No more ‘shell games’: Register ban imposed ex-parte in an ownership dispute

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

The background of this case is a cooperation with an unhappy ending, at least concerning the resulting IP. The plaintiff (A) and one of the defendants (B) had signed a confidentiality agreement on 12 July 2015 for the purpose of a joint development. Two employees of A had then worked on this project and exchanged their respective results by Email. These results were then shared with B in working meetings later on, and a specific solution was sent to B by Email on 10 September 2015. B then filed a Swiss patent application on its own on 25 November 2015. That would be enough to blow most cooperations, but it even got worse: B informed A on 11 October 2016 that the patent application had been assigned to D. And on 29 November 2016, A was informed that the patent application had been assigned to C.

A was not amused and requested that a register ban be ordered ex parte to avoid withdrawal / abandonment and to suspend further prosecution; and that B, C and D be ordered to abstain from any actions towards this end. These requests were indeed granted inasmuch as the Swiss patent application is concerned. On the contrary, the request was held inadmissible with respect to related applications unspecifically referred to in the requests. Likewise, a request for a register ban at the EPO was held inadmissible; this has to be effected in accordance with Art. 61 and R. 14 EPC.

The decision (again) outlines the essential criteria to be dealt with in patent (application) ownership disputes:

  1. Who actually has invented the disputed technology?
  2. How has the plaintiff obtained the right to be granted a patent for this technology?
  3. How has the defendant / patent applicant been informed about this technology?
  4. How is the technology reflected in the patent application at stake?

The decision holds that these criteria have been met by prima facie evidence: The plaintiff (1.) had identified the inventors; (2.) how he obtained the right to be granted a patent (i.e. by virtue of Art. 332 CO as employer); (3.) how this information had been conveyed to B (see timeline above); and (4.) how this is reflected in the patent application under dispute: Apparently, Fig. 1 of the patent application reflects all the essential elements which also corresponds to the wording of claim 1.

The multiple assignments underlined the risk of a not easily reparable harm for the plaintiff. On the contrary, the defendants are not substantially harmed by the ex parte order. As to the urgency of the matter, the decision holds that the plaintiff had acted with sufficient diligence on 18 January 2017 after having been notified of the (second) assignment on 29 November 2016, i.e. seven weeks ago. Summary proceedings can still be concluded earlier than potential main proceedings which typically take one year.

On the other hand, the diligence required for the ex parte order is less clear to me. The FPC held in an earlier case that seven weeks (what a coincidence!) were too long for a plaintiff to wait — rather, one should act ‘within one or two weeks in any event’; see this Blog here. The devil may be in the (yet unknown) detail.

As to the technology concerned, the bone of contention is a latch for a watch band with a folding clasp which can carry a biometric insert.

[…] fermoir pour bracelet de montre comportant une boucle déployante permettant de loger un insert biometrique […]

The Swiss patent application at stake has been filed only less than 18 months ago (25 November 2015); it is not yet published. We will learn more on or shortly after 25 May 2017.

And the parties? According to publicly available information, there are not too many companies in Switzerland working on exactly this topic. Actually, I could only spot a single fit I feel confident enough to share: Biowatch SA. See their promotional video from 36s onwards (embedded from Youtube):

Biowatch’s Matthias Vanoni said in an interview with welt.de on 24 February 2016 that they were developing a new latch for a watch band with a special fitting for the biometric module together with a cooperation partner, i.e. Oréade SA:

https://www.welt.de/wissenschaft/article152603723/Das-Venenmuster-als-besserer-Fingerabdruck.html
Welt.de (24.02.2016)

The hearing scheduled for March 29, 2017 will provide further insight, and the Swiss patent application will be published end of May 2017. Stay tuned!

UPDATE March 6, 2017:

The hearing scheduled for March 29, 2017 has just been canceled.

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.

UPDATE Oct 2, 2017:

The matter has apparently been settled by compromise; see Matthias Vanoni’s comment in the comments section below.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_003 ¦ Decision of 31 January 2017 ¦ “Mesures superprovisionnelles; interdiction de transfer, suspension IPI”

n/a

./.

1. n/a
2. n/a
3. n/a

Composition of the Board of the FPC:

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

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Florian DUCOMMUN (HDC)

Representative(s) of Defendant (1):

DECISION IN FULL

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PATENT APPLICATION IN SUIT

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No ex parte ‘shot from the hip’ in an assignment action

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

This decision provides very early insight into a litigation with an apparently rather complex setup. The plaintiff had initiated main proceedings on January 11, 2017, inter alia alleging co-ownership of two patent families currently held by the defendant. Only two days later, the plaintiff requested ex parte interim measures, i.e. that the defendant be ordered to preserve the status quo of the patent families in suit (with respect to ownership, licenses, etc.), and that a ban be noted in the Swiss patent register to prevent any changes to the Swiss part of the already granted European patent.

