No interim measure of declaratory judgement with respect to ownership of a patent

Case No. S2012_005 ¦ Decision of 13 June 2012 ¦ “Zulässigkeit eines Feststellungsbegehrens, unlauterer Wettbewerb”

In 2005 the plaintiff entered into an R&D contract with a professor (now defendant). The purpose of this contract was the development of a technology to provide highly porous pellets by using a liquefied propellant gas. More specifically, the envisaged R&D should include experiments concerning the solubility of certain binding agents in various propellants, with or without CO2. According to the contract, it was aimed to subsequently file patent applications based on such R&D; the plaintiff should be the patentee and the defendant should be named as the inventor. The defendant also agreed in the contract to offer any further idea in the field of the experiments (propellant gas technology) to the plaintiff.

The dispute pertains to a European patent later on filed by and granted to the plaintiff, entitled

Manufacturing of a rapidly disintegrating presentation starting from a solid powder and a step of freeze drying

Entitlement of the plaintiff to this European Patent was under dispute between the parties. The defendant denied that the R&D contract (focused on propellant technology) covered the subject matter of the European patent in suit.

A first aspect of this decision pertains to the competency of the FPC, since the plaintiff was domiciled in Switzerland while the defendant was domiciled in Germany. The R&D contract contained a choice of juridiction clause (seat of the plaintiff), in accordance with Art. 23(1) lit. a-c LugC, but applicability of the contract to the present subject matter was under dispute. The patent in suit was not put on file by the parties, and it could not be excluded a priori that the patent was also covered by the contract: The mere title as such does not rule out the use of a liquefied propellant. The FPC held that for deciding on the competency of the court, allegations made by the plaintiff which are of relevance for both the competency of the court and the justification of the complaint are to be assumed true; this is in line with the case law of the Federal Supreme Court (BGE 137 III 32, r. 2.2 and 2.3).

As to the merits of the case, the first request was in fact a request for declaratory judgement by interim measure. The FPC held that declaratory judgements ad interim are not available under Art. 262 CPC in cases pertaining to the ownership of intellectual property rights. The FPC did not consider the first request already for this reason. Moreover, the plaintiff did not even address the question of his legitimate interest in this declaratory judgement (as required by Art. 74 of the Federal Act on Invention Patents) – the request would not have been considered by the FPC for this reason, too. Finally, the plaintiff failed to address the threat of a not easily reparable harm (Art. 261 CPC); this would have led to dismissal of the request by the FPC (if it had been considered).

A second request was that the defendant should be obliged to refrain from any statements vis-a-vis third parties that the plaintiff was not the legitimate owner of the patent in suit. The FPC held that the plaintiff did not provide sufficient prima facie evidence of violation of a right to which he is entitled (Art. 261 CPC); no legal basis for his claim was indicated by the plaintiff. The statements made by the defendant were also held to not establish a case of unfair competition. As long as a statement of a subjective legal opinion is not unnecessary offending, it cannot establish a case of unfair competition:

Die erkennbar als eigene Rechtsauffassung gemachte Äusserung ist als Werturteil nur dann unlauter, wenn sie unnötig verletzend ist (BGE 93 II 140 ff.; 108 II 225; BGer 4P.183/1995, sic! 1997, 414 E. 5d; Spitz, RZ 57 zu Art. 3 lit. a UWG).

Reported by Martin WILMING and Jennifer BOESE


Case No. S2012_005 ¦ Decision of 13 June 2012 ¦ “Zulässigkeit eines Feststellungsbegehrens, unlauterer Wettbewerb”

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  • Interim measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Chairman)
  • Dr. rer. nat. Tobias BREMI (Judge)
  • Dr. iur. Ralph SCHLOSSER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • Christoph Daniel MAIER (Fromer)

Representative(s) of Defendant:

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