Have you been at the symposium in St. Gallen last Friday, at the occasion of the Swiss FPC’s tenth anniversary? Oh man, what a great event that was! I am still quite inspired by the interesting discussions on the merits — and the joyful chats with so many colleagues, live and vibrant again.
I did not take sufficient notes in order to come up with a thorough summary of the whole day. The following are just some of my very personal take-away messages:
Since the beginnings of the FPC, a total of 56 judgments have been appealed to the Supreme Court; only nine appeals have been allowed, fully or in part. Such a 16 percent reversal rate is indicative of the (very) good quality of the first instance judgments of the FPC.
Some discussions circled around the disposal of cases by settlement. Dieter BRÄNDLE referred to it as the finest way of concluding a case («edelste Variante der Streitbeilegung»), for good reasons. However, settlements have become pretty rare in recent years; see the statistics here. This is most likely due to the fact that many cases are just tiny puzzle pieces in multi-jurisdictional patent fights which are not easily settled. Some courts do apply «shuttle diplomacy» in their settlement efforts (sometimes confused with «Einzelabreibungen», i.e. anything but truly diplomatic approaches to push / threaten the parties into a settlement). But it became very clear that the FPC will not try «shuttle diplomacy» in the near future.
The «Saisie Helvétique», a precise description of a presumably infringing embodiment, has not been used very often in more recent times. Why is that? Some said that parties might opt for a PI right away, instead of securing (further) evidence of the last tiny bit of infringment beforehand. Further, a precise description is anyting but cheap, and there may well be other options in particular in an international setup which are more favorable to secure evidence (e.g. a saisie-contrefaçon in France).
On the procedural side, it was discussed whether it should be possible for a plaintiff to base a PI request on the patent in suit in various versions, i.e. with a whole cascade of auxiliary inter partes limitations — or whether that inherently contravenes the necessary urgency. Indeed, I feel it may sometimes be a wise approach in PI proceedings to envoke the patent only to the extent necessary to precisely cover the attacked embodiment; one may still pursue the case more broadly in subsequent main proceedings anyway when time is not so much of the essence anymore (with a PI in place). It will be interesting to see how the FPC will henceforth deal with (too?) many inter partes limitations in PI proceedings.
On the merits, we discussed whether it is (or should be?) possible to just disregard a particular piece of prior art as closest prior art in the assessment of obviousness right away (simply because it is too unrelated to the invention), or whether anything has to be assessed in civil proceedings simply because a party pleaded it. It appears that this question had never been critical in judgments of the FPC by now; but it is still important to know that there is no settled case-law in this respect (see this Blog here).
Further, we briefly touched the formulation of the ‘objective technical problem’ and whether the ‘Swiss finish’ in some judgments is appropriate, i.e. that the problem should be somehow addressed in the closest prior art. See this Blog here for a more detailed discussion of this issue.
Oh, and one should maybe keep this pointed remark of Sir Colin BIRSS in mind when discussing a controversial judgment:
If you ever felt that arguing / pleading a case is difficult; believe me, judging that case is harder.
With respect to the UPC, it became clear that quality of its judgments will be the (most) critical issue for users. Anyway, the UPC will have to deal with this well-known triangle just like any other service provider:
The UPC’s goal of 12m for main proceedings was considered as very (unrealistically?) ambitious. Quality will largely depend on the judges; the hiring is currently underway. The goal is to have not too many judges in the beginning (only 50 technically trained judges), both for cost reasons and to ensure that the judges have enough cases to gain experience.
Re opting-out, Beat WEIBEL of Siemens provided some statistical insight: They will opt out for 17.3% of Siemens’ entire portfolio.
Tagung zum 10-jährigen Jubiläum des Bundespatentgerichts am 6. Mai 2022, Panel zur Rechtsprechung des Gerichts mit Thierry Calame, Michael Ritscher, Mark Schweizer, Andrea Mondini und Martin Wilming (v.l.n.r.) pic.twitter.com/iK7OBgXuUK
— Swiss Patent Court (@PatentCourt) May 9, 2022
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