Enforcement of Software Patents in the United States still possible

After the US Supreme Court's recent decision in Alice Corp v. CLS Bank, business method and software patents have been increasingly difficult to become enforced in US courts. The case law as to the scope and effects of the Alice decision has been rather blurry so far and the consequences of this decision are subject to heated debates amongst scholars.

European patent validation agreement signed with Tunisia

European patent validation agreement signed with Tunisia (4 July 2014): http://www.epo.org/news-issues/news/2014/20140704.html

European patent applicants and proprietors will be able to validate the legal effects of their European patents and applications on Tunisian territory, even though Tunisia is not an EPO member state. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents. The agreement has to be ratified before it can enter into force.

Accordingly, the request for grant of a European patent (Form 1001) includes new fields, in order to indicate states for which it is intended to pay the validation fee. We believe that in the future the EPO will sign validation agreements with further states. Currently we have found indications that a validation agreement with the Republic of Moldova is in preparation.

BPatG: Injunction and reporting in the case of delay on the side of the defendant

WorldConnect AG applied, on 20 March 2013, for an order inter alia to prevent the use by J. Rusillon of mains plugs described in more detail in Switzerland and Liechtenstein as well as reporting and payment of a figure according to reporting. The plaintiff accused the defendant of marketing a mains plug for travelling via the internet, hereby infringing patent EP 1 393 417 B1 exclusively licensed to the plaintiff.

BPatG: Action for cession and counterclaim based on unfair competition law (UWG) fail due to insufficient particulars

Benteler Automobiltechnik GmbH, domiciled in Germany, brought an action against Thermission AG, domiciled in Switzerland, before the civil court of appeal of the cantonal court of Freiburg (Zivilappellationshof des Kantonsgerichts Freiburg) in February 2009 for determination and registration of its co-ownership of an international patent application, and the patent applications derived from it, in particular European patent application EP 1 646 458 as well as a US-, a Japanese and a South African patent application.

BPatG: The examination of an equivalent infringement requires equivalence as a third criterion

Plaintiff A. Ltd. applied for precautionary measures against B. Ltd. including interdiction of the use of contraceptives containing determined agents (D1 to D4) in Switzerland. The plaintiff hereby based the claim on European patents in suit EP 791 and EP 840. It was claimed that the defendant obtained the agents from K, who produced these according to a first (conventional) and a second (modified) method. As suggested by the president of the Federal Patent Court the plaintiff added a contingent claim to the original claims in the replication, which contingent claim specified how the agent contained in the products was produced.

No reinstatement after missing the deadline for further processing

The Swiss Federal Institute of Intellectual Property (IGE) on 31 October 2012 decreed the expiration of an EP patent due to non-payment of annuities. The previous and still registered Swiss representative of the claimant to whom the notification had been sent forwarded said notification to the German representative. The German representative claimed to have, on 21 December 2012, inquired about the opening hours between 27 December 2012 and 31 December 2012of the Swiss representative’s offices and to have, on 26 December 2012, instructed the Swiss representative via telephone answering machine to pay the annuity in question; hereby a wrong patent number had been named. The Swiss representative, who heard the German representative’s Message on 27 December 2012, noted that the deadline for the named patent number was due later and took no immediate action, such that the deadline of 31 December 2012 passed without any action having been taken.

Submission of a journal consisting of description or securing of evidence respectively without preceding hearing of the defendant.

Plaintiff A, by means of petition of 31 July 2013, applied for an immediate provisional decree for precautionary securing of evidence (Art. 77 I lit. a PatG), a precise description (Art. 77 I lit. b PatG) and at the same time a precautionary giving of evidence (Art. 158 I ZPO) in respect to the defendant B’s belling machine. The plaintiff stated that the belling machine could be operated according to the patent in dispute – but also in other manner – and that the end product was not suitable as definite evidence for application of the production method according to the patent in dispute.

Differing determination of the amount in dispute for court fees and party compensation respectively

Plaintiff A. SA lodged a complaint against defendant B. AG before the civil court of Basel-Stadt (Zivilgericht Basel-Stadt) aiming at the cession of a European patent application and an international patent application or the national patent applications or registered patents derived from these respectively. The plaintiff inter alia claimed that the defendant had gained knowledge of the plaintiff’s industrial secret from the defendant’s subsidiary company C in an unfair manner, breaching competition laws (UWG). In April 2011 the plaintiff initiated arbitration procedures based on these issues.

Hearing for protection of unconditional right to reply

Defendant B. AG acknowledged the complaint of plaintiff A. AG and commented on the costs and the consequences of compensation. Upon the plaintiff’s statement hereto the defendant again responded.

The Federal Patent Court referred to the parties’ unconditional right to reply. This, according to the court, allows for a theoretically unlimited exchange of statements. The Federal Patent Court may order a hearing for protection of the unconditional right to reply and simultaneously for terminal oral statements of the parties.

(Decision in legal matter O2013_004, 15 August 2013)