Security for party costs to be provided at the request of the defendant

Case No. O2013_013 ¦ Order of 10 April 2014 ¦ “Security for party costs”

— THE DECISION IN A NUTSHELL —

The plaintiff had lodged a nullity suit against the Swiss part of a European Patent. On request of the defendant and since the plaintiff is a foreign (U.S.) company, the plaintiff was obliged to provide security for defendant’s costs (Art. 99(1) lit. a CPC).

— THE DECISION IN MORE DETAIL —

This case is a nullity suit against the Swiss part of the European patent EP 1 860 424 B1 pertaining to self-aligning scanning probes for scanning probe microscopes; for further bibliographic details of this patent, see Swissreg.

First, the plaintiff apparently took action against the wrong entity, i.e. a “B. GmbH”. Note that the patentee is NanoWorld AG, identified as “C. AG” in the decision. On request of the plaintiff, this was corrected and the plaintiff was obliged to pay a compensation to the wrongly accused B. GmbH.

The plaintiff had estimated the value in dispute as CHF 40’000,–. Defendant disagreed and rather estimated the value in dispute to CHF 250’000,–. The plaintiff argued that turnover during the past years with such items had been almost neglectable, i.e. CHF 1’400,– to 3’000,– p.a., with an annual profit of only CHF 400,– to 900,–. However, the FPC emphasized that the plaintiff’s turnover is not decisive, but rather the value of the patent as such. In view of the remaining term of the patent of 12 years and the considerable effort of the plaintiff with his nullity suit (about 60 pages and more than 50 exhibits), the FPC was evidently not convinced of the plaintiff’s low estimation but rather followed the request of the defendant: The value in dispute was fixed to CHF 250’000,– (Art. 91(2) CPC). Based thereon, a party compensation of CHF 25’000,– (Art. 5 CostR-PatC) and costs for a patent attorney to be involved of CHF 35’000,– (Art. 9(2), Art. 3 lit. a CostR-PatC) was held reasonable.

Note that the bilateral treaty between Switzerland and the USA provides free access to the courts but does not exempt the foreign party from the obligation to provide a security; see Art. I of SR 0.142.113.361BGE 121 I 108 r. 2 and BGE 4P.153/2003 r. 2.3.1. Consequently, in addition to the advance payment of (expected) court fees of CHF 12’000,–, the plaintiff was obliged to provide a security for the defendant’s costs. The FPC will not consider the case if this security is not provided in due time.

Noteworthy, an action for declaration of nullity has also been brought before the Federal Patent Court in Germany (5Ni12/14(EP)).

Reported by Martin WILMING

— BIBLIOGRAPHY—

Case No. O2013_013 ¦ Order of 10 April 2014 ¦ “Security for party costs”

(not identified) ./. (not identified)

Subject(s):

  • Nullity
  • Security for party costs

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Mark SCHWEIZER (MLL)

— FULL TEXT OF THE DECISION —

Download (PDF, 84KB)

Print Friendly, PDF & Email

Leave a Reply

Your email address will not be published.