Patent Litigation 2020

Last Updated February 10, 2020

Switzerland

Law and Practice

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The intellectual property right used for the protection of inventions in Switzerland is the patent. As Switzerland is a contracting state of the European Patent Convention, Swiss national patents granted under the Swiss Patent Act (PatA) and European patents granted under the European Patent Convention (EPC) coexist. With respect to the territory of Switzerland, patent protection can be obtained through both routes. In the case of double patenting, the respective Swiss national patent is simply deemed to have no further effect.

The European patent is granted by the European Patent Office (EPO) pursuant to the provisions of the EPC. A granted European patent designating Switzerland is recorded in the Swiss Register of European Patents and then has the same effect in Switzerland as a Swiss national patent. For validation in Switzerland, it is not necessary to file translations or to take any other acts.

Swiss national patents are granted by the Swiss Federal Institute of Intellectual Property (IPI) in Berne. While European patents are subject to a comprehensive substantive review by the European Patent Office, Swiss national patents are granted without the IPI examining novelty and inventiveness.

Patent examination by the IPI may last between one and two years but can take considerably longer, depending on whether the IPI is asked to provide a report on the state of the art.

Patent granting proceedings by the EPO may take longer, as the novelty and obviousness requirements are examined. According to the EPO, the European patent grant procedure takes about three to five years from the date the application is filed.

Both Swiss national patents and Swiss parts of European patents have a maximum term of protection of 20 years from the filing date of the application.

Both Swiss national patents and Swiss parts of European patents confer on their proprietors the right to prohibit others from commercially using the invention. From this general principle, the PatA derives the following rights of the patent owner:

  • The standard forward-looking remedy for patent infringement is a permanent injunction (Article 72 PatA); injunctive relief is granted unconditionally and automatically.
  • To remedy past infringement, the patent owner may alternatively claim damages based on tort law, the infringer's profits based on the law on conducting business without mandate, or a reasonable usage fee based on the law on unjust enrichment (Article 73 PatA).
  • The patent owner may further demand that a continuing unlawful situation be remedied (Article 72 PatA) – for example, the court may order the forfeiture and sale or destruction of unlawfully manufactured products or equipment, devices and other means that primarily serve their manufacture (Article 69 PatA); under the condition of proportionality, the patent proprietor can also demand that the infringer withdraw products from the distribution channels.
  • The patent owner may demand that the infringer be compelled to submit information about the "origin and quantity of products in his possession which are unlawfully manufactured or placed on the market, and to name the recipients and disclose the extent of any distribution to commercial and industrial customers" (Article 66(b) PatA); as far as it is necessary for quantifying financial claims, the infringer may be ordered to also render account on his or her orders and sales, turnover and profit made from the infringing activities.
  • To the extent that an action for performance is not available (eg, because the infringement has terminated and no damage occurred) the patent owner may bring an action to obtain a declaratory judgment on the existence or non-existence of a right (Article 74 PatA).
  • If an infringement is likely to cause not easily reparable harm, the patent owner may request that the court order interim measures such as a preliminary injunction (Article 261 Civil Procedure Code (CPC); Article 77 PatA).
  • In order to establish infringement, the patent owner may request that the court in summary proceedings order a so-called precise description of allegedly unlawful processes or products (Article 77 PatA); such a precise description is then carried out by a member of the court, typically by a technically trained judge, together with the clerk and, if appropriate, representatives of the patent owner (See infra, 2.10 Mechanisms to Obtain Evidence and Information).

The PatA further provides for custom measures against goods that infringe patent rights. The patentee is entitled to file an application for customs action if there are concrete indications that goods that make use of a patent will be unlawfully imported into, or exported out of, Switzerland. An application is valid for two years. If suspicious goods are withheld at customs based on such an application, the Customs Administration will notify the applicant and the declarant, holder or owner of the goods accordingly. It can withhold the goods for a maximum of ten working days from the time of notification, so that the applicant can obtain interim measures.

The main obligation of the owner of a Swiss national patent or of the Swiss part of a European patent is to timely pay the maintenance fees.

The proprietor of a Swiss national patent, or a European patent designating Switzerland, may obtain a supplementary protection certificate (SPC) for the active ingredient or combination of active ingredients of medicinal products and of plant protection products. The granting authority for both kinds of SPC is the IPI. Although Switzerland is not a member of the European Union, Switzerland adopted the EU's legislation with only minor substantive changes (Article 140a et seq PatA).

A Swiss SPC's maximum term of protection is five years. This term may be extended for a further six months if the marketing authorisation for the respective medicinal product reflects the results of paediatric studies. Such a six months extension of an existing SPC is known as a Paediatric Extension (Article 140n et seq PatA).

The Swiss legislator took note that the owner of a pharmaceutical patent may not be able to obtain an SPC, for example in situations in which a medicinal product was commercialised so early during the term of the patent that the term of an SPC would be negative. In order to incentivise pharmaceutical companies to perform paediatric tests for their drugs in this type of situations, the legislator created a so-called Paediatric Certificate that provides the benefit of an additional six months' exclusivity to patentees that have not been granted an ordinary SPC that could be extended (Article 140t et seq PatA).

Third parties do not have any right to participate in the grant proceedings for a Swiss national patent.

In proceedings before the EPO, third parties cannot block the procedure as such, either. In contrast to the proceedings before the IPI, however, a third party may try to prevent a patent from being granted by filing third-party observations. Third-party observations are a double-edged sword, however, as it may be harder to "attack" a patent on the same grounds in later post-grant proceedings.

A refusal by the IPI to grant a Swiss national patent can be appealed to the Swiss Federal Administrative Court and ultimately to the Swiss Federal Supreme Court.

The patent owner can decide to stop paying the annual fees at any time. The consequence is that the protection conferred by the patent terminates with effect ex nunc.

If a patent owner unintentionally failed to pay the annual fees, the PatA distinguishes whether or not the patent owner bears any fault.

If the patent owner provides prima facie evidence of having been prevented, through no fault on his or her part, from observing the time limit, the IPI shall grant, on request, the so-called re-establishment of rights (Article 47 PatA). The re-establishment of rights has the effect of restoring the situation that would have resulted from carrying out the act in good time. The request for the re-establishment of rights must be filed within two months of the removal of the cause of non-compliance with the time limit, and at the latest within one year of expiry of the unobserved time limit. At the same time, the omitted act must be carried out.

If Article 47 PatA does not apply, mainly because the strict no-fault requirement is not met, Article 46a PatA provides for a fallback remedy, the so-called further processing. According to this provision, if the patent owner, for whatever reasons, fails to observe a time limit prescribed by legislation or set by the IPI, he or she may file a request for further processing with the IPI. This request must be filed within two months of receiving notice from the IPI of failure to observe the time limit, and six months at the latest from the expiry of that time limit. The effect of such further processing is that the situation that would have resulted from carrying out the act in good time is restored.

