Saisie Helvétique: Interim measures of description ordered

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

The plaintiff requested interim measures of description of an allegedly infringing method at the premises of the defendant (in accordance with Art. 77 of the Federal Act on Invention Patents) and provided sufficient prima facie evidence of infringement: The patent in suit seemingly pertains to a method of injection moulding, as can be concluded from the wording of the request. Apparently, the temperature of the polymeric material is a critical factor which is decisive for the final product. It was beyond dispute that an antecessor company of the defendant indeed used a method according to the patent in suit. Since the defendant had declared that the products formerly available from the antecessor company and those available from the defendant are “the same”, prima facie evidence of infringement was established.

In order to safeguard trade secrets of the defendant which are of no relevance for the matter in suit, the FPC decided that the presence of the plaintiff at the occasion of the description is not permitted. However, the plaintiff’s lawyer and patent attorney were allowed to participate at the occasion of the description, in view of their obligations of confidentiality. Such obligation of confidentiality will only become moot for those aspects of the description which are finally made officially available to the plaintiff anyhow. For any further subject-matter they might get to know at the occasion of the description, their obligation of confidentiality persists. The FPC explicitly held that any violation of the obligation of confidentiality may be considered as disobedience against an official order (according to Art. 292 Federal Criminal Code) and would thus be punishable with fine.

With respect to some practical aspects of the description, the FPC noted the following: The description is to be prepared and printed out immediately at the premises of the defendant, shall be controlled for accuracy and completeness and is to be signed by the defendant. The defendant will later on be given an opportunity to blacken passages of the draft description in order to safeguard additional trade secrets, if any (in accordance with Art. 77(5) of the Federal Act on Invention Patents). It is then up to the FPC to decide on the extent of the description for submission to the plaintiff, taking both parties’ legitimate interests into account.

Reported by Martin WILMING

—

BIBLIOGRAPHY

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

(not identified) ./. (not identified)

Subject(s):

• Interim measures / description

Composition of the Board of the FPC:

• Dr. iur. Dieter BRÄNDLE (President)
• Dr. rer. nat. Tobias BREMI (Investigating Judge)
• Dr. iur. Philippe DUCOR (Judge)
• Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

• Ivan CHERPILLOD (BMP Associés)

Representative(s) of Defendant:

• Michèle BURNIER (Python & Peter Avocats)
• Isabelle CORNUT (Reuteler & Cie), assisting in patent matters