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.

The parties determined a amount in dispute of CHF 1 million in the bill of complaint and the counterstatement respectively. In the arbitration procedure the plaintiff named a amount in dispute of at least USD 5 million. After remittal of the complaint to the Federal Patent Court a dispute over the competency of this court ensued. Finally, however, the case was ordered before the Federal Patent Court by the cantonal court of appeal of Basel-Stadt (Appellationsgericht Basel-Stadt). The Federal Patent Court determined the amount in dispute to be CHF 4 million by court order of 7 March 2013. The defendant acknowledged the claim for cession on 26 June 2013, in particular due to the outcome of the arbitration procedure between the plaintiff and C. The defendant applied for determination of procedure costs and party compensation based on a amount in dispute of 1 million CHF. The plaintiff, however, demanded determination of a amount in dispute of beyond 5 million CHF.

The Federal Patent Court pronounced a judgement which appropriates that the amount in dispute was to be higher for the court fees than for the party compensation. According to the judgement the amount in dispute, is to be determined by the court, when a complaint is not aimed at an amount of money, when the parties are in discord about the amount in dispute or their statements are obviously incorrect (Art. 27 PatGG, Art. 91 II ZPO).

Presently the amount in dispute of 1 million CHF had obviously not been determined correctly, as was evident from the assessment of the amount in dispute in the arbitration procedure, which again merely treated a preliminary question in the complaint. The amount in dispute was therefore determined to be 4 million CHF for the court fees.

Contrary to the parties’ submissions a „provisional“ determination of the amount in dispute was ruled out due to the fact that the present complaint was not based on an unspecified amount in dispute (Art. 85 I ZPO). The circumstances at the moment of lodging the complaint were regarded as decisive. The arguments for a higher amount in dispute then brought forth by the plaintiff were known to the plaintiff at the time the complaint was originally lodged.

The amount of 1 million CHF had been introduced for tactical reasons and a subsequent raise was not to be supported (Art. 52 ZPO). For the party compensation the amount in dispute was to remain at 1 million CHF.

The plaintiff’s patent attorney expenses, being necessary outlays (Art. 9 II, 3 lit. a KR-PatGer) were judged to be subject to compensation; it being notorious that the patent attorney was also involved in the implementation of the patent, e.g. in the drafting of legal documents.

(Decision in legal matter O2013_004, 28 October 2013)