Some recent case law revisited

VESPA’s annual evening conference earlier this week shed light on some key aspects of recent case law of the FPC.

Discussion centred on the following topics:

i)   Protective letters

Protective letters are frequently used. See the most important do’s and don’ts here. In addition, note that protective letters can be filed by a legal representative or the party itself, but not by a patent attorney.

The audience unanimously critcized decisions D2015_035 of 08 March 2016 (hn: A protective letter may not be withdrawn) and, to less extent, D2015_035 of 09 February 2016 (no later addendum to a protective letter, except for proper and improper novae).

By the way: A protective letter may not only be useful in anticipation of a request for ex parte interim injunctive relief, but also in anticipation of a request for preliminary measures to secure evidence like this one here.

ii)   Ex parte interim measures

Decisions S2016_007 (“don’t play games”) and S2017_001 were only briefly touched.

S2017_002 and S2017_003 made clear which requirements are to be fulfilled for an ex parte register ban to be successful; the former failed, the latter has been successful.

It became clear in the discussion that the surprising effect is not the only motivation for practitioners to request ex parte interim measures. Actually, ex parte interim measures are perceived by some as the only way to get speedy relief. Interim measures typically take seven to twelve months if they really dive deep into the subject-matter at stake (which is more the rule rather than the exception). Some participants questioned whether there is actually any difference to main proceedings, besides the fact that judicial vacations are not applicable. Sure, court fees are reduced — but so is the party compensation. On the other hand, parties typically do not perceive that the reasonable effort in summary proceedings is reduced by half.

iii)   Service of process

Two Swiss parts of European patents have been recently revoked by the FPC in judgements rendered in absentia; O2015_007 and O2015_017. The patentees / defendants did not respond at all. At least for O2015_007, it is clear meanwhile that this happened by accident; see the detailed discussion here. In both cases, the U.S. patentee / defendant had been directly served with the writ in accordance with the Hague Convention and Art. 137 CPC. In accordance with U.S. rules, the Swiss embassy in the U.S. thus served the writ to the patentees / defendants by registered letter. In the absence of any reaction, the FPC had published subsequent notifications to the patentees / defendants only in the Swiss Official Gazette of Commerce; Art. 141 CPC.

It has been proposed that the FPC could at least bring the subsequent publications in the Swiss Official Gazette of Commerce also to the attention of the representative on file at the Swiss Federal Institute of Intellectual Property for the patent in suit.

On a personal note: I have my doubts. (I have been involved in O2015_007, but this case is finally concluded now.) It may well appear formalistic to only publish a notification in the Swiss Official Gazette of Commerce when contact details of a representative of the patent are available from Swissreg. As a patent attorney on file in Swissreg, one may easily find it unsatisfactory to just be ignored. But it’s the law. Even if such an additional notification would not constitute a breach of judicial confidentiality: It surely is more than what is required by law. Nota bene: In inter-partes proceedings. Any assistance by a court for the potential benefit of one party is of potential disadvantage for the respective other party; and I cannot see any superordinated public interest, either. This is why I am hesitant. But may the lawyers have their say on this.

iv)   Doctrine of Equivalents

Discussion of decision 4A_131/2016 of the Supreme Court highlighted the apparent gap in the assessment of literal infringement and infringement under the DoE; see this Blog here. But let’s focus on the positive: The three-step questionnaire for the assessment of infringement under the DoE is approved. Let’s await the next decision(s) of the Supreme Court which hopefully provide further guidance.

As to the assessement of the third question in O2015_004, it has been discussed whether the actual wording of a claim is more binding if the alternatives are readily apparent — both for the person skilled in the art reading the patent, as well as for the patentee when drafting the application. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

v)   Abandonment of subject-matter

A further interesting aspect of O2015_004 surely is the issue of abandonment of subject matter; see this Blog here for further details. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)

vi)   Miscellaneous

Discussion briefly touched decisions 4A_427/2016 of the Supreme Court with respect to the legal standard of implied confidentiality (see this Blog here) and S2016_002 with respect to the admitted prior art as supporting basis for claim construction (see this Blog here).

Reported by Martin WILMING


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Withdrawal of a protective letter? No way!

Case No. D2015_035 ¦ Decision of 08 March 2016 ¦ “Schutzschrift, Rückzug”


Art 270 CPC; Protective letter, withdrawal.

A protective letter may not be withdrawn (r. 5).

Soon after the decision of 09 February 2016 in the same matter, this is yet another decision on the dos and don’ts after filing of a protective letter — featuring one of the shortest headnotes I have ever seen.

It had been requested to withdraw the protective letter before the end of its regular term of consideration (6 months). In support of this request, it had been relied on a commentary (BSK ZPO — Hess-Blumer, Art. 270, no. 33), saying:

Selbstverständlich ist es dem Hinterleger auch möglich, die Schutzschrift vor Ablauf von sechs Monaten zurückzuziehen oder bereits in der Schutzschrift eine kürzere Aufbewahrungsdauer zu beantragen.

Inofficially translated:

It is of course possible for the party that had submitted the protective letter to withdraw it before having reached its term of six months, or to request a shorter term already in the protective letter itself.

The practical test failed. Instead, the FPC held that a protective letter cannot be withdrawn. No way! When the protective letter is on file, the consequences are codified in Art. 270 CPC itself, ie (i) the opposing party shall be served with the protective letter only if he or she initiates the relevant proceedings (Art 270(2) CPC); and (ii) the protective letter becomes ineffective six months after it is filed (Art 270(3) CPC). It is held in the decision that these consequences are simply out of the submitter’s control.