Allegedly, an employee of the Swiss plaintiff has largely contributed to the subject invention(s), in a joint development together with the CEO of the defendant (a company domiciled in Sweden). Two patent families are at stake, with an already granted European patent in the first family. EPO prosecution is still pending in the second family, while patents have already been granted in the U.S., Japan and Russia.

First, the President holds that the FPC only has territorial jurisdiction for the Swiss part of the European patent at stake; Art. 1(2) IPRA, Art. 31 LugC, Art. 10 lit. b IPRA. Note that the patentee / defendant is domiciled in Sweden! The request has thus not been considered at all as far as it concerned foreign patent rights.

What remains is the Swiss part of the already granted European patent. Swiss law is applicable in this respect; Art. 110(1) IPRA. In general terms, the requested injunction and the order to a register authority would be possible in accordance with Art. 262 lit. a and c CPC. However, the President held that the plaintiff failed to show the three necessary elements, i.e.

  1. that the employee of the plaintiff has contributed to or made this invention (what exactly, when, where and how);
  2. how the defendant has been made aware of this invention (or parts thereof); and
  3. how the subject-matter claimed by the defendant actually corresponds to this invention.

The plaintiff apparently did not discuss how the contribution of its employee is reflected in the claims; see item iii, above. Co-ownership was thus held to be not established for this reason alone.

Moreover, the President notes that the plaintiff failed to show an actual risk that any of the acts to be prohibited might materialize. The request also failed for this reason.

The routine exercise: Who are the parties?

Admittedly, that’s been a tricky puzzle this time. The decision is anonymized beyond recognition. Almost. We could spot a single perfect fit:

As to the first patent family, “WO 222” likely is WO 2011/042058 A1 and the European patent “EP 333” with 37 claims likely is EP 2 485 864 B1 (opposed by Trumpf Werkzeugmaschinen GmbH + Co. KG); see EPO Register and Swissreg for further details.

The second patent family is based on “WO 555” — which likely is WO 2012/136262 A1. This family has granted patents in Japan (JP 5828953 B2), Russia (RU 2 594 921 C2) and the U.S. (US 9,469,338 B2); examination of EP 2 694 241 A1 is still pending; see EPO Register.

The sole inventor of both patent families is Magnus Norberg Ohlsson, CEO of Tomologic AB, a company domiciled in Sweden.

Bystronic Laser AG likely is the counterparty. It had introduced a new online service ByOptimizer in November 2014, explicitly referring to a

[…] newly developed cluster technology from the Swedish company Tomologic. The patented technology […].

The former product page is currently offline (checked on Feb 2, 2017).

It’s only an educated guess — but wouldn’t it be an incredible coincidence if the rivals were not Bystronic Laser AG and Tomologic AB? Let’s wait and see …

Reported by Ingo LUMMER and Martin WILMING

BIBLIOGRAPHY

Case No. S2017_002 ¦ Decision of 18 January 2017 ¦ “Abweisung Massnahmebegehren; internationale Zuständigkeit, mangelnde Glaubhaftmachung, Anspruch und Gefährdung”

n/a ./. n/a

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Simon HOLZER (MLL)
  • Esther BAUMGARTNER (MLL)
  • Martin TOLETI (Blum), assisting in patent matters

DECISION IN FULL

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Legal protection in clear cases: Supreme Court confirms duties of former employee

Case No. 4A_688/2014 ¦ Decision of 15 April 2015 ¦ “Appeal against the decision of the Federal Patent Court of 30 October 2014

Note that Hepp Wenger Ryffel AG is involved in this case on behalf of the defendant.

For the background of the case and the underlying decision of the FPC in detail, please see this blog here. In brief, the FPC had decided that if the actual rights in the invention of a former employee reside with the former employer, it is an element of the former employee’s duty and care under Art. 321a CPC to sign documents that are necessary to secure the rights of his former employer. In summary proceedings (as a remedy in clear cases), the FPC had ordered an unwilling former employee to execute an assignment document (actually, an assignment confirmation) required for proceedings before the USPTO.

The employee’s appeal against this decision has now been entirely dismissed. In particular, the Supreme Court confirmed that the FPC correctly declared the case admissible under summary proceedings since (i) the facts were largely undisputed and readily proven (Art. 257(1) lit. a CPC); and the legal situation was clear (Art. 257(1) lit. b CPC).

The Supreme Court also expands on the question whether an employee’s ongoing duty of care and loyalty (Art. 321a(1) CPC) includes a duty to co-operate during prosecution of patent applications pertaining to employee inventions. The Supreme Court now for the first time explicitly confirmed that this is indeed the case.

