PI proceedings suspended in view of co-pending entitlement action

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Case No. S2021_007 | Judgment of 4 January 2022

DISCLOSURE NOTICE: Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff.

Art. 111 para. 1 PatA; Provisional protection conferred by a published European patent application:

Even if the European Patent Office has announced the grant of the patent, a European patent application does not enjoy protection under Art. 64 EPC before it is granted.

The plaintiff had requested a preliminary injunction on 26 October 2021, based on two European patent applications for which the EPO had already scheduled the date of grant for sometime in November 2021.

Still before the actual grant, a third party jumped in and lodged entitlement proceedings at the FPC with respect to certain claims of both these patents. The third party also requested the EPO to stay the proceedings for grant, in accordance with R. 14 EPC. Accordingly, EPO proceedings are currently stayed and the patents have not yet been issued.

The judgment holds that the wording of Art. 111 para. 1 PatA leaves no room for an interpretarion that would allow provisional protection when examination on the merits has been concluded but the patent has not yet been issued; see the hn above.

Thus, the entitlement action thwarted the PI proceedings. However, the PI proceedings were not dismissed (as requested by defendant) but merely suspended while entitlement proceedings are pending; Art. 126 para. 1 CPC.

Reported by Martin WILMING


Case No. S2021_007 | Judgment of 4 January 2022


Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Urs PORTMANN (PV)



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