11. December 2013

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.

The Federal Patent Court, without hearing the defendant, decreed a description or securing of evidence respectively (cp. S2013_008, 30 August 2013) which was carried out on 11 September 2013.     The drawn up journal was submitted to the defendant, who thereupon petitioned for dismissal of the legal requests, alternatively the handing over of the journal to the plaintiff only under protection of trade secrets.

The Swiss Federal Institute of Intellectual Property accepted the plaintiff’s request for partial renouncement on 31 July 2013. Hereby particularly the original version „given the desired final physical dimensions in a material compressing pressing process“ was replaced by the phrase „brought to below the desired final physical dimensions, as to comprise the desired dimensions after the pressing process“. The Federal Patent Court rejected the objection of the defendant, according to which the partial renouncement introduced something objectionably different, as one schooled in the art could unequivocally prove that the pressing process to the desired final dimensions would comprise a manufacturing as a result of the complete pressing process (including the release of the component). Furthermore the defendant’s opinion that the patent had been objectionably amended was rejected by the Federal Patent Court. A new measurement report from the defendant dated 12 September 2013 designed to prove that the patent had not been infringed was referred by the Federal Patent Court for appraisal in the regular lawsuit. The request of the defendant for protection of trade secrets, however, was accepted by the court and handing-over of the journal to the defendant with blackened text passages was ordered after legal effect came into force.

(Decision in legal matter S2013_008, 30.10.2013)