHSEC [Central Occupational Health, Safety and Ergonomics Committee] and the GCC [General Consultative Committee] in accordance with Articles 38(2) and 38a(3) ServRegs.

Since it has been decided to extend the new procedures for oral proceedings in examination beyond the current Corona crisis, in-depth consultation is necessary. The same applies to opposition oral proceedings for which this new procedure appears likewise here to stay.

Opposition oral proceedings are by law public proceedings, cf. Article 116(4) EPC. It is not at all clear how this is guaranteed if the hearing is conducted as a ViCo (see e.g. T1266/07, points 1.2 and 1.3). The preliminary guidance given in VP1’s announcement (…) states that if the division “receive[s] requests of public to attend opposition proceedings performed via ViCo” it should “contact [its] line manager”, presumably that of the first examiner. Aside from the fact that the line manager is not competent for interfering with the discretionary decisions of the Divisions, the public does not need to “request” attendance, or to announce it in advance. A possibility for the public to attend should therefore be guaranteed in all cases, regardless of any advance request. The guidance thus brings examiners into a conflict between the expectations of management and the requirements of the EPC.

A problem of breach of confidentiality might further arise if members of divisions were not able to adequately isolate themselves, especially during examination non-public OP’s and during deliberations.

[A] yet unknown number of examiners cannot establish simultaneously both a Skype for Business connection and an EPO network connection via Pulse-VPN, as would be required for ViCo OPs, because the network hosts the application documents and the EPO email account. Only either connection works fine by itself.

At present there are no clear laws, no guidelines and no technical facilities to allow distributed oral proceedings in examination and opposition proceedings. In the latter case, even “non-distributed” ViCos with divisions on the Office premises would at present not rest on a solid legal basis.

The measures presently foreseen should be immediately halted and reviewed, also involving the Staff Representation.

In view of the additional strain on the examiner’s mental health, we can at present only advise divisions to judiciously choose, weighing all circumstances, whether to conduct oral proceedings by ViCo or rather to postpone them to a later date until circumstances for conducting them either as a classical ViCo from the Office premises or as “standard” proceedings in person are restored.

Note that I cannot independently verify that this is taken verbatim from the EPO’s intranet, but at least I have no reason to doubt that this is the case.

Reported by Martin WILMING

LETTER OF epi

LETTER OF EPO PRESIDENT

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A patent that might need some further reinforcing elements

Reading time: 6 minutes

Case No. O2018_017 | Hearing of 18 November 2019

Aschwanden’s logo

F.J. Aschwanden on the one hand, and acG Holding and Andreas (André) Robert on the other hand are litigating over the validity of EP 2 475 827 in Switzerland.

Basys’ logo

From the earlier case S2018_005, it is known that Basys is the exclusive licensee of EP 827; Aschwanden’s ‘Dura Box‘ line of products (illustrated in the header image) had been asserted to infringe EP 827.

EP 827 pertains to reinforcing elements that can be integrated in concrete walls in order to support recesses for conduits (water, electricity, etc.). Opposition proceedings are currently pending at the EPO, and the parties have been summoned for oral proceedings on 31 March 2020. One of the two opponents is F.J. Aschwanden, i.e. the plaintiff in the present case. The second opponent is Jordahl H-Bau AG.

Noteworthy, the patentees have submitted two auxiliary requests in the EPO opposition proceedings on 16 January 2019, and for the second auxiliary request (AR2) the OD provisionally acknowledged at least novelty over the cited prior art in the interim assessment attached to the summons of 26 June 2019.

The hearing started with a somewhat odd interaction. As is customary, the people present for both parties were introduced by their respective lawyers. Mr Maier was referred to as their ‘patent representative’ (‘Patentvertreter’). The President raised his eyebrows and interjected with the question of whether Mr Maier was an admitted representative (‘zugelassener Vertreter’). Apparently, some phrasing in the briefs may have been understood as if Mr Maier identified himself as a patent attorney. Mr Maier immediately responded that this was a mistake, and that he was indeed not a patent attorney (‘Ja, das ist nicht ganz korrekt …’).

