In a recent decision the Federal Supreme Court clarified the prerequisites for the precautionary taking of evidence in patent litigation. Although essentially positive for patent owners, the decision defines the requirements that the patent owner must meet if it wants the court to order the precautionary taking of evidence in relation to a patent infringement.
Over a year ago, the new Federal Civil Procedure Code came into force. Article 158(1)(c) of the code states that the court can take evidence at any time if the requesting party shows credibly that:
- the evidence is at risk; or
- it has an interest worthy of protection.
The prevailing opinion in Switzerland is that this provision can be used to clarify the chance of success of envisaged litigation. The requesting party must provide prima facie evidence of the existence of an interest that is worthy of protection, but not of the merits of its main claim. In this regard, this general procedural provision of the code appears to be in conflict with Article 77 of the Patents Act, which requires – for the purpose of identifying a potentially infringing object – that the requesting party show prima facie evidence of patent infringement.
Whereas the court of first instance held that in patent litigation Article 77 of the Patents Act prevails over Article 158 of the code, the Federal Supreme Court held that Article 158 should also fully apply. Accordingly, the requesting party need not provide prima facie evidence of the existence of facts that are to be established by means of the precautionary taking of evidence in terms of Article 158. However, this approach does not mean that the patent owner is relieved from any kind of burden of proof. The patent owner must still provide prima facie evidence of the existence of all the other facts that are necessary in establishing a patent infringement claim, as this is required in order to show that there is an interest worthy of protection.
In this case the patent owner had to provide prima facie evidence of actions committed by the defendant that might have constituted contributory patent infringement (if the precautionary taking of evidence had revealed that the objects infringed the requesting party's patent). As the requesting party failed to provide such evidence, its request was dismissed.
For further information on this topic please contact Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email ([email protected]).