See 1.5 Rights and Obligations of Owner of Intellectual Property Right.

National Swiss patents are subject to opposition, but only on very limited grounds (Article 59c PatA). Opposition may only be filed within nine months from grant on the grounds that the subject matter of the patent is not patentable because: (i) it relates to the human body as such; (ii) it relates to a naturally occurring sequence or partial sequence of a gene; or (iii) an exclusion from patentability according to Article 2 PatA applies (inventions whose exploitation is contrary to human dignity, inventions that disregard the integrity of living organisms or that are in any other way contrary to public policy or morality).

If a European patent is concerned, third parties may file an opposition with the EPO within nine months from the grant. The EPC allows for more grounds for opposition than the Swiss PatA. In addition to the opposition grounds allowed by Swiss law, an opponent can rely on the following grounds: (i) the patented invention is not new; (ii) the patented invention is not technically or commercially applicable; (iii) the patented invention is obvious for a person skilled in the art; or (iv) the subject-matter of the patent extends beyond the disclosure of the original filing.

While oppositions are administrative proceedings before the EPO or the IPI, respectively, third parties may also address a civil court with an action for declaratory judgment. The most frequent declaratory action initiated by third parties is the invalidity action in which the court is asked to declare a specific patent invalid. Declaratory actions of third parties also come in the form of a request for a declaration of non-infringement. A request for a declaration of non-infringement may be combined with an invalidity action, and the grounds for the alleged non-infringement may be that the claimed invention is not used or that such use is covered by a safe-harbour provision (see infra, 3.4 Defences Against Infringement).

The Swiss PatA provides for various compulsory licences: a compulsory licence under a prior patent if the applicant cannot use his or her own later patent without infringing the prior patent (Article 36 PatA); a compulsory licence under a patent which its proprietor is not exploiting in Switzerland (Article 37 PatA); a compulsory licence in the interest of the public (Article 40 PatA); a compulsory licence in the field of semiconductor technology (Article 40a PatA); a compulsory licence for patented biotechnological research tools (Article 40b PatA); a compulsory licence for diagnostic tools (Article 40c PatA); a compulsory licence for the export of pharmaceutical products (Article 40d PatA).

These remedies are available to third parties irrespective and independent of whether the patent owner has initiated a legal action on his or her own. Requests for declaratory relief and requests for the grant of a compulsory licence may be brought as independent actions or as counterclaims in an action initiated by the patent owner.

An interesting alternative to bringing a formal counterclaim is to raise the invalidity of the respective patent as simple defence in an infringement action. In fact, most defendants in Swiss litigations prefer this option over a formal counterclaim. The main difference between a formal counterclaim on a declaration of invalidity and a defence is that a counterclaim is decided with effect erga omnes – the patent is declared invalid -, while in the case of a successful defence the effect remains inter partes – the patentee's infringement action is denied.

The Swiss Federal Patent Court is the patent court of first instance of the Swiss Confederation. Within Switzerland, the Federal Patent Court is vested with exclusive jurisdiction in patent matters that require the application of substantive patent law, such as validity and infringement disputes, compulsory licence actions, requests for preliminary measures and the enforcement of judgments made under its exclusive jurisdiction. Unlike the similarly named German Federal Patent Court, the Swiss Federal Patent Court is competent to decide on both the validity and infringement of patents.

In other matters related to patents, such as entitlement and assignment disputes or disputes arising from patent licensing agreements, the Federal Patent Court has concurrent jurisdiction with cantonal courts. In these cases, the party bringing the action has the right to choose whether to go to the Federal Patent Court or a cantonal court.

Irrespective of whether the first instance court is the Federal Patent Court or a cantonal court, an appeal is possible only directly to the Swiss Federal Supreme Court.

The Swiss Federal Patent Court is a specialised court with Switzerland-wide exclusive jurisdiction in substantive patent matters. It is composed of legally and technically trained judges, and deciding bodies always comprise judges of both groups.

Swiss law does not impose any prerequisites to filing a lawsuit. It is not even required that the patent has been granted and published at the time of filing an action (the patent must have been granted at the time of judgment).

Licensees are entitled to bring an action on their own if the licence is exclusive and provided this is not expressly excluded by the licence agreement (Article 75 PatA). Non-exclusive licensees may join an action brought by the patentee in order to claim their own loss or damages. A licensee's standing to sue does not depend on the registration of the licence in the patent register.

Parties in intellectual property matters do not need to be represented by a lawyer. If they seek representation, the situation is as follows (Article 29 Patent Court Act):

  • in infringement proceedings, one of the representatives must be a qualified attorney-at-law;
  • in proceedings concerning the validity of a patent, qualified and admitted patent attorneys may also represent parties before the Federal Patent Court; and
  • in all proceedings before the Federal Patent Court, qualified and admitted patent attorneys may present technical arguments.

Interim injunctions are available in patent matters in Switzerland. Interim injunctions are granted if the applicant provides prima facie evidence both for an actual or imminent infringement and that the infringement will cause not easily reparable harm.

According to the established case law of the Federal Patent Court, a request for an interim injunction must be submitted within 14 months from the moment when the patentee actually learned, or a diligent party would have learned, of the infringement. After 14 months, the right to an interim injunction is deemed forfeited.

In cases where hearing the alleged infringer prior to deciding on the request would frustrate the enforcement of the measure, the court may order the interim measure immediately and ex parte – ie, without hearing the alleged infringer. An ex parte decision must afterwards be confirmed in inter partes proceedings.

A person who has reason to believe that a measure against him or her will be applied for without prior hearing may set out his or her position in advance by filing a protective letter (Article 270 CPC). After filing, the protective letter remains effective for six months, but this period can be effectively extended by filing a new, possibly updated letter. The patent owner is only served with the protective letter if he or she actually initiates the respective ex-parte proceedings.

Upon request (Article 264 CPC) or ex officio in case of an ex parte request for interim measures (Article 265 CPC), the court may make the interim measure conditional on the payment of security by the applicant.

Swiss law distinguishes between statutory limitation periods and forfeiture. Forfeiture of rights is a concept that is derived from the general principle set forth in Article 2 of the Swiss Civil Code, according to which every person must act in good faith in the exercise of his or her rights and in the performance of his or her obligations. The same provision states that the manifest abuse of a right is not protected by law. In patent matters, the most noteworthy effect of this principle is that the rights conferred by a patent may become forfeited if the patentee waits too long before initiating enforcement. According to case law, the right to apply for interim measures is considered forfeited 14 months after the moment when the patentee actually learned, or a diligent party would have learned, of the infringement. Permanent relief may also become forfeited, although case law has not established hard deadlines. How long a patentee may wait to initiate enforcement proceedings without violating the principle of good faith is determined on a case-by-case basis taking into account all relevant facts. A very rough rule of thumb is that a patentee should not wait more than five years, but depending on the specific circumstances, this may already be considered too long.

