Infringement of a patent in good faith?

Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

This court order of 23 September 2014 has been published only recently.

The story is quickly told: The plaintiff had sued the defendant for patent infringement. In his answer, the defendant immediately submitted to the requests for injunctive relief. Thus, only the allocation of costs remained to be decided. As a general rule, procedural costs are charged to the unsuccessful party. If no party is entirely successful, costs are allocated in accordance with the outcome of the case; see Art. 106 CPC. In a nutshell, the defendant argued that he had not been aware of the plaintiff’s patents beforehand. The plaintiff should have sent a warning letter before going to court. If he had done so, costs could have been avoided. The defendant thus invoked Art. 107 lit. f CPC and argued that there are “other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable.”

The FPC held that the defendant essentially argues to have acted in good faith. Every person must act in good faith in the performance of his obligations; see Art. 2  CC. There is no good faith anymore if one knew, should have known or could have known of the non-conforming legal position. No person may invoke the presumption of good faith if he has failed to exercise the diligence required by the circumstances; see Art. 3(2) CC. Now, what is in fact required by the circumstances? In O2013_007 (r. 4.3), the FPC has already expanded on this issue:

There is no general obligation to conduct investigations — but if one has reason to suspicion, one has to clarify the situation.

In the present case, the defendant is not an end-user but rather a retailer. The FPC held that a retailer must clarify the patent situation if there is a risk of infringement. Such a risk was held to be clearly given in the present case. The plaintiff is apparently a renowned manufacturer typically seeking patent protection. The allegedly infringing products were technically and functionally very similar. Thus, the risk of a patent infringement should have been obvious for the defendant. He could thus not invoke the presumption of good faith and costs were allocated in accordance with the outcome of the case, i.e. the defendant has to bear the costs inasmuch as the requests for injunctive relief are concerned. But the plaintiff had also requested a rather prominent publication of the decision in trade journals in Germany and Switzerland. Later on, this request was withdrawn. Thus, the plaintiff was unsuccessful with this request. At first sight, one might have expected that the requests for injunctive relief were to be weighed higher than the request for publication. But the defendant had only sold two devices (a third one was apparently ordered by the plaintiff), and there was no reason to assume that the business would have extended. On the other hand, the publication in trade-journals would have globally blemished the defendant as a patent infringer.

Concluding, the FPC allocated the costs by half, and no party compensations were awarded.

Reported by Martin WILMING


Case No. O2014_012 ¦ Decision of 23 September 2014 ¦ “Beendigung des Verfahrens ohne Entscheid; Kostenfolgen; kein Klageüberfall”

(not identified) ./. (not identified)


  • Kosten: Parteientschädigung

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Robert BRINER (CMS)
  • Peter STEINEGGER (SBMP), assisting in patent matters


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