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

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

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

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

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

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

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

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

ii)  Preliminary injunctive relief

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

Revival of ex parte interim measures?

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

Reported by Martin WILMING

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

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