Case No. O2019_001 | Judgment of 16 March 2022 | ‘Abtretungsklage; Tenside’
We have reported about this fiercly fought assignment action already several times; see e.g. this Blog here, here and here. Werner & Mertz (well known e.g. for its brand Frosch®) had sued Compad Consulting for lack of entitlement to EP 2 592 134 (cf. the European Patent Register for bibliographic information), i.e. unlawful usurpation thereof. Compad’s licensee of EP 134 is Good Soaps.
Generally speaking, the invention pertains to the use of sustainably sourced detergents in cleaning agents. The independent claim of EP 134 is much more lengthy, though. In particular, rapeseed methyl ester ethoxylates (rapeseed MEEs) appear to be of most interest. In plaintiff’s view, the «basic concept of the invention» was the replacement of the petroleum-based surfactant Lutensol AO7 with rapeseed MEE in a certain Frosch® washing agent, with satisfactory washing results.
As usual, the burden of proof was on Werner & Mertz to establish that (i) their employee made the invention; (ii) how / when this invention was communicated to the alleged usurpator; and (iii) how this invention is reflected in the patent (application) at stake.
The parties fundamentally dissented about what exactly had been communicated in a seemingly critical meeting of 27 August 2009 of Mr QUADE (with Werner & Mertz since about 40y) and Ms SCHNEIDER (formerly with Kolb, now with Good Soaps), and not even witness testimonies could finally clarify this issue.
However, this turned out to be not decisive anyway. The judgment holds that defendant was able to prove a fact in support of his position, i.e. that even if the alleged facts had been communicated by Mr QUADE in that meeting, this information amounted to nothing more than what Ms SCHNEIDER had alread known at the time: There was already an Ecover® product on the market at the time that contained rapeseed MEE as a detergent. Accordingly, the judgment holds that the complaint has to be dismissed.
This is not the first time that the «prior knowledge» exculpation has appeared in case law. It is long-established practice e.g. in Germany; see e.g. X ZR 79/07 – Steuervorrichtung:
However, to the best of my knowledge, this is a first in Swiss case law — and it appears essentially without any further ado. I would have liked to learn a bit more about the legal reasoning, even though the facts of the present case were pretty straight forward in this respect.
What would it generally take to establish prior knowledge of the invention? What is the necessary level of awareness of this information? E.g., is it sufficient that the information was somewhere buried in an archive, and maybe essentially forgotten only until one has been told again?
Anyway, subjective «prior knowledge» of the allegedly usurpated invention must not be confused with an objective lack of novelty: Patentability of the allegedly usurpated invention is irrelevant in an assignment action.
The judgment may still be appealed to the Supreme Court.
/MW
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BIBLIOGRAPHY
Case No. O2019_001 | Judgment of 16 March 2022 | ‘Abtretungsklage; Tenside’
Werner & Mertz
./.
Compad Consulting GmbH (trading as Compad Finance)
Panel of Judges:
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- Dr. Mark SCHWEIZER
- Dr. Tobias BREMI
- Dr. Frank SCHAGER
Judge-rapporteur:
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- Dr. Tobias BREMI
Court Clerk:
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- Susanne ANDERHALDEN
Representative(s) of Plaintiff:
Representative(s) of Defendant:
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- Dr. Andri HESS (Homburger)
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JUDGMENT IN FULL
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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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Application as filed, published as EP 2 592 134 A2:
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BE ON THE KNOW