Under the statute of limitation, claims for compensation for past infringement (damages, surrender of the infringer's profits, reasonable usage fee) become time-barred one year after the date on which the injured party became aware of the loss or damage and of the identity of the infringer, but in any event ten years after the date on which the loss or damage was caused. If an infringement is continued over a period of time, the limitation period only starts running once the infringement has terminated because the loss or damage arising from the infringement cannot be known as long as the infringement persists.

As a matter of principle in Swiss civil procedure law, it is for the litigating parties to produce the relevant evidence in support of their allegations. Fact-finding attempts, in the sense of US-style discovery, are stigmatised as fishing expeditions. Thus, as a general rule, parties to a Swiss litigation must make their cases with the documents and information they have available to them.

Nevertheless, Swiss procedural law does provide certain procedural mechanisms that may allow certain evidence to be obtained from the other party or from a third party.

During litigation, a party can petition the Swiss court to order the other party or a third party to disclose certain specifically identified documents or other evidence in its possession. The court will grant such a request only if it decides that the specifically identified evidence is necessary to establish legally relevant and disputed facts of the case. Since the parties to a litigation are not obliged by Swiss law to disclose documents and materials to their adversaries, the court cannot compel compliance if one party refuses to produce the required information after it has been served with a court order. However, if a party refuses to produce the evidence without valid reasons, the court will take this into account when appraising the evidence. Third parties may not generally refuse to produce the evidence ordered by a court.

The CPC allows for a preliminary taking of evidence at any time before a case on the merits becomes pending if the requesting party has an "interest worthy of protection" (Article 158 CPC). According to established case law, one such interest justifying the taking of evidence prior to the filing of an action on the merits is the requesting party's interest in being better able to assess the chances of success of a potential civil claim. Any evidence may be the subject of a preliminary taking of evidence; the court may order a witness hearing, order a party to produce physical records, order the inspection of goods or places, retain an opinion of a court-appointed expert, or question the parties.

The PatA provides that the Federal Patent Court may order a so-called "precise description" of the allegedly unlawful products manufactured or processes used (so-called saisie helvetique). The patentee must provide prima facie evidence that his or her patent has been infringed or that an infringement is suspected of occurring. A court delegation, typically comprising a technically trained judge and a clerk, will then inspect the allegedly infringing product or process at its location, describe the product or process as requested by the patentee and provide a written report. If appropriate, representatives of the patent owner may attend the inspection. The court will take the necessary measures to safeguard manufacturing or trade secrets.

In a litigation on the merits, each party is entitled to two submissions in which they are entirely free to modify, change and amend their pleadings and to supplement their evidence. For the plaintiff, these are the statement of claim and the statement of reply, for the defendant it is the statement of defence and the statement of rejoinder.

While there is no strict requirement for the parties to set forth their case comprehensively in their respective first submissions, the Federal Patent Court in practice expects this. The parties also have an interest in front-loading their pleadings because the Federal Patent Court typically summons the parties to a preparatory hearing after the first exchange of submissions. In the preparatory hearing, a court delegation comprising a legally trained judge and a technically trained judge provide a first, preliminary and non-binding assessment of the merits of the case based on the pleadings and evidence submitted by the parties so far. The significance of this preliminary assessment increases with the level of the parties' substantiation and argumentation in their respective first submissions.

The Swiss legal system does not provide for representative or collective actions such as class actions for intellectual property rights proceedings.

As explained supra, in 2.9 Special Limitation Provisions, a claim may be considered abusive and become time-barred if the patentee waited too long before commencing enforcement proceedings after having become aware of the infringement.

Restrictions may further arise from contractual undertakings (eg, from a contractual covenant not to enforce a patent or not to challenge a patent, or from a commitment to a standard setting organisation), from the general requirements of proportionality, from the law against unfair competition and from antitrust law.

On the plaintiff's side, the necessary parties to an infringement action are the registered owner of the respective patent and/or the exclusive licensee (see 2.5 Prerequisites to Filing a Lawsuit). In the case of an action brought by an exclusive licensee, the patent owner may only join if and to the extent he or she has an independent interest in the litigation.

On the defendant's side, there must be at least one alleged direct or contributory infringer. The plaintiff is under no obligation to file an infringement action against all potential infringers.

According to Swiss case law, an action is considered to constitute a direct infringement if, by virtue of that action, all or substantially all of the claimed features are used in the territory of Switzerland. The (one) person that commits this action is liable as direct infringer. It has never been decided by Swiss courts if and under what circumstances two or more actors may be held to directly infringe a patent if their contributions together but not individually fulfil all claimed features (so-called divided infringement).

The PatA also holds that "any person who abets any [direct infringement], participates in them, or aids or facilitates the performance of any of these acts" may be liable as contributory infringer (Article 66 littera d PatA). From the wording of this clause, case law and literature conclude that liability as contributory infringer requires that the person in question contributes to an act that qualifies as direct infringement under the Swiss PatA (ie, in Switzerland). If the direct infringement occurs abroad, a person contributing to that infringement from within Switzerland is therefore not liable as a contributory infringer under Swiss law. On the other hand, Swiss courts have also decided that it does not matter from where the contributory infringer contributes to a direct infringement in Switzerland. If the direct infringement takes place in Switzerland, a person contributing to that infringement may therefore be liable irrespective of whether the contributory actions are performed in Switzerland or abroad. A further requirement derived from the statutory requirement of accessoriness is that there must be a so-called adequate causal connection between the contributory action and the direct infringement. The rationale of this requirement is that it must be reasonably foreseeable that an activity may contribute to a direct patent infringement in order for the acting person to be held liable as contributory infringer. As far as trade with non-infringing goods is concerned, the Federal Supreme Court explains in its judgments that the customer must use or intend to use a non-infringing device or good in a way that infringes the patent and that the supplier only becomes liable if he or she knows or should know that the means offered or supplied are suitable and intended to be used by the customer for an infringing use. This requirement is, for example, met if means are explicitly offered for an infringing use or if means may only be used in such a manner.

In a first step, the respective patent claims must be interpreted. According to established practice, the Federal Patent Court applies the following principles: patent claims are construed from the point of view of the skilled person, using the description and the drawings. As a so-called "liquid state of the art", general technical knowledge is also a means of interpretation. If the patent specification does not define a term differently, the court applies the usual understanding in the relevant technical field. Patent claims are interpreted functionally, which means that a feature is understood in such a way that it can fulfil the intended purpose. The claim is read in such a way that the embodiments mentioned in the patent are literally covered. On the other hand, the wording of the claim should not be restricted to the disclosed embodiments. The court applies a "broadest interpretation" of claim features in the sense that a feature so understood must always be capable of fulfilling its purpose within the scope of the invention. The claim is thus in principle not to be interpreted under its wording, but also not in such a way that embodiments are covered which do not achieve the inventive effects.

