Register ban ordered, but only after hearing the defendants

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Case No. S2019_003 | Decision of 6 February 2019
Case No. S2019_003 | Decision of 11 July 2019

These two decisions in summary proceedings are heavily redacted — which is an exception to the rule. Obviously, the overall conflict between the parties also involves some criminal allegations against a natural person (Art. 146 CC; fraud).

In view of the criminal allegations I am not going to engage in any de-anonymisation exercise here; and this post is not open for comments, either.
Canton of Fribourg

A register ban for six Swiss patent applications had been issued by the public prosecutor of the Canton of Fribourg on 22 May 2017, in view of the criminal charge. The public prosecutor informed the plainfiff on 21 November 2018 of the deadline for finally lodging civil proceedings, i.e. 31 January 2019, and indicated that sequestration of the six patent applications would be lifted at that date (however, this apparently had not happened).

The plaintiff indeed initiated civil proceedings, but only on the very last day of the time limit,  and only in summary proceedings. In particular, issuance of a register ban had been requested without hearing the defendant beforehand.

While the President acting as single judge appreciated the risk that the six patent applications might be transferred to defendant (3) in view of some prior conduct of the defendant(s), and even though particular urgency was acknowledged, he did not order a register ban ex parte. The President held that the urgency is exclusively due to the late submission of the request by the plaintiff who should have taken action swiftly after the public prosecutor’s notification of 21 November 2108. If the plaintiff had filed the request in a timely manner, i.e. in early December 2018, the defendants would have had sufficient time to take a position on the request. The President held that the defendants cannot be deprived of their constitutional right to be heard because of the plaintiff’s belated action. The decision refers in passing to S2018_002, ¶7, for that a delay of two months results in the rejection of the request in any event.

The request for issuance of interim measures without hearing the defendant beforehand was thus denied with decision of 6 February 2019.

However, the register ban had still been issued with decision of 11 July 2019. In balancing the potential disadvantages suffered by the plaintiff and the defendants, the President (again acting as single judge) concluded that there was a much greater potential damage that the plaintiff would suffer if the register ban would not be issued, compared with the defendants potential damage if the register ban was granted. Nevertheless, the decision clearly notes that it is highly doubtful that the six patent applications had been contractually assigned to the plaintiff. Still, the fact that defendants (1) and (2) had previously attempted to assign the patent application to defendant (3), which is a mailbox company in Luxembourg, played out to the plaintiffs advantage, for the time being.

UPDATE 22 August 2019:

The decision of 11 July 2019 has not been appealed / is now final.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2019_003 | Decision of 6 February 2019
Case No. S2019_003 | Decision of 11 July 2019

A. Sàrl
./.
(1) B.
(2) C.
(3) D. S.A.

Single judge:

  • Dr. Mark SCHWEIZER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of A.:

  • Stefano FABBRO (FLD)

Representative(s) of B.:

FIRST DECISION OF THE FPC
→ register ban denied without hearing the defendant
Case no.: S2019_003
Decision of: 6 February 2019
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SECOND DECISION OF THE FPC
→ register ban granted after hearing the defendant
Case no.: S2019_003
Decision of: 11 July 2019
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