Spotlight: patent enforcement and invalidity procedures in Switzerland

An extract from The Patent Litigation Law Review, 6th Edition

Types of patent

Switzerland is a signatory to the European Patent Convention, so Swiss national patents and European patents granted by the European Patent Office coexist in Switzerland. The granting authority for Swiss national patents is the Federal Institute of Intellectual Property (IPI) in Berne, which also maintains the register for Swiss national patents and the Swiss parts of European patents.⁶

Unlike European patents, Swiss national patents are granted without the IPI examining whether the invention is new and inventive in light of the prior art.⁷ Despite this difference, a Swiss national patent confers the same rights on its proprietor as the Swiss part of a European patent.

Under Swiss law, supplementary protection certificates (SPCs) for medicinal products and plant protection products may be granted on the basis of Swiss national and Swiss parts of European patents. The Swiss regime⁸ for SPCs closely follows the corresponding legislation of the European Union; however, because Switzerland is not a member of the European Union, judgments of the European Court of Justice on the interpretation and application of the EU legislation on SPCs are not binding in Switzerland. A Swiss SPC's maximum term of protection is five years.

Swiss lawmakers also partially followed the European Union's endeavours to improve the health of children by incentivising pharmaceutical companies to perform paediatric tests for their drugs by extending already granted SPCs by an additional six months (paediatric extensions).⁹ The Swiss legislator, however, went one step further and decided to grant the benefit of an additional six-month exclusivity period not only to those who have already been granted an SPC but also to those who, for whatever reason, have not previously obtained an ordinary SPC (paediatric certificate).¹⁰ The detailed regulations for the paediatric extensions and the paediatric certificate can be found in the Federal Ordinance on Patents.¹¹

Substantive law

The infringement analysis begins with claim interpretation. The starting point is the wording of the patent claims, whereby in case of a European patent, the wording of the claim in the respective procedural language is binding, even if this is English. Pursuant to Article 69 of the European Patent Convention and the parallel provision in the Patent Act,²¹ the description and the drawings must be used to interpret the patent claims. The Federal Patent Court describes the rule of interpretation that it applies as follows:²²

Patent claims are to be read in accordance with the principles of good faith, i.e. the willingness to understand the claim and to give it a reasonable technical meaning. In principle, the patent claim as a whole is to be taken as a starting point. Where no credible technical teaching can be inferred from a claim even after interpretation taking into account the description and drawings, the patentee bears the consequences of the incorrect, incomplete or contradictory definition of the claimed subject-matter.

Patent claims are to be interpreted from the point of view of the person skilled in the art in the light of the description and the drawings. General common knowledge, as so-called fluid prior art, is also a means of interpretation. If the patent specification does not define a term differently, then the common understanding in the relevant technical field is applied.

Patent claims are to be interpreted functionally, i.e., a feature is to be understood such that it can fulfil the intended purpose. In case of doubt, the claim is to be read such that the embodiments specified in the patent are literally covered; on the other hand, the claim wording must not be restricted to these embodiments if further embodiments may be covered.

When case law talks about the “broadest interpretation” of claim features, the feature must be understood in such a way that it can fulfil its purpose within the scope of the invention. I.e., the claim should in principle not be interpreted narrower than its wording, but also not so as to cover embodiments that do not realize the effect of the invention.

Rather than providing a conclusive list of infringing activities, the Patent Act, in a general manner, states that the patent confers on its proprietor the right to prohibit others from commercially using the invention.²³ By way of example, 'using the invention' includes manufacturing, storage, offering, placing on the market, importing, exporting and carrying in transit, as well as possession for any of those purposes. If the invention concerns a manufacturing process, the effects of the patent also extend to the products directly obtained by that process.²⁴

Regarding transit, the Patent Act clarifies that carrying in transit may only be prohibited if the proprietor of the patent is permitted to prohibit importation into the country of destination.²⁵

The Patent Act further states that 'imitation is also deemed to constitute use'.²⁶ This provision served as the basis for a long chain of case law that ultimately evolved into today's doctrine of equivalents. According to recent case law,²⁷ a method or device that does not literally fulfil one or more claim features but employs replacing features is considered an imitation if from the following three questions the first two may be answered in the affirmative and the third in the negative:

1. Does the replacing feature in conjunction with the other technical features of the patent claim objectively fulfil the same function as the claimed feature (same effect)?
2. Is the same effect obvious to a person skilled in the art from an objective point of view, taking into account the teaching of the patent, when the features are exchanged (accessibility)?
3. Does a person skilled in the art, upon objective reading of the patent specification, come to the conclusion that the patentee has formulated the claim – for whatever reason – so narrowly that he or she does not claim protection for an embodiment with the same effect that is accessible (equal value)?

Furthermore, the Patent Act holds that not only the direct infringer may be held liable, but also 'any person who abets any [direct infringement], participates in them, or aids or facilitates the performance of any of these acts'.²⁸ Illicit contributory infringement, therefore, requires that the person in question contributes to an act that qualifies as direct infringement under the Patent Act. From this requirement of accessoriness, the Swiss courts have concluded that a person may be liable as contributory infringer only if the direct infringement to which he or she contributes takes place in Switzerland.

On the other hand, the Swiss courts have also decided that it does not matter from where the contributory infringer contributes to a direct infringement in Switzerland. A person may, therefore, be liable as a contributory infringer under Swiss law if this person contributes to a direct infringement in Switzerland either from within Switzerland or from abroad.²⁹

A further requirement derived from the statutory requirement of accessoriness is that there must be a sufficiently close causal connection between the contributory action and the direct infringement.³⁰ This is the case if, for example, means are explicitly offered for an infringing use or if means may only be used in such a manner.

Swiss national patents and European patents are presumed to be valid. Upon request of an interested third party, a Swiss national and a Swiss part of a European patent may, however, be declared completely or partially invalid if the subject matter of the patent is not patentable – in other words, if:

1. what is claimed is not novel, not inventive, lacks industrial applicability or relates to unpatentable subject matter;³¹
2. the invention is not described in the specification in a manner that is sufficiently clear and precise for it to be carried out by a person skilled in the art;
3. the subject matter of the patent goes beyond the content of the patent application in the version that determined the filing date; or
4. 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.³²

The novelty test is strict. An invention only lacks novelty if it is anticipated in a single piece of prior art or by prior use. While both the Federal Patent Court and the Federal Supreme Court have repeatedly stated that there is no single test for assessing inventive step, both courts predominantly apply a modified form of the problem-solution approach initially developed by the European Patent Office.³³

Defences to infringement claims include a private use exemption, an experimental use exemption, a Bolar-type exemption and a prior user right.³⁴ Two further exceptions – doctors' and pharmacists' exceptions – entered into force in 2019.

The Patent Act also contains a detailed provision on exhaustion.³⁵ The principle rule is that patent rights exhaust on a Switzerland and European Economic Area basis (the principle of regional exhaustion). Exceptions to this rule are international (global) exhaustion if the patent protection is only of subordinate importance for the functional characteristics of the goods in question, and national (Swiss) exhaustion if the prices of the patented goods are publicly fixed.

In a preliminary injunction case, the Federal Patent Court held that a patented cooling system for a turbo charger was only of subordinate importance (i.e., nice to have) for a car equipped with a combustion engine featuring such a device and that, therefore, in that case international exhaustion applied.³⁶