Reported by Martin WILMING


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Addendum to a pre-emptive brief

paper stack

Case No. D2015_035 ¦ Decision of 09 February 2016 ¦ “Schutzschrift, nachträgliche Eingaben”

As mentioned earlier on this Blog here, pre-emptive briefs are quite frequently used if one fears to be faced with a request for interim measures without hearing the defendant. The present decision for the first time clarifies what is allowable to be submitted as an addendum to a pre-emptive brief that is already on file. The President held that it is well admissible to bring proper and improper novae according to Art. 229 CPC to the attention of the FPC by way of an addendum. But that’s it. Beware: If the addendum covers more than proper or improper novae according to Art. 229 CPC, it will not be taken into consideration at all.

Nicht zulässig ist es hingegen, eine Schutzschrift mit weiteren Eingaben einfach nachzubessern, ohne dass zulässige Noven vorlägen. […] Dafür, dass sich die Richterin oder der Richter mit beliebigen Eingaben befasst, in denen irgendwelche Sachverhalte und Argumente portionenweise und womöglich widersprüchlich vorgebracht werden, ist kein Raum.

It is not admissible to simply overhaul a pre-emptive brief by means of subsequent filings, in the absence of admissible novae. […] It cannot be that the judge has to assess any old submissions in which facts and arguments are brought forward little by little and maybe even inconsistent.

In addition, the President held that an addendum which pertains to per se admissible facts is expected to fulfil the same criteria as a regular writ. That means that evidence which is readily available in support of the alleged facts is to be put on file. In particular, it is not sufficient to only refer to the URL of a website. Since websites are known to change over time, a screenshot of the website is to be put on file.

Reported by Martin WILMING


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Pre-emptive brief: Dos and don’ts

In order to prevent the grant of an interim measure / a preliminary injunction without prior hearing, the potential defendant may file a pre-emptive brief with the competent court; Art. 270 CPC. The counterparty will only be served with the pre-emptive brief if he or she in fact initiates the relevant proceedings (contrary to the practice of some courts before entry into force of the CPC). 

At a recent VESPA seminar, I gained some deeper insight into the practice of the FPC with respect to pre-emptive briefs I would like to share:

  • The FPC accepts pre-emptive briefs in English language.
  • Don’t be too detailed. The FPC prefers briefs of only about 5 to 10 pages, mainly indicating a general outline of arguments why an interim measure / a preliminary injunction should not be granted. If the pre-emptive brief could already be interpreted as a complete counterstatement, this might even be counterproductive.
  • Availability to attend a hearing on short notice should be indicated.
  • What if you are not sure about the identity of the counterparty? The FPC tends to accept pre-emptive briefs not only against attacks of the registered patentee or an exclusive licensee, but also against anyone who invokes rights under the patent (e.g. an owner not yet entered into the patent register). However, be prepared that the FPC will then make available the pre-emptive brief to any such potential plaintiff you might not even have guessed beforehand.
  • A pre-emptive brief becomes ineffective six months after it is filed (Art. 270(3) CPC). If this term is not sufficient, the pre-emptive brief needs not to be filed again but can be renewed by refering to the brief already on file and paying the respective administrative fee again (Art. 2(2) CostR-PatC).

Apparently, pre-emptive briefs have already become a routine measure: About 30 were filed with the FPC in 2012.

Reported by Martin WILMING

Scope of pre-emptive brief not extending to an unspecified group of potential defendants

Case No. D2012_019 ¦ Decision of 27 August 2012 ¦ “Schutzschrift; Benennung der Parteien”

This is the first published decision of the FPC pertaining to a pre-emptive brief.

Two legal entities were identified as potential plaintiffs, and protection was also sought against interim measures without prior hearing being granted in favour of any other legal entity of the group of companies to which the two identified entities belong. This was accepted by the FPC, since also an exclusive licensee within this group of companies might well act as plaintiff (Art. 75(1) of the Federal Act on Invention Patents), and the respective licensee cannot be readily known / identified by the potential defendant.

However, an unspecified group of companies was also named as potential defendants while only one company was explicitly identified. This was not accepted: Only such person may set out his position in advance by filing a pre-emptive brief who has reason to believe that an ex-parte interim measure against him will be applied for without prior hearing (Art. 270(1) CPC). The FPC held that any party allegedly having such reason to believe to be a potential target is to be identified. In addition, no other legal entity than the explicitly identified potential defendant in fact authorized the filing of the pre-emptive brief. Consequently, the FPC decided to only consider the pre-emptive brief with respect to the explicitly identified company as such.

Nur diejenigen Gesellschaften aus der A.-Gruppe, die Grund zu dieser Annahme haben, sind berechtigt, eine Schutzschrift einzureichen. Und diese können auch im eigenen Namen auftreten. Damit gibt es keinen Grund, eine Schutzschrift auch im Namen nicht benannter Gesellschaften einzureichen. Ganz abgesehen davon, dass eine Schutzschrift nur dem zugerechnet werden kann, der den Einreicher dazu bevollmächtigt hat. Damit ist als Gesuchstellerin nur die A. AG anzuführen.

In accordance with Art. 270(3) CPC, the pre-emptive brief becomes ineffective six months after it is filed.

The potential plaintiff is served with the pre-emptive brief only if he indeed initiates the relevant proceedings (Art. 270(2) CPC); thus, the published decision is fully anonymised.

Reported by Martin WILMING


Case No. D2012_019 ¦ Decision of 27 August 2012 ¦ “Schutzschrift; Benennung der Parteien”

(not identified) ./. (not identified)


  • Pre-emptive brief

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)