Precautionary taking of evidence: Forensic expert opinion established

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

— IN A NUTSHELL —

The parties were in dispute about the right to an invention. The plaintiff had presented the invention to the defendant, but the defendant alleged that he had already been in possession of this invention beforehand. Certain documents of the defendant with handwritten elements were key. The plaintiff presumed that the defendant had manipulated these documents and requested precautionary taking of evidence, i.e. that a forensic expert opinion be established. The defendant collaborated, provided the documents without even having been orderd to do so. A forensic expert opinion was established accordingly.

— IN MORE DETAIL —

According to the Swiss Code of Obligations (Art. 332E), inventions produced by an employee  in the course of his work for the employer and in performance of his contractual obligations belong to the employer, whether or not they may be protected. The plaintiff alleged that he had presented one of his employee’s invention to the defendant, and that the defendant had subsequently applied for a Swiss patent application and a utility model in Germany, in his own name. The defendant alleged that he had been in possession of the invention before it had been presented to him by the plaintiff. In this respect, the defendant referred to technical documents with handwritten annotations in support of his allegation. The plaintiff however presumed that the documents had been manipulated.

In order to substantiate his suspicion, the plaintiff had requested precautionary taking of evidence (Art. 158(1) lit. b CPC), namely that a forensic expert opinion of the documents at stake be obtained. Moreover, the plaintiff  had requested that the defendant be obliged to not allow the Swiss patent application and the German utility model to lapse, without prior hearing of the defendant. The FPC did not follow the latter request but rather invited the defendant to provide his statement of defence. With his statement of defence, the defendant did not object to a forensic expert opinion being obtained. Suprisingly, the defendant even provided the respective documents without having yet been ordered to do so.

Consequently, the FPC obliged the plaintiff to provide a security of CHF 5000,– for the expert opinion, and on 02 September 2014 the opinion was requested from the Forensic Institute Zurich. Only about five months later, the defendant was ordered to not allow the Swiss patent application and the German utility model to lapse. Shortly thereafter, the parties were provided with the forensic expert opinion in early April 2014. Precautionary taking of evidence was thus concluded and proceedings were dismissed accordingly. The FPC set a deadline of 24 July 2014 for the plaintiff to file the main action, subject to the ordered measure (with respect to the Swiss patent application and the German utility model, see above) becoming automatically ineffective in the event of default; Art. 263 CPC.

Based on a value in dispute of CHF 100’000,–, court fees were set to CHF 5’000,–. The final costs for the forensic expert opinion were CHF 4’980,–.

Apparently, the defendant had not been professionally represented in these proceedings. Party costs do only include reasonable compensation for personal efforts in “justified cases”; Art. 95(3) lit. c CPC. This was not held to be the case here, since neither a loss of wages nor a highly complicated case or a very high value in dispute had been at stake. No party compensation was thus awarded to the defendant.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2013_007 ¦ Decision of 20 June 2014 ¦ “Vorsorgliche Massnahme / Vorsorgliche Beweisführung (Gutachten) gutgeheissen”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence
  • Interim measures

Composition of the Board of the FPC:

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

Representative(s) of Plaintiff:

  • Dr. Hanspeter GEISSMANN (Geissmann)
  • Dr. Peter STEINEGGER (SBMP)

Representative(s) of Defendant:

  • (none)

— FULL TEXT OF THE DECISION —

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2 Replies to “Precautionary taking of evidence: Forensic expert opinion established”

  1. Parties are anonymised in the decision, but the plaintiff’s address is given as “Werkstrasse 7, 5608 Stetten”. According to the commercial register of the canton of Aargau, there are only two connected undertakings listed at this address, i.e. H. Wetter AG Hallen Stahl- + Metallbau and tempo solar GmbH; see search report here. The former company holds all shares of the latter.

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