Decision on costs: The winner takes it all?

Case No. O2014_002 ¦ Decision of 21 November 2016 ¦ “Urinalventil: Kosten- und Entschädigungsfolgen (Rückweisung)”

As reported earlier, the Supreme Court has reversed the FPC’s judgement in this matter. In brief, the FPC had decided that the first generation device infringed but the second generation device did not infringe EP 1 579 133 B1. The Supreme Court held that the second generation also infringed — and remitted the case to the FPC to accordingly adjust the ruling on costs. And here we are: The present decision only deals with the apportionment and fixing of costs.

The value in dispute had initially been set to CHF 300’000,–. Proceedings against the present defendant have later been separated since bankcruptcy proceedings had been initiated for the other defendant (Enswico AG; meanwhile liquidated). Now, how does this affect the value in dispute of the separated proceedings? In the event of the voluntary joinder of parties or joinder of actions, the values of the claims are added together insofar as they are not mutually exclusive; Art. 93 CPC. The FPC held that a contrario the value in dispute is to be allocated in case of a separation of proceedings. The present defendant was a contract manufacturer of the other defendant; it did not even own the molds. The value in dispute was thus fixed to only CHF 75’000,–, as requested by the defendant.

The court fee to be borne by the defendant was fixed at CHF 12’000,– in accordance with Art. 1 CostR-PatC. A compensation for legal representation of CHF 15’000,– was awarded to the plaintiff, ie well within the tarif (Art. 5 CostR-PatC). Expenses for the plaintiff’s patent attorney were awarded only with a sharp cap at CHF 15’000,–, ie corresponding to the compensation for legal representation. One may like it or not, but this approach is established case-law since O2012_043. A 50% share of the patent attorney’s overall costs incurred for both defendants would have resulted in more than twice as much.

Reported by Martin WILMING


Case No. O2014_002 ¦ Decision of 21 November 2016 ¦ “Urinalventil: Kosten- und Entschädigungsfolgen (Rückweisung)”

Daspaco AG ./. Von Allmen AG

Composition of the Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Christoph GASSER
  • Werner ROSHARDT
  • Dr. Ralph SCHLOSSER

Court Clerk:


Representative(s) Patentee:

Representative(s) of Defendant:


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