The hearing continued with a more substantial blow to defendant’s case. The President informed the parties that defendant’s further auxiliary requests (corresponding to the two auxiliary requests from the co-pending EPO proceedings) would not be admitted into the proceedings. Those requests could well have been submitted already with the rejoinder, but the defendants failed to do so. As a consequence, the court did not admit them into the proceedings; Art. 292 CPC. Note that the second auxiliary request (AR2) was the only one that was provisionally considered to be new over the cited prior art by the OD in the summons, and the judge-rapporteur’s expert opinion on the claim sets submitted before the closure of the file has apparently been rather negative for the patentee, in our perception of what has been discussed at the hearing.

Even though the further auxiliary requests had not been admitted into the proceedings, a substantial part of the pleadings was about the merits of those requests.

Interestingly, defendants requested to delay a judgment until after the EPO’s OD will have decided in the co-pending opposition proceedings. Defendants’ argument seemed premised on the expectation that the opposition division would maintain EP 872 in accordance with AR2. In that case (and, of course, when no appeal is lodged, or if the decision is affirmed by the Boards of Appeal), AR2 would become ex tunc the relevant claim set of EP 872.

As mentioned, AR2 was not admitted into the Swiss proceeding. Thus, so defendants, a conflicting judgment may be the result if the FPC found EP 872 invalid as the decision would be based on a claim set that had formally never been granted. Note that defendants only asked for the judgment to be delayed, but not for the proceedings to be suspended. Apparently, the latter had already been requested in the past but denied by the court.

Note that the Swiss PatA in no way precludes nullity actions while opposition proceedings are still pending, contrary to Art. 81 of the German PatA. The German Supreme Court did not make any difference between German and European opposition proceedings in this respect — but only in 2005, which was somewhat surprising to me; see X ZR 29/05. In Switzerland, nullity proceedings or the judgment may be suspendend while European opposition proceedings are ongoing; Art. 128 PatA. /MW

As always, the President asked the parties whether they were interested in settlement discussions. Both parties indicated that they would be very interested in a licensing agreement. However, the plaintiff stated that he was absolutely not going to pay for such a license, while defendants said that they would absolutely not give away a license for free. The President asked if they would at least listen to a proposal by the court, to which both parties responded affirmatively before the session closed.

Reported by Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. O2018_017 | Hearing of 18 November 2019

F.J. Aschwanden AG

./.

  1. acG Holding AG
  2. Andreas (gen. André) ROBERT

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Natalia CLERC
    • Dr. Kurt SUTTER

Judge-rapporteur:

    • Natalia CLERC

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Christoph KÜNZI (CBK)
    • Tarik KAPIC (Bovard), assisting in patent matters

Representative(s) of Defendant / Patentee:

    • Felix GRETHER (EBD)
    • Daniel MAIER (euromaier), assisting in patent matters but not being a patent attorney
    • Hermann-Josef FLECK (Jeck & Fleck), representative of the patentee in EPO proceedings

ANNOUNCEMENT

PATENT IN SUIT

EPO SUMMONS

EPO AUXILIARY REQUEST 2

RELATED CASE S2018_005


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Déjà vu? Indeed! Mundipharma’s EP’825 declared invalid for the second time

Reading time: 2 minutes

Case No. O2016_017 | Decision of 21 June 2019

The patent at stake is, again, MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg. Besides Acino Pharma AG, the plaintiff in the present proceedings, Develco had also successfully sought annulment of the very same patent in parallel proceedings O2016_016; see this Blog here.

Both Acino Pharma and Develco had raised essentially the same arguments with respect to undue extension of subject-matter. Unsurprisingly, the FPC came to the same conclusion: The patent is invalid, the counterclaim for infringement has been dismissed accordingly. Thus, I cannot add much on the merits over what I have already discussed on this Blog here.

On the more procedural side, I would assume that these two cases could pretty efficiently be dealt with by the FPC: Same panel of judges, same judge-rapporteur, same patent, essentially the same arguments. Actually, the expert-opinion of the judge-rapporteur had been issued on the same day, and the judgments are literally identical to large extent. Still, the court fee has been set to kCHF 60, i.e. well according to the regular tariff. Given the circumstances, I wonder whether the court fees could (should?) have been significantly reduced?

