Whose invention is it?

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

Yet another ownership dispute:

Fig. 1b of WO’036

PCT application WO 2016/125036 A1 is at stake; the national phase has already been entered in Switzerland, China, South Korea, USA and at the European Patent Office; please find further information about the patent family here.

The present decision pertains to some interim measures. Inter alia, the plaintiff had requested that an order be issued to the defendant to not dispose of the applications in suit in any way, or to let them lapse. Main proceedings to actually sort out the right in the invention are still pending; O2017_026. See the full complaint below.

The plaintiff had initially been named as an inventor and is still listed on the title page of the PCT application as published, but has later been deleted on request of the applicant while still in the international phase.

The plaintiff essentially relied on an SMS and MMS that he had submitted to the defendant on 6 November 2013:

Bei der PCT-Anmeldung […] handelt es sich um die dargestellte Erfindung des Klägers, die dieser […] am 6. November 2013 D. bzw. der Beklagten mitgeteilt hat; es liegt technische Übereinstimmung vor. Weitere Ausführungen im Bestreitungsfalle bleiben vorbehalten.

MMS and SMS of November 6, 2013

The decision holds that this is obviously not sufficient to establish a prima facie case of entitlement to a patent application of 13 pages, 17 figures and 13 claims. The (then) President notes that the plaintiff failed to show that the three necessary elements (in particular the last one) are met, i.e.

  • that he actually made the invention (what exactly, when, where and how);
  • how the defendant has been made aware of this invention; and
  • how the subject-matter claimed by the defendant actually corresponds to this invention.

For the sake of completeness, the decision also recites two features from claim 1 of the PCT application which cannot be derived from the MMS and SMS. The plaintiff thus failed to show by prima facie evidence that he has any right in the invention at stake.

Further, there was no indication of any urgency on file, i.e. that the defendant might actually undertake any of the actions that were sought to be forbidden. The requested interim measures were denied also for this reason.

UPDATE 10 March 2018:

I just noticed that actually two applications are pending in the U.S., i.e. a continuation application of the PCT application in the name of the plaintiff (US 2017 / 0325923 A1) and a further national phase entry based on the same PCT application in the name of the defendant (US 2018 / 0000560 A1). It remains to be seen how these two applications will interfere with each other during prosecution.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_008 ¦ Decision of 29 December 2017 ¦ “Abweisung vorsorgliche Massnahme, Abtretungsanspruch nicht glaubhaft”

David Bensoussan ./. ROCK dental AG

Judge(s):

  • Dr. Dieter BRÄNDLE

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • n/a

DECISION IN FULL

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The correct case no. is S2017_008, as indicated on the title page. Don’t be misled by case no. S2017_002 in the header of pages 2 ff of the decision; that’s a typo.

COMPLAINT AS FILED

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UPDATE 07 March 2018:

Upon intervention of plaintiff’s counsel, I have deliberately redacted plaintiff’s private address and the signatures of plaintiff’s counsel from the complaint, without acknowledging any legal obligation to do so. The writ is freely available in unredacted form in the European Patent Register since 29 December 2017.

PATENT APPLICATION IN SUIT

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