Whether and to what extent the prosecution history may be taken into account for interpreting patent claims has not been conclusively determined by Swiss courts. In a recent judgment, the Federal Supreme Court noted that there is a predominant refusal in EPC member states to take the prosecution history into account. Generally, waivers and limitations made by the applicant during prosecution should therefore be considered only to the extent that they are reflected in the claims and/or in the specification. Nevertheless, the Federal Supreme Court pointed out that the general Swiss law principle that everyone must act in good faith in the exercise of his or her rights and in the performance of his or her duties and that the manifest abuse of a right does not find legal protection must be respected in this regard. Statements made by the applicant during prosecution may become relevant under this title if the assertion of the patent: (i) contradicts such previous conduct; and (ii) frustrates legitimate expectations raised by such previous conduct.

According to Article 66 littera a PatA, a patent infringement is committed by anyone who uses the patented invention unlawfully. The PatA distinguishes between the so-called copy (literal infringement; Nachmachung) and the so-called imitation (second half of Article 66 littera a PatA; Nachahmung). According to long-established case law of the Federal Supreme Court, an imitation is committed by anyone who realises the inventive success with knowledge of the patented teaching in a deviating or modified form. The requirements for such an equivalent infringement have been elaborated in more detail by the Federal Patent Court as well as the Federal Supreme Court in a series of recent judgments, with particular reference to the practice of courts in other European jurisdictions. According to the current case law, the Federal Patent Court and the Federal Supreme Court base the assessment of an equivalent infringement on three questions, namely the questions of equal effect, discoverability and equal value.

Equal Effect

Equivalent infringement presupposes, first, that in a process or product which does not literally implement one or more features of a claim, those features are replaced by others which, taking account of the technical problem solved by the invention, perform the same function as the claimed features. The Federal Supreme Court has specified the condition of equal effect in that "the modified embodiment must achieve all the effects which, according to the understanding of the person skilled in the art, are to be achieved by the individual technical features of the patent claim, both individually and in combination". According to this specification, equal effect presupposes that the modified embodiment as a whole, and the modified means alone, have the same effect in comparison with the claimed subject matter.

Discoverability

This second question is not about whether, starting from the invention, the replacing feature would have been obvious to the skilled person. The Federal Patent Court has clarified that the question of discoverability should not be confused with the assessment of the inventive step of a later-filed application with the replacing feature as distinguishing feature over the prior art. The starting point for the assessment of discoverability is not the general prior art, but the patent at issue, and thus it is not necessary to assess whether the replacing feature is inventive in the light of the prior art. Rather, the question is whether, if the features are replaced, the equal effect is obvious to the skilled person taking into account the teaching of the patent. According to Swiss practice, the question is therefore not whether the skilled person was able to find the replacing feature, but whether it is obvious in the light of the patent's teaching that the replacing features have equal effect.

Equal Value

The courts have phrased the third question as follows: giving due consideration to the claim wording in view of the description, would the skilled person have taken the replacing feature into account as being an equivalent solution? The purpose of this third question is to take account of legal certainty. This purpose has been more clearly expressed by the Federal Supreme Court as follows: it must be assessed whether the skilled third party, on objective reading of the patent specification, comes to the conclusion that the applicant has formulated the claim – for whatever reasons – so narrowly that he or she does not claim protection for a solution even though it has equal effect and is discoverable.

Defences against infringement include:

  • Statutory exceptions according to Article 9 PatA; the most relevant exceptions stipulated in this provision are the following:
    1. private and non-commercial use;
    2. research exemption – the effects of a patent do not extend to acts undertaken for research or experimental purposes in order to obtain knowledge about the subject-matter of the invention including its uses;
    3. Bolar-type exemption – the effects of a patent do not extend to acts necessary for obtaining marketing authorisation for a medicinal product in Switzerland or in countries with equivalent medicinal product control;
    4. medical prescription exemption – the effects of a patent do not extend to acts undertaken as part of a medical activity concerning an individual person or animal and involving a medicinal product, in particular the prescribing, dispensing or use of medicinal products by legally authorised persons; and
    5. pharmacists exemption – the effects of a patent do not extend to the direct individual preparation of medicinal products in pharmacies in accordance with a doctor’s prescription or to acts concerning medicinal products prepared in this way.
  • Exhaustion (Article 9a PatA); the most relevant principles are:
    1. even though Switzerland does not participate in the European Economic Area, the general rule stipulated in Article 9a PatA is that EEA-wide exhaustion applies;
    2. global exhaustion applies if the patent protection is only of subordinate importance for the functional characteristics of the goods, subordinate importance being presumed unless the patent proprietor provides prima facie evidence to the contrary; and
    3. national exhaustion applies if the price of patented goods in Switzerland or in the country in which they are placed on the market is fixed by the respective state.
  • Prior user right – According to Article 35 PatA, a patent may not be invoked against any person who, prior to the filing or priority date of the patent application, was commercially using the invention in good faith in Switzerland or had made special preparations for that purpose.
  • Compulsory licences (see 2.2 Third-Party Remedies to Remove Effects of Intellectual Property).
  • Forfeiture and statute of limitation (see 2.9 Special Limitation Provisions).

Experts play no relevant role in patent litigations in Switzerland because the Federal Patent Court is comprised of judges with technical training in all relevant fields of science.

There is no separate procedure for construing patent claims.

Article 26 PatA exhaustively lists the grounds on which Swiss national patents and Swiss parts of European patents may be declared invalid. These include that:

  • the subject matter of the patent is not patentable (eg, not new or not inventive) or excluded from patentability (eg, human body and its elements; naturally occurring gene sequences; inventions whose exploitation would be contrary to human dignity or would disregard the integrity of living organisms);
  • the invention is not described in the patent specification in a manner sufficiently clear and precise for it to be carried out by a skilled person;
  • the subject-matter of the patent goes beyond the content of the patent application in the version that determined the filing date; and
  • the proprietor of the patent is neither the inventor nor his or her successor in title, nor has a right to the grant of the patent on other legal grounds.

While any person with a legitimate interest may bring a nullity action on the basis of the three first grounds, an action under the last-mentioned ground may be brought only by a person claiming to have better rights (Article 28 PatA).

According to Article 27 PatA, the court shall limit the patent where a ground for nullity applies only to a part of the patented invention.

A patent may be amended in litigation if the validity of the patent is the subject-matter of a formal action. This is the case in nullity actions and in infringement actions if the defendant formally raised an invalidity counterclaim (see 2.2 Third-Party Remedies to Remove Effects of Intellectual Property).

Pursuant to Article 24 PatA, the proprietor may amend the patent by:

  • revoking a patent claim;
  • limiting an independent claim by combining one or more patent claims, which are dependent on it; or
  • limiting an independent claim in some other way.

In the last case, the limited claim must refer to the same invention and define an embodiment that is included in the specification of the published patent and in the version of the patent application that determined the date of filing.

Invalidity and infringement are heard together in the same proceedings.