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_017 | Decision of 21 June 2019

Acino Pharma AG
./.
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Acino:

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Renato BUCHER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters
  • Dr. Andreas LEDL (Maiwald), assisting in patent matters

DECISION IN FULL

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PATENT IN SUIT

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Lilly’s patent on combination of pemetrexed and vitamin B12 challenged

Case No. O2018_003 ¦ Hearing of 17 June 2019

Reading time: 6 minutes

The patent in suit is Lilly‘s EP 1 313 508 B1; see the EPO Register and Swissreg for further information. The independent claims of EP’508 read as follows (emphasis added):

1.   Use of pemetrexed disodium in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof, said pharmaceutical derivative of vitamin B12 being hydroxocobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-chlorocobalamin perchlorate, azidocobalamin, chlorocobalamin or cobalamin.

12.   A product containing pemetrexed disodium, vitamin B12 or a pharmaceutical derivative thereof said pharmaceutical derivative of vitamin B12 being hydroxocobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-chlorocobalamin perchlorate, azidocobalamin, chlorocobalamin or cobalamin, and, optionally, a folic binding protein binding agent selected from the group consisting of folic acid, (6R)-5-methyl-5,6,7,8-tetrahydrofolic acid and (6R)-5-formyl-5,6,7,8-tetrahydrofolic acid, or a physiologically available salt or ester thereof, as a combined preparation for the simultaneous, separate or sequential use in inhibiting tumor growth.

It’s all about a combination of the antifolate pemetrexed disodium, vitamin B12 and, optionally, folic acid. Briefly, pemetrexed is an antifolate that inter alia inhibits synthesis of thymidine and thus de novo DNA synthesis. Evidently, antifolates are quite toxic. But according to EP’508, toxicity can be successfully controlled by co-administration of pemetrexed with vitamin B12 and, optionally, folic acid.

Pemetrexed disodium
Pemetrexed disodium

EP’508 had already been litigated in infringement proceedings in Switzerland, resulting in a landmark decision of the Supreme Court on the Doctrine of Equivalents and how amendments of the patent during prosecution are to be dealt with in this respect; see this Blog here.

This time, validity of EP’508 is being challenged, based on a lack of novelty or, at least, lack of an inventive step; and added matter. Only inventive step has been pleaded in the hearing. With respect to the other grounds of nullity, the Sandoz merely referred to the written submissions.

It was evident from the pleadings that the opinion of the judge-rapporteur had been in favour of the defendant. This interim opinion is in line with the decision of an EPO opposition division, the Rechtbank Den Haag (Case No. C/09/533354 / HA ZA 17-581; judgment available as Dutch original and inofficial English translation), the IP High Court of Japan and the U.S. CAFC. On the other hand, the German Federal Patent Court had revoked the German part of EP’508; an appeal before the Supreme Court is still pending.

Sandoz’s logo

Sandoz started from Jackman as closest prior art in the assessment of inventive step. With reference to Worzalla et al., Jackman describes experiments in which pemetrexed was administered alongside with folic acid. Further, phase I clinical trials had been reported in which pemetrexed was administered together with folic acid (Hammond et al.). In consideration of the biochemical pathways, Sandoz argued that it had been obvious to add vitamin B12 to said known combination.

Lilly’s logo

Eli Lilly of course disagreed. In Lilly’s view, the skilled person would not have pursued a combination of pemetrexed and folic acid, let alone to add vitamin B12. In real life, phase II clinical trials began with pemetrexed alone, irrespective of the experiments of Hammond et al. Toxicity of pemetrexed had intially been deemed controllable. It was only in the course of phase II clinical trials that the therapy scheme was switched because toxicity was found to be too severe.

A significant point of discussion was whether a skilled person would have been motivated to add vitamin B12 in light of some marker experiments. Niyikiza, the main inventor of the patent in suit, had published a report that described a correlation of pemetrexed toxicity with an unspecific marker (homocysteine), but not with the vitamin B12-specific marker MMA (methlymalonic acid). Accordingly, in Lilly’s view, a skilled person would not have been prompted towards the invention.