Ob sich aus dieser allgemeinen Treuepflicht eine Verpflichtung des Arbeitnehmers zur Mitwirkung bei der Anmeldung seiner Erfindung zum Patent ergibt, hatte das Bundesgericht zwar bis anhin nicht zu entscheiden. In der Lehre ist dies indessen zu Recht unbestritten ([…]). Andernfalls könnte der Arbeitgeber Diensterfindungen […] gar nicht sinnvoll nutzen.

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. 4A_688/2014 ¦ Decision of 05 February 2013 ¦ “Appeal against the decision of the Federal Patent Court of 30 October 2014

Cristian Popescu ./. Delica AG

Subject(s):

  • Employee invention
  • Legal protection in clear cases

Composition of the Board of the Supreme Court:

  • Christina KISS (President)
  • Dr. iur. Kathrin KLETT
  • Dr. iur. Gilbert KOLLY
  • Dr. iur. Fabienne HOHL
  • Dr. iur. Martha NIQUILLE
  • Dr. iur. Leonora MARTI-SCHREIER (Court Secretary)

Representative(s) of Appellant:

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

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Obtaining a confirmatory signature from an inventor / former employee can be hard

Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”

Note that Hepp Wenger Ryffel AG is involved in this case on behalf of the plaintiff.

— THE DECISION IN A NUTSHELL —

If the actual rights in the invention of a former employee reside with the former employer, it is an element of the former employee’s duty and care under Art. 321a CPC to sign documents that are necessary to secure the rights of his former employer. In summary proceedings (as a remedy in clear cases), the FPC ordered an unwilling former employee to execute an assignment document (actually, an assignment confirmation) required for proceedings before the USPTO.

— THE DECISION IN MORE DETAIL —

sign-hereThe present matter pertains to US patent application No. 13/994,494, published as US 2014/0196608 A1.

It was undisputed that the defendant had been an employee of the plaintiff and that he had been involved in the development of the invention for which protection is sought for with the aforementioned patent application. Moreover, the defendant did not claim any rights in this invention, but rather acknowledged that the respective rights to this invention reside with the plaintiff. The actual course of correspondence between the parties prior to the proceedings was also beyond dispute.

Nevertheless, the former employee had refused to sign the necessary assignment form (and the declaration) to be filed with the USPTO; see the excerpt from the public file wrapper that is available via the PublicPair service of he USPTO. He argued that this could result in his exposure to being sued in the US by a potential third party. Towards this end, the plaintiff provided a hold harmless declaration:

Gerne können wir Ihnen hiermit eine rechtsverbindliche Erklärung abgeben, dass die Delica AG Sie für einen — allfällig eintretenden — Schaden, der sich wider Erwarten aufgrund von Ansprüchen Dritter im Zusammenhang mit der Unterzeichnung der beiden für das US Patent and Trademark Office bestimmten Dokumente und der Eintragung des Patents in den USA ergeben könnte, selbstverständlich vollumfänglich schadlos halten wird.

In addition, the defendant had been offered a reimbursement for his legal expenses, since he had seeked legal advise in the present matter. The defendant alleged to have had expenses of CHF 123’000,–, and he issued an invoice on this sum to the plaintiff. This was obviously not the order of magnitude the plaintiff had in mind when a reimbursement of expenses was offered.

Furthermore, the defendant suggested a kind of trade-off: He would sign the requested documents for the (utility) patent application at stake, if the plaintiff in turn would withdraw the design patent application US D689,768 S, or designate him as inventor. According to the defendant, he had been involved in the generation of the respective design, too. This was rebutted by the plaintiff.

During the proceedings, the defendant alleged that his linguistic proficiency in English was not sufficient to understand the documents that he was expected to sign. The FPC held that this was implausible for various reasons: i) in view of the defendant’s curriculum vitae; ii) since even a moderate understanding of the English language would be sufficient; and iii) in view of the fact that he was advised by a patent attorney of English mother tongue (Da Vinci Partners).

The FPC emphasised that with due execution of the assignment the defendant would actually not acknowledge anything more than what he had already confirmed beforehand, i.e. that all rights in the invention reside with the plaintiff:

I agree to sign all papers necessary to secure all said patents and rights, and request issuance of all such patents to said Delica AG.

In sum, the FPC held that the relevant facts were undisputed and the legal situation was clear (Art. 257 CPC). The defendant was thus ordered to provide the plaintiff with the executed assignment document within a short time limit of only 10 days, under the threat of a criminal penalty for non-compliance (Art. 292 CC).

Reported by Martin WILMING

— BIBLIOGRAPHY —

Case No. S2014_007 ¦ Decision of 30 October 2014 ¦ “Mitwirkungspflicht des Arbeitnehmers bei Patentanmeldungen (Arbeitnehmerpflicht)”

Delica AG ./. Cristian Popescu

Subject(s):

  • Breach of Contract
  • Denial of a written confirmation (remedy in clear cases)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. iur. Daniel KRAUS (Judge)
  • Dr. Herbert LAEDERACH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

— FULL TEXT OF THE DECISION —

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