In Switzerland, the Federal Patent Court has exclusive jurisdiction for actions involving substantive patent issues. An enforcement action is initiated with the filing of a written and substantiated statement of claim and payment of an advance on court costs, which is followed by the written statement of defence. In the statement of defence, the defendant may either file a counterclaim on invalidity or simply raise the invalidity of the patent in suit as a defence.

Swiss courts, including the Federal Patent Court, have a tradition of actively facilitating and promoting settlements. The procedural step that serves this purpose is the preparatory or settlement hearing, to which the parties are summoned after the first exchange of submissions. At the preparatory hearing, a court delegation comprising a legally trained judge and a technically trained judge provide their preliminary assessment. The preliminary assessment of the delegation of judges serves as starting point for subsequent settlement discussions with the involvement of the court delegation. Statistically, the majority of patent disputes are settled at this stage.

If no settlement is achieved, the litigation is continued with a second round of submissions. Thereafter, the technical judge provides a written opinion that is then provided to the parties for comment. The final step is a hearing that is the first and last opportunity for the parties to directly address the full panel of judges. While the parties are precluded at this stage from introducing new facts, they typically use this opportunity to emphasise certain points and summarise their most important arguments. The court then renders its judgment, typically within around 18 months after commencement of the action.

The Federal Patent Court decides cases with panels of three or five judges. Panels always comprise legally and technically trained judges.

See 5. 1 Special Procedural Provisions for Intellectual Property Rights.

The Federal Patent Court does not consider challenging the validity of a patent a reason for staying infringement proceedings. To date, the Federal Patent Court has also never stayed a litigation pending the outcome of EPO opposition proceedings.

See 1.5 Rights and Obligations of Owner of Intellectual Property Right.

As a general rule, the losing party bears the court costs and has to reimburse the prevailing party for legal costs. Both court costs and indemnification for legal costs are determined based on tariffs that depend on the value of the dispute.

If preliminary measures have been ordered and they turn out to be unjustified in the action on the merits, the applicant is liable for any loss or damage that the measures may have caused. If the applicant proves, however, that he or she applied for the measures in good faith, the court may reduce the damages or entirely release the applicant from liability.

The remedies are the same irrespective of whether the patent in dispute is a Swiss national patent or the Swiss part of a European patent.

The appeal to the Federal Supreme Court does not have suspensive effect. Accordingly, injunctions remain enforceable pending the appeal proceedings. The Federal Supreme Court may grant suspensive effect upon request, but the threshold is so high that in practice the requirements are hardly ever met.

There are no special provisions concerning the appellate procedure for intellectual property rights proceedings.

Judgments of the Federal Patent Court may be appealed to the Swiss Federal Supreme Court, which has full discretion with respect to points of law. In contrast, review of the facts is only possible on extremely limited grounds, such as in the case of an abuse of law by the first instance court.

In appeals against decisions on preliminary measures, the grounds of appeal are even narrower and limited to violations of constitutional rights.

Upon filing an action, the plaintiff is ordered to make an advance payment of court costs. Typically, the first advance payment is one half of the expected court costs in the case of a final judgment. Court costs are determined on the basis of a tariff that depends on the value of the dispute.

The fee invoiced by the Federal Patent Court for accepting a protective brief is CHF1,000–2,000.

To the extent they are not covered by the statutory indemnification for legal costs (see 6.2 Rights of Prevailing Defendants), pre-litigation expenses such as costs related to investigations, warning letters, etc may be claimed as damages in the litigation.

Court costs are determined on the basis of a tariff that depends on the value of the dispute.

As a general rule, the losing party bears the court costs and has to reimburse the prevailing party for legal costs. Both court costs and indemnification for legal costs are determined based on tariffs that depend on the value of the dispute.

According to Swiss jurisprudence, all aspects of an IP dispute are arbitrable subject matter, including questions of infringement and validity. While it is not common to settle stand-alone patent infringement and validity disputes by way of arbitration, IP issues that arise in the context of contractual disputes are very often decided by arbitral tribunals as preliminary questions. In cases of doubt, arbitration clauses are considered to extend to IP issues.

Generally, the assignment of intellectual property rights is not subject to any restrictions. Under Swiss law, the assignment of a right is considered to involve two agreements: the undertaking to assign, followed by the actual disposition of the right. While the first agreement is not subject to any form requirements, the transfer of a patent application and of a patent is valid only if evidenced in writing (Article 33 PatA).

The assignment does not necessarily need to be recorded in the patent register (Article 33 PatA). Third parties may, therefore, not rely on the patent register to reflect current, true ownership structures.

See 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights.

Licence agreements are not subject to any form requirements. They may be recorded in the patent register, and they should be recorded if the parties want to ensure that the licensee's rights are protected against third-party acquirers. The PatA states that rights "not recorded in the Patent Register are invalid against persons who have acquired the rights to the patent in good faith" (Article 33).

See 10.3 Requirements for Restrictions to License an Intellectual Property Right.

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Meyerlustenberger Lachenal AG (MLL) has an IP Team that unites Switzerland’s leading consultants and representatives for patent law. Led by Simon Holzer, MLL's patent team includes five partners and nine associates. The firm handles an impressive amount of litigation in the Swiss life sciences and high-tech spaces and it is many global pharmaceutical originators’ first choice. The team covers a wide range of industries including pharmaceuticals, medical devices, software and telecommunications. It has also taken centre stage in Switzerland's first FRAND battle. MLL's patent team has particular expertise in the field of supplementary protection certificates. Very recently, it achieved two landmark Swiss Federal Supreme Court decisions on behalf of Gilead Sciences Inc. (Gilead v Mepha Pharma AG), which affirmed the validity and infringement of Gilead's SPC for the combination product Truvada.

In 2019, the Swiss Federal Patent Court and the Swiss Federal Supreme Court took the opportunity to clarify substantive points of patent law and procedural questions regarding patent infringement proceedings in Switzerland. The present overview is not intended to be a complete summary of patent law decisions in Switzerland, but rather highlights a few rulings that may be of importance for future cases.

Limitation of the Patent in Infringement Proceedings

Decision of the Federal Supreme Court 4A_70/2019 of 6 August 2019

In Switzerland, the question of for how long a patentee can still amend his or her patent in infringement proceedings – in order to defend that patent against possible nullity arguments of the alleged infringing party – is still a matter of controversy.

In patent infringement proceedings in Switzerland, the alleged infringer, as a mere defence, can present nullity arguments against the validity of the patent in dispute. It is possible, but not necessary that the alleged infringer file a revocation action.

According to the Swiss case law on the Federal Code of Civil Procedure, a party to civil litigation has two opportunities to present their arguments and evidence on the relevant facts within the proceedings. This also applies to patent infringement proceedings and the arguments concerning the infringement as well as the validity of the patent in dispute. In the past, Swiss patent infringement proceedings were usually structured such that the patentee dealt with the question of patent infringement in the complaint but did not usually address the validity of the patent in dispute. The alleged patent infringer then normally claimed that the asserted patent was neither valid nor infringed in their answer to the complaint.