Reported by Andreas WELCH and Martin WILMING

BIBLIOGRAPHY

Case No. O2018_003 ¦ Hearing of 17 June 2019

Sandoz Pharmaceuticals AG
./.
Eli Lilly and Company

Panel of Judges:

  • Dr. Daniel ALDER
  • Dr. Roland DUX
  • Marco ZARDI

Judge-rapporteur:

  • Dr. Roland DUX

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Markus WANG (Bär & Karrer)
  • Christoph FRAEFEL (SBMP), assisting in patent matters

Representative(s) of Defendant:

ANNOUNCEMENT

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PATENT IN SUIT

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Multicasting and Software: Too soft to be described?

Case No. S2018_001 | Decision of 23 May 2018 | ‘Vorsorgliche Massnahmen / Beschreibung’

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.

The plaintiff Two-Way Media requested that, in accordance with Art. 77(1) lit. b PatA, a precise description be made of certain infrastructure and processes relating to Swisscom’s internet-based televion (IPTV) products Swisscom TV 1.0, Swisscom TV 2.0 and TV Air. Swisscom was one of the first providers worldwide of IPTV, with about 1m customers already in 2013; see here.

Screenshot www.swisscom.ch
Screenshot www.swisscom.ch; see live here
  1. What the patents are all about

The two patents in suit are EP 2 323 333 B1 (see the EPO Register and Swissreg for further information) and EP 2 278 775 B1 (see the EPO Register and Swissreg for further information). Both patents have already lapsed in May 2017.

The patents generally relate to the communication of audio or video content over a network, such as the Internet. More specifically, certain processes and products for the provision of real-time audio and/or video communication services to a wide range of users are concerned.

The patents propose a multi-casting system with a scalable distribution architecture and a scalable control architecture that provides for superior management and administration of users who are to receive the information. In addition to the provision of real-time audio and/or video communication services to a large number of users, the operator can also provide related follow-on offerings based on the behaviour of a user who has registered and authenticated himself in advance.

  1. Parallel proceedings elsewhere

The defendant inter alia argued that validity of the patents was doubtful, with reference to a decision of the CAFC in the U.S. and the fact, that infringement proceedings based on validations of both European Patents in Germany are stayed while nullity proceedings are pending.

However, the reasoning from the U.S. could not be applied to the present matter, and the defendant did not provide any material arguments for invalidty. The decision thus holds that invalidity has not been sufficiently substantiated.

Eine materiell-inhaltlich begründete Auseinandersetzung zur Nichtigkeit der hier massgeblichen Streitpatente wird von den Beklagten nicht vorgetragen und eine solche ist daher nicht glaubhaft gemacht.

  1. Legitimate interest

The decision holds that the requests at least partially pertain to facts which are accessible to the plaintiff even without judicial intervention, and that it therefore is questionable whether there is a legitimate interest to that extent; Art. 59(2) lit. a CPC.

Further, the decision holds that it was not clear to what extent the current state of affairs could allow conclusions to be drawn for a possible patent infringement before May 2017. The plaintiff could and should have argued that the current system of the defendant corresponds to the system in place at the time before the expiry of the patents, or to what extent which current facts allow conclusions to be drawn about the system in place at that time.

  1. Financial claims

As mentioned above, the patents in suit have already lapsed. Thus, only infringment in the past is at stake — incl. compensation for damages, and the right to information.

The decision holds that a description according to Art. 77(1) PatA indeed is possible even after a patent has lapsed.

Wenn eine Beschreibung auch dazu dienen kann, um Beweismittel zu beschaffen bzw. um die Prozessaussichten für Verletzungshandlungen während der Wirksamkeit bzw. der Gültigkeitsdauer eines Patents abzuklären […], dann muss sie grundsätzlich auch nach Erlöschen des Patents möglich sein. […] Es genügt, wenn ein der Klägerin zustehender Anspruch verletzt ist. Demnach schliesst Art. 77 PatG die Anrufung eines bloss finanziellen Anspruchs nicht aus.

However, the decision further holds that the plaintiff has to substantiate his financial claims with the request for description, but did not do so.

