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.

The defendant lodged a counterclaim, according to which inter alia the plaintiff’s use of the invention according to the patent in suit was to be forbidden and the plaintiff was to cede the invention and the assets acquired from its use hitherto. The civil court of appeal referred the action and the counteraction to the Federal Patent Court in November 2011. Presently the claims lodged by both parties before the civil court of appeal (without success) for remission of provisional measures as well as the approved claims for precautionary measures are not to be discussed.

The plaintiff claimed to have developed a method for thermoforming steel materials. This method had been presented to Daimler Chrysler AG in June 2000; subsequently Daimler Chrysler AG had applied for a patent for the invention. The ownership of the patent by the defendant, according to the defendant’s account derived from the fact that Daimler Chrysler AG had been of the opinion that the knowhow forming the basis of the invention was to be credited to Leonid Levinski (Belgium). Levinski on his part had worked for Victocor Technologies SA, who is, under company law, affiliated to the defendant and had demanded assignment of the patent applications to the defendants.

The defendant asserted that the plaintiff was making use of the knowledge originating from the defendant contrary to the non-disclosure agreement. Due to breach of the non-disclosure agreement the plaintiff had previously been ordered to pay penalty by arbitration.

The Federal Patent Court asserted that the plaintiff, who merely claimed co-inventorship, had given insufficient particulars of claim, as to which actual technical teaching had been invented by which inventor at which moment in time. Furthermore sufficient particulars concerning how the rights had been allegedly assigned from the inventors to the plaintiff were found to be lacking. Thus the plaintiff had only claimed the participation of two employees to the development team, without e.g. specifying their legal relationship to the plaintiff or their contribution the invention. The lacking presentation resulted in rejection of the claim for the European application as well as for the US-, Japanese and South African applications (for these according US- to Japanese and South African law respectively).

With respect to the counterclaim the Federal Patent Court first examined its competence in more detail and quoted that the counter claim jurisdiction according to Art. 6 Nr. 3 LugÜ (Lugano Agreement) was relevant in this case because claim and counter claim emanated from uniform circumstances – namely that the plaintiff, in the context of the cooperation with Daimler Chrysler AG, Victocor Technologies SA and the defendant, had gained knowledge of the invention and its confidential nature and thereafter adopted and used it. The fact that the defendant based the counter claim solely on the legal basis of unfair competition law (UWG) and not on patent law, however, was not considered relevant.

The Federal Patent Court did not advocate three counter claim requests because these had been lodged after the counterstatement, i.e. too late (Art. 224 I ZPO). The court, furthermore, did not advocate the first part of the third request because this was written in an indefinitely broad manner. The Federal Patent Court affirmed a right to sue on the side of the defendant as defined by Art. 9 I UWG: It is regarded to be sufficient that the defendant was casually restricted in the economic possibilities of exploitation of the patent due to the unfair behaviour of the plaintiff. An own technical use of the patent was stated to be not necessary.

The Federal Patent Court recalled that according to recent practice of the federal court (Bundesgericht) unfair competition law is applied alongside patent law, in the case that the protected object is infringed according to unfair competition law (UWG). However, presently a substantiated argument concerning which secrets were not contained in the state of the art was absent and thus could potentially have been used in unfair manner. Besides, the non-disclosure agreement did not foresee protection of information that was publically accessible without illegal action on the side of the contract parties (also after the contract had been signed). Due to the fact that the request, apart from a few minor technical deviations, did not differ from the patent application in suit and this application had undeniably been filed by Daimler Chrysler AG the protection of the non-disclosure agreement did not apply. The counter claim was thus also rejected.

(Decision in legal matter O2012_001, dated 6. December 2013)