Register ban upheld, the crowd of defendants cleared

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A first decision in this matter was issued on 31 January 2017; see this Blog here for a review of the subject matter at stake. In brief, a register ban had been ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution of a patent application which is the subject of an ownership dispute.

UPDATE May 31, 2017:

The patent application at stake has been published today. It’s CH 711 847 A2, see Swissreg. Registered applicant expectedly is Oréade Manufacture de boîtes SA.

A hearing had initially been scheduled for 29 March 2017, but it need not take place: Defendant (1) did not object to the ex parte interim measures. The register ban will thus be maintained pending main proceedings O2017_003.

Apparently, defendants (2) and (3) participated in financing defendant (1). Towards this end, defendant (1) had assigned the patent application to defendant (2) on 8 July 2016. Later, the transfer has been reversed again — by verbal agreement in first place, and on 20/22 February 2017 in writing. Note that the transfer of a patent application by legal act is valid only if evidenced in writing; see Art. 33(2bis) PatA. It is beyond dispute that the current holder of the patent application is defendant (1). The plaintiff only disagrees with the retroactive effect of the re-assignment. However, defendant (2) has no standing to be sued anymore. Defendant (3) has never been the holder of the patent application and has no standing to be sued, either. The FPC thus dismissed plaintiff’s requests targeted at defendants (2) and (3).

The value in dispute is another interesting aspect of this case. The initial assignment of the patent application had been linked with a payment of CHF 594’000,–. On request of the FPC, the plaintiff thus initially submitted that the value in dispute is CHF 600’000,–. Defendants (2) and (3) submitted that CHF 594’000,– must not be considered as the actual value of the patent application. Rather, the amount had been fixed at that time in order to consolidate the financial situation of defendant (1). The plaintiff thus requested that the value in dispute shall be fixed to only CHF 50’000,–. The FPC did not re-adjust the value in dispute but rather sticked to the facts of the agreement of 8 July 2016 which at the face of it is a value determined by independent parties in an arms-length transaction.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 25 April 2017 ¦ “Boucle déployante: mesures provisionnelles”

A SA

./.

(1) B SA
(2) C S.A.
(3) D S.A.

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Frank SCHNYDER
  • Dr. Tobias BREMI

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

Representative(s) of Defendants (2) and (3):

DECISION IN FULL

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