Allerdings ist […] der der Klägerin zustehende finanzielle Anspruch, resultierend aus einer in der Vergangenheit erfolgten Patentverletzung, zu substantiieren und glaubhaft zu machen. Zu Schaden, Widerrechtlichkeit und Kausalität eines konkreten Schadens äussert sich die Klägerin jedoch nicht; ein ihr zustehender Anspruch wurde damit nicht einmal substantiiert behauptet.

On a personal note: Isn’t that at odds with the hn and reasons of O2013_008?

  1. How to describe software-implemented processes

The defendant argued that software-implemented processes were not accessible to sensual perception and could therefore not be the subject of a precise description within the meaning of Art. 77(1) lit. b PatA.

The FPC did not agree. Rather, everything that can be described technically in the context of an inspection is accessible to a precise description. But when the target of the description cannot be directly assessed, then it is the plaintiff’s task to to give precise instructions how to obtain specific findings so that the software-implemented processes can be concluded from such findings.

Die Klägerin hätte, um ihrer Substantiierungspflicht nachzukommen, mit ihrem Gesuch konkret angeben müssen, wie was wo genau beschrieben werden kann und soll bzw. welche angeblich gespeicherten Informationen wie angezeigt und betrachtet werden können.

Welcome to the jungle

The decision gives some examples of how software-implemented processes could be indirectly described, e.g. by measuring temperatures in a software-controlled manufacturing process. But how would you do that when only data is concerned, and you cannot know how the data is actually handled by the defendant? Is a description then really available? Reading between the lines of the decision, I have my doubts. The decision suggests that there may well be situations where a plaintiff just cannot meet his burden of substantiation.

Kann oder will der Antragsteller seiner diesbezüglichen Substantiierungslast nicht nachkommen, kann ihm das Gericht dies nicht abnehmen ohne die Dispositionsmaxime zu verletzen (Art. 55 Abs. 1 ZPO).

The FPC thus dismissed the request for a precise description.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2018_001 | Decision of 23 May 2018 | ‘Vorsorgliche Massnahmen / Beschreibung’

Two-Way Media Ltd.

./.

  1. Swisscom (Schweiz) AG
  2. Swisscom AG

Panel of Judges:

  • Dr. Rudolf RENTSCH
  • Peter RIGLING
  • Frank SCHNYDER

Judge-rapporteur:

  • Peter RIGLING

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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EP 2 323 333 B1

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EP 2 278 775 B1

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Change of practice re legitimate interest in a negative declaratory judgment

This Supreme Court judgment relates to an antitrust matter, but will have implications for ‘forum running’ in general.

The Supreme Court has published a decision earlier this week in an antitrust matter that changes the Swiss practice with respect to the required legitimate interest in a negative declaratory judgment; 4A_417/2017.

Swatch brands

When the Swatch Group introduced a selective distribution system for its spare parts, it stopped cooperation with a British wholesaler at 31 December 2015, after a transition period of more than 12 months. The wholesaler threatened Swatch Group with letter of 16 March 2016 with a suit before the High Court of Justice in London, without further notice, if it would not again be supplied with spare parts by 6 April 2016; a draft complaint had already been attached.

The time limit was later extended to 20 April 2016. In a smart move on 19 April 2016, Swatch Group requested a negative declaratory judgment at the Commercial Court of Berne. The British wholesaler filed his suit at the High Court of Justice in London on 29 April 2016.

Notably, the earlier decision BGE 136 III 523 of the Supreme Court held that the mere interest to fix a place of jurisdiction (‘forum running’) is not sufficient legitimate interest for requesting a negative declaratory judgment. Consequently, the Commercial of Berne denied the legitimate interest and did not consider the case with decision of 26 June 2017. Swatch Group appealed to the Supreme Court, aiming to change this practice. And it did so; see the Supreme Court’s press release.

At least in an international context, ‘forum running’ now is to be considered as sufficient legitimate interest for a declaratory judgment. The case has been remitted to the Commercial Court of Berne for further assessment.

Now, let’s wait for the first creative ones to use this in a patent case!

Reported by Martin WILMING

4A_417/2017 (new practice)

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PRESS RELEASE

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BGE 136 III 523 (now moot)

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