It was common practice before the Federal Patent Court that the patentee was then asked to file the first part of his or her reply and to comment only on the alleged lack of validity of the concerned patent. The patentee could present auxiliary requests to defend and enforce his or her patent with limited scope.

After this first part of the patentee's reply, the Federal Patent Court normally summoned the parties to a settlement hearing. This hearing typically had two parts: (i) a delegation of the court (and in particular the presiding judge) discussed the matter of the case with the parties, asked questions where party submissions were unclear, and provided substantiation advice; and (ii) the delegation of the court (and in particular one of the technical judges) explained its preliminary assessment of the matter. This preliminary assessment of the Judge Rapporteur on the factual and legal situation of the case was intended to facilitate a mutual settlement.

This course of the procedure ensured that, at the time of the settlement hearing, both parties had been invited to comment once on the question of infringement and once on the validity of the patent in dispute.

If no mutual agreement between the parties was reached at the settlement hearing, the patentee was normally asked to submit the second part of his or her reply and to comment (for the second time) on the facts concerning the infringement.

Thereupon, the alleged infringer, in his or her second submission, was invited to present unlimited arguments (for the second time) with respect to the infringement and the validity of the patent.

After the second submission of the defendant, the double exchange of briefs was completed and both parties could only submit new factual allegations and evidence if it related to either completely new facts that had only arisen since the last submission, or if the new factual allegations were prompted by the last submission of the other party.

In the case O2016_009 between Hamilton Medical AG (patentee) and imtmedical AG (alleged infringer), the Federal Patent Court allowed the patentee to assert a limited version of its patent after the settlement hearing with the second part of its reply. According to the Federal Patent Court, it was not necessary that the patentee showed that the limitation of the patent in dispute was prompted by new arguments of the alleged infringer.

In its ruling, the Federal Patent Court concluded that the limited patent of Hamilton Medical AG was valid and infringed by imtmedical AG.

imtmedical AG filed an appeal to the Federal Supreme Court arguing that Hamilton Medical AG had de facto had three unlimited opportunities to present new facts concerning the validity of its patent before the Federal Patent Court – ie, in the complaint, in the first part of the reply and in the second part of the reply. According to imtmedical AG, this should have been inadmissible, as the Swiss Code of Civil Procedure allows the parties to present factual assertions only twice without procedural restriction.

Hamilton Medical AG on the other hand took the view that it was not correct to assume that the patentee had, or should have, already addressed possible nullity arguments in its initial complaint. The patentee could not reasonably anticipate all possible invalidity arguments. Therefore, it could not be assumed that the patentee had the possibility to comment on the validity of the patent in dispute three times but only twice – ie, in the first part of the reply and in the second part of the reply.

However, the Swiss Federal Supreme Court disagreed with the patentee and ruled in favour of imtmedical AG. The Supreme Court held that it was irrelevant whether the patentee had actually commented on the validity of the patent in dispute in the complaint. According to the Supreme Court, it is sufficient that the patentee could theoretically have done so. According to the Swiss Code of Civil Procedure, each party is allowed to express itself only twice without restrictions on the facts of the case (ie, also on the facts underlying the validity of the patent) and the complaint is to be regarded as the patentee’s first chance to present its case regarding infringement and validity.

The Federal Supreme Court therefore set aside the judgment of the Federal Patent Court and referred the matter back to the Federal Patent Court.

The Federal Patent Court will have to re-examine whether the patentee's limitation of the patent in its third submission can be regarded as a reaction, from a technical and thematic point of view, to new nullity attacks raised by imtmedical AG and, in particular, to a new prior art document formally introduced by imtmedical AG after the settlement hearing. The limited version of the patent can only be taken into account if it turns out to be a reaction prompted by imtmedical AG's nullity arguments. The Federal Supreme Court does not appear to have set very high standards in this respect and stated, obiter dicta, that at first glance it appeared that the limitation of the patent in dispute could be seen as a direct reaction to the new prior art presented by imtmedical AG.

The Federal Supreme Court also stated in its judgment that it disagreed with the Federal Patent Court’s practice of allowing the patentee to split the reply into two parts and questioned the admissibility of such proceedings.

In the meantime, the Federal Patent Court has adapted its practice and no longer asks the patentee to file its reply in two separate parts. Since late 2019, proceedings before the Swiss Federal Patent Court are conducted in such a way that the settlement hearing usually takes place after the answer of the alleged patent infringer to the complaint without the court having heard the patentee's comments on the invalidity objections presented by the alleged infringer in that answer.

The patentee presently has an unrestricted possibility to comment on the facts underlying the validity of his or her patent only after the settlement hearing. On this occasion, the patentee may also rely on a limited version of his patent.

The new practice of the Federal Patent Court makes it more difficult for the Judge Rapporteur to provide the parties with a preliminary assessment of the case at the settlement hearing because the patentee has not yet commented on the invalidity objections raised by the alleged infringer, since, according to the rules of the Swiss Code of Civil Procedure, the Judge Rapporteur is prohibited from anticipating the patentee's arguments with respect to the validity of the patent in dispute. It remains to be seen whether, in the future, this new practice will bring down the high rate of settlements in infringement cases before the Swiss Federal Patent Court.

Federal Patent Court Decision O2016_012 of 28 October 2019

The question of whether, and under what circumstances, the patentee can rely on an amended (ie, hopefully valid) version of his or her patent in the course of patent infringement proceedings remained a highly controversial topic before the Federal Patent Court in 2019.

In proceedings between Stemcup Medical Products AG (ie, the patentee of the Swiss/Liechtenstein part of EP 1 411 869 B1) and two companies of the ImplanTec group, the Judge Rapporteur of the Federal Patent Court came to the preliminary conclusion, in a written assessment submitted to the parties before the trial hearing, that the patent in dispute, although new, inventive and infringed, was most likely amended inadmissibly and therefore invalid in light of Article 123(2) of the European Patent Convention (EPC).

At that time, the patentee had already had two opportunities to present new facts. Therefore, Swiss procedural law prevented the patentee from simply amending its patent in dispute within the proceedings before the Federal Patent Court and from relying on a limited version to overcome the possible deficiency under Article 123(2) of the EPC.

The patentee therefore went to the Swiss Institute of Intellectual Property and applied for a limited version of its Swiss/Liechtenstein patent.

The Swiss Institute of Intellectual Property acted swiftly and granted a limited version of the patent prior to the hearing before the Federal Patent Court.

At the hearing, the patentee took the position that the patent infringement should be assessed on the basis of the limited version of its patent. In contrast, the alleged infringer was of the opinion that the new version of the patent was introduced into the proceedings too late and could not be seen as an immediate reaction to specific nullity arguments presented by the alleged infringer since the defendant's last brief was filed several months ago. According to the alleged infringer, the patent infringement had to be assessed based on the previous version of the patent and, therefore, the patent infringement claim had to be dismissed as the patent was invalid according to Article 123(2) of the EPC.

