VESPA’s annual evening conference: Some further insight into recent case law

VESPA‘s annual evening conference on the case law of the FPC took place today. Tobias BREMI (judge) and Michael RITSCHER (lawyer) gave insightful talks. I have taken notes as follows:

1. Workload

Tobias BREMI gave a sneak preview of the FPC’s annual report 2015 (to be published soon):

  • 19 new cases were received in main proceedings; an increase over 2014 (15 cases).
  • A surprisingly low number of only 4 cases in summary proceedings were received (compared to 9 in 2014).
  • Again, a very high number of cases was settled by compromise in main proceedings, i.e. 84% (compared to 85% in 2014).
  • The share of settlements in summary proceedings is significantly lower (22%, compared to 50% in 2014).
  • The share of cases in the pharmaceutical field is on the rise; the number of cases relating to household things (maybe coffee machines and capsules) apparently decreased.

2. Selected case-law

Tobias BREMI presented three cases, as follows:

i)  O2015_010 (Fulvestrant)

See this Blog here for a brief summary of this case. Reference was made to a similar decision “Geburtsgel” of the cantonal court of Zug (r. 5; see sic! 2012/1):

Anerkennt ein Patentinhaber eine Nichtigkeitsklage auf Einreichung der Klage hin, ist er auch ohne vorgängig verwarnt worden zu sein kosten- und entschädigungspflichtig, wenn er durch sein vorprozessuales Verhalten den Eindruck erweckt hatte, dass er das Patent nicht auf blosse Verwarnung hin hätte löschen lassen.

The take-away message for patentees is clear-cut: Do not maintain obviously invalid Swiss patents if a nullity suit is to be expected. Else, there is a high risk that procedural costs are clapped on you.

ii)  O2013_006 (Hydraulic valve)

See this Blog here and here for a discussion of this case. The main hearing indeed is a tightrope walk: You must not present new matter, you shall not plead, you shall not merely repeat facts and arguments already on file. So what to do? This decision clarified that a didactical summary of key issues is allowed, in particular when the overall duration of the submission is well within normal limits. But this must not be misunderstood: As soon as new matter is presented, you will get interrupted and get busy with attempts to justify your submission, rather than to get your argument through. It is likely that the summons to the main hearing will henceforth make clear that e.g. in Powerpoint presentations one should include notes as to the basis of the content of the slides in the previous submissions.

iii)  O2014_002 (Urinalventil)

See this Blog here for a brief discussion of one key aspect of this very recent decision. No detailed discussion was possible since the decision is not yet final / has been appealed to the Supreme court. However, it seems indeed to be the case that the second question in the assessment of equivalence in Switzerland (i.e. ‘accessibility’) is more along the lines of the corresponding Improver question in U.K. than the Schneidmesser question in Germany (depending on the actual meaning of the latter, which is far from clear). Well, now the Supreme Court will have its say on it.

Reported by Martin WILMING

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