Subsequently, the Swiss Federal Patent Court issued its first ever ruling with a dissenting opinion. Three of the five judges were of the opinion that the new version of the patent should be taken into account, as it was a new fact that had arisen only recently and could not have been introduced into the proceedings earlier. In contrast, two of the five judges concluded that the infringement claim should be dismissed because the new version should not be taken into account and the patent in dispute violated Article 123(2) of the EPC. Over twelve pages, the two judges explained their dissenting opinion that the Swiss Code of Civil Procedure does not allow an amended patent to be taken into account at such a late stage of infringement proceedings. Their main argument was that the patentee had been free to proceed, based on a limited version of the patent, for a long time and that there was no apparent reason why the patentee had waited for such a long time after the double exchange of briefs and had filed the limitation only shortly before the hearing.

The alleged infringer filed an appeal against this decision, which was based on the opinion of the majority of the judges of the Federal Patent Court. The Federal Supreme Court thus has another opportunity to opine on the question of whether and under what circumstances a patent can still be amended (ie, limited) while patent infringement proceedings are pending. Unlike Hamilton Medical AG v imtmedical AG (discussed above), this case involves a limitation of the patent by the Swiss Institute of Intellectual Property. The patentee asked for this limitation in view of the hearing in the patent infringement proceedings before the Federal Patent Court, after the patentee already had two opportunities to present its case without restrictions according to the rules of the Swiss Code of Civil Procedure, including amended (ie, limited) versions of its patent.

Decision of the Federal Supreme Court 4A_274/2019 of 26 November 2019

Similarly to other courts in Europe, the Swiss Federal Supreme Court has been busy with cases concerning supplementary protection certificates (SPCs) for combination products in the recent past. Although the Swiss SPC legislation is similar to the Regulation (EC) No 469/2009 of 6 May 2009 concerning the SPC for medicinal products, and despite the fact that the Swiss Federal Supreme Court takes into account the case law of the CJEU, Swiss particularities nevertheless remain. While the Swiss Federal Supreme Court confirmed in its ruling 4A 576/2017 of 11 June 2018, on an SPC for the combination of tenofovir disoproxil fumarate plus emtricitabine, that the infringement test still applies to already granted SPCs and that the recent case law on SPCs for combination products of the CJEU shall only be adopted for new SPC applications and that this new case law may not be applied retroactively, in 2019, the Federal Supreme Court had to rule on the scope of protection of the same SPC.

Following a complaint by Gilead, the Federal Patent Court, prohibited Mepha from marketing drugs containing the active ingredients tenofovir disoproxil phosphate plus emtricitabine in Switzerland based on Gilead's combination SPC for tenofovir disoproxil fumarate plus emtricitabine.

The Federal Patent Court held that drugs with the active ingredients tenofovir disoproxil phosphate and emtricitabine would fall within the scope of protection of the combination SPC for tenofovir disoproxil fumarate and emtricitabine despite the different salt forms.

According to the Federal Patent Court, the scope of protection of Gilead's SPC has to be examined as follows in the case at hand:

First, whether the product in dispute is a medicinal product and whether that medicinal product falls within the scope of protection of the relevant basic patent must be examined. These requirements were not disputed in the case between Gilead and Mepha.

Second, whether the active ingredients in the allegedly infringing pharmaceutical combination have the same pharmacological effect as the active ingredients mentioned in the SPC, despite the different salt form of the tenofovir disoproxil, must be examined. According to the Federal Patent Court, the two actives had the same pharmacological properties since the defendant's medicinal products had been authorised as generics of the medicinal products that formed the basis of Gilead's SPC.

However, Mepha disagreed and filed an appeal with the Federal Supreme Court. Mepha argued that the assessment of whether the scope of protection of Gilead's SPC was infringed should not have been based on the marketing authorisation of Mepha's generic products, but on the principles of patent law in light of the question of whether there is an infringement by equivalence by tenofovir disoproxil phosphate.

The Federal Supreme Court dismissed the appeal and confirmed that an SPC is an intellectual property right at the interface between patent law and pharmaceutical law and that the Federal Patent Court correctly determined the scope of protection of the SPC. According to the Federal Supreme Court, it was correct to confirm the infringement of Gilead's SPC in light of the pharmacological properties of the tenofovir disoproxil fumarate and the tenofovir disoproxil phosphate according to the Swiss marketing authorisations of the concerned medicinal products.

The Swiss Federal Supreme Court referred to the CJEU's ruling C-392/97 (Farmitalia), where the CJEU held that where an active ingredient in the form of a salt is referred to in the marketing authorisation in question and is protected by a basic patent in force, the certificate is capable of covering the active ingredient as such and also its various derived forms such as salts and esters, as medicinal products, in so far as they are covered by the protection of the basic patent. According to the Federal Supreme Court, this is not only true when examining the grant of an SPC but also when assessing its scope of protection.

Some Light on Inventive Step

In two recent judgments towards the end of 2019, the Federal Patent Court took the opportunity to shed some light on particular questions concerning inventive step.

Federal Patent Court Decision S2019_007 of 1 October 2019

Like many other jurisdictions, the Swiss Federal Patent Court has also had to deal with Eli Lilly's EP 1 173 181. The patent at stake in Switzerland was the Swiss/Liechtenstein part of EP 1 173 181 H1, after partial surrender of EP 1 173 181 B3, which was the result of central limitation proceedings before the European Patent Office. The patent claims to protect 1-5mg forms of tadalafil for the treatment of erectile dysfunction where inhibition of PDE5 is desirable. European courts have been divided as to whether this patent is valid or not.

In preliminary injunction proceedings in Switzerland, Eli Lilly argued that the inventive step of EP 1 173 181 H1 over the closest prior art WO 97/03675 A1 (Daugan) must be examined strictly according to the EPO's problem-solution approach. According to Eli Lilly, courts that consistently follow the problem-solution approach conclude that EP 1 173 181 is inventive, while courts that use other approaches to examining inventive step requirements tend to conclude that the patent lacks inventive step.

In particular, the following courts ruled that Eli Lilly's patent lacks an inventive step:

  • the UK Supreme Court, decision (2019) UKSC 15 of 27 March 2019;
  • the German Federal Patent Court, decisions 3 Ni 22/15 (EP) and 3 Ni 27/15 (EP) of 24 October 2017; and
  • the Dutch District Court of The Hague, decision C/09/532013 / HA ZA 17-488 of 14 March 2018.

On the other hand, the following courts assumed Eli Lilly's low dose patent of tadalafil to be valid:

•       the Danish Søog Handelsretten, decision A-49-17 of 15 June 2018; and

•       the Finnish Markkinaoikeus, decision 131/19 of 25 March 2019.

The Swiss Federal Patent Court followed the EPO's problem-solution approach but concluded that Eli Lilly's patent is not inventive.

Similarly to the German Federal Court, the Swiss Federal Patent Court held that EP 1 173 181 does not protect a dosage regime (ie, instructions regarding the dosage of the active ingredient) since it lacks an essential element.

In view of the closest prior art, the Federal Patent Court defined the objective technical problem as provision of a clinically effective and safe dose of tadalafil for the treatment of sexual dysfunction.

According to the Federal Patent Court, it was credible that the skilled person would aim to find the lowest possible effective dose of tadalafil in the case at hand. The court found that the skilled person would know that a lower dose would have fewer side effects. In addition, the skilled person would try to find the lowest possible effective dose, because the regulatory authorities might likely require this.

One of the core statements in the ruling of the Swiss Federal Patent Court is that it was not necessary for the alleged infringer to show a "reasonable expectation of success" that a dose of 5mg tadalafil or less would actually be effective in order to challenge the patent's inventive step in the case at hand.

According to the Federal Patent Court, there is no need to show a "reasonable expectation of success" if the skilled person had other sufficient incentives to achieve the claimed invention (eg, a likely requirement to show the lowest possible dose to the marketing authorisation authority). If such incentives exist, the skilled person would take only the steps necessary to implement the invention unless he or she had reasons to assume that this would not be successful from the outset.

In summary, the Swiss Federal Patent Court held that the skilled person would have routinely moved towards a dose of 5mg or less of tadalafil. This decision was taken in summary proceedings, which do not result in a final and legally binding ruling but have some prejudicial effect for ordinary proceedings on the merits.

Federal Patent Court Decision O2017_015 of 7 November 2019

In this case the patentee, Alstom Transport Technologies SASU, sued Bombardier Transportation (Switzerland) AG for alleged infringement of claims 1 and 7 of the Swiss/Liechtenstein part of EP 1 024 070 B1 by Bombardier’s Twindexx train in a specific IR100 configuration used by the Swiss Federal Railways.

Bombardier defended its position by asserting that the concerned patent was neither valid nor infringed.

The Federal Patent Court concluded there was no infringement of EP 1 024 070 and also concluded that the patent lacked inventive step. When examining inventiveness over the closest prior art, the Federal Patent Court held that it was irrelevant whether the patent, as granted, showed deficiencies over the prior art. According to the Federal Patent Court, inventive step cannot be inferred from the fact that the skilled person would allegedly not make a certain modification from the state of the art because of expected drawbacks, if these drawbacks would not be overcome by the claimed invention. According to the Federal Patent Court, it was irrelevant that the placement of certain modules in a certain position, as claimed by the patent, could have unwanted disadvantages compared to the prior art. Such disadvantages, resulting from an amendment of the prior art, may not be invoked to argue that the skilled person would not carry out such modifications. Therefore, the patent in dispute lacked inventive step according to the Federal Patent Court.

Proportionality of (Preliminary) Injunctive Relief

Federal Patent Court Decision S2019_002 of 15 August 2019

At least since the US case of eBay Inc v MercExchange, LLC, IP courts all over the world ask "injunction, injunction, what is your correct function?" FRAND cases and decisions involving complex devices with relatively small patent infringing functions are not the only cases where there is heated debate about this topic.

In Switzerland, the Federal Patent Court made an important finding in a recent ruling concerning a preliminary injunction sought by two plaintiffs based on the Swiss/Liechtenstein portion of EP 1 408 850.

The Federal Patent Court concluded that EP 1 408 850 was valid and infringed. It then discussed the proportionality of the requested preliminary injunction. According to the Federal Patent Court, preliminary measures must be proportionate in the sense that the ordered measure must be suitable to avert the asserted disadvantages of the plaintiff and must go no further than is necessary to avoid those disadvantages.

According to the Federal Patent Court, there is controversy in Switzerland over whether preliminary measures may be made dependent on the question of whether the preliminary measures applied for have a disproportionately heavy impact on the legal sphere of the defendant.

In the present case, however, the Federal Patent Court could leave this aspect undecided because the defendants did not claim that the preliminary measure applied for had a disproportionate impact on their legal sphere, but rather that it was in the public interest that the marketing of the attacked medical device in Switzerland should not be prohibited.

In essence, the defendants argued that there are patients whose heart valve insufficiency had been successfully treated with the attacked medical devices but that there were no successful treatments with the plaintiff's devices. A preliminary injunction on the distribution of the attacked medical devices would jeopardise the effective treatment of these patients.

According to the Swiss Federal Patent Court, this argument was irrelevant. According to the court, it was clear that public interests are not to be taken into account when it comes to examining the requirements of the grant of a preliminary injunction. According to the Federal Patent Court, the Swiss Patent Act provides for an exhaustive system of compulsory licences in order to protect public interests from being jeopardised by the enforcement of patents. In particular, Article 40 of the Swiss Patents Act (PatA) provides for a compulsory licence in the public interest. According to the decision of the Federal Patent Court it remains open (and was not to be decided in the concerned case) whether a compulsory licence can also be asserted in summary proceedings or whether it requires ordinary proceedings on the merits (see the compulsory licence granted in summary proceedings in Germany, German Federal Court decision X ZB 2/17 "Raltegravir").

In the Swiss case the defendants did not claim that they should be granted a compulsory licence in order to protect public interests. In particular, the defendants had not submitted a licence offer to the patentee on reasonable market terms, which the patentee had not accepted within a reasonable period (see the requirements of Article 40 of the PatA in conjunction with Article 40e, paragraph 1 of the PatA). Accordingly, the objection that the requested preliminary injunction was disproportionate was rejected.

The matter is pending at the Federal Supreme Court.

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Homburger helps businesses and entrepreneurs master their greatest challenges. The firm combines the know-how, drive and passion of all its specialists to support its clients in reaching their goals. Whether its advising clients on transactions, representing them in proceedings or helping them in regulatory matters: Homburger is dedicated to delivering exceptional solutions, no matter the complexity and time constraints. The firm is renowned for pioneering legal work, uncompromising quality and outstanding work ethics. At their best when working in teams, Hombuger's lawyers collaborate smartly and efficiently both within the firm and with clients and other involved parties, which is crucial to its performance.

Trends and Development

Authors



Meyerlustenberger Lachenal AG (MLL) has an IP Team that unites Switzerland’s leading consultants and representatives for patent law. Led by Simon Holzer, MLL's patent team includes five partners and nine associates. The firm handles an impressive amount of litigation in the Swiss life sciences and high-tech spaces and it is many global pharmaceutical originators’ first choice. The team covers a wide range of industries including pharmaceuticals, medical devices, software and telecommunications. It has also taken centre stage in Switzerland's first FRAND battle. MLL's patent team has particular expertise in the field of supplementary protection certificates. Very recently, it achieved two landmark Swiss Federal Supreme Court decisions on behalf of Gilead Sciences Inc. (Gilead v Mepha Pharma AG), which affirmed the validity and infringement of Gilead's SPC for the combination product Truvada.

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