Q: What options are open to a patent owner seeking to enforce its rights in your jurisdiction?
According to Swiss law, if a patent is being infringed the patent owner is entitled to stop activities such as the advertising, selling, manufacturing or importing of infringing goods. In addition, such goods can be seized and destroyed. Moreover, the patent owner is entitled to financial compensation.
In general, the first step in infringement proceedings is for the rights holder to send out a cease and desist letter. Such letter is subject to no formalities. The costs of a warning letter are not claimed from the potential infringer and there is no legal requirement to send a cease and desist letter.
If the potential infringer does not stop its activities, a legal action can be filed with the Swiss Federal Patent Court unless an agreement between the parties provides for mediation or arbitration proceedings. The Rules of Civil Procedure provide for injunctive relief. If the claimant can prove urgency, a court can grant an ex parte injunction; usually, injunctions are granted after the court has heard the defendant.
In addition, Swiss law provides for criminal penalties for certain patent-infringing activities and for customs measures to prevent the import of infringing products into Switzerland.
Q: Are parties obliged to undertake mediation/arbitration before bringing a case before the courts? Is this a realistic alternative to litigation?
There is no obligation to engage in mediation or arbitration proceedings. If both parties agree to engage in mediation or arbitration proceedings, such proceedings can constitute a realistic alternative to litigation regarding the duration of the case and the business orientation of the solution. On the other hand, arbitration proceedings tend to be more expensive than state court proceedings.
Q: Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?
The Federal Patent Court is competent as the court of first instance to decide infringement proceedings and nullity proceedings. The patent court judges are trained in law and in a technical area, and are picked in accordance with the ease of the case to be decided. The technical judges are primarily practising patent attorneys trained in various technical and scientific areas. Litigants can expect a good level of expertise from the patent court.
Due to its own expertise, in general, the patent court does not appoint external experts. If a party hires an external expert to provide an expert opinion, the patent court regards the expert opinion to constitute the non-neutral party’s allegations.
The Federal Supreme Court, which acts as the court of second instance, neither has technical judges nor hires external experts, as it decides only questions of law.
Q: Are validity and infringement dealt with together or does your country have a bifurcated system?
The Federal Patent Court deals with infringement and invalidity questions, and examines all questions in the same proceedings.
Q: Who may represent parties engaged in a dispute?
Attorneys admitted to the Bar in Switzerland are qualified to represent clients in court proceedings. In patent suits, the attorneys are assisted in the form of co-representation by technically trained patent attorneys. Such co-representation is not required, but is recommended. In invalidity proceedings before the Federal Patent Court, a Swiss patent attorney can represent a client on his or her own.
Q: To what extent is pre-trial discovery permitted?
Swiss law does not acknowledge pre-trial discovery. However, in case of a potentially infringing method, product or means of manufacture, the Patent Act allows for the court to admit a description of such alleged infringement. The claimant must initiate summary proceedings and establish the patent infringement; only the missing piece of information can remain open. If the request fulfils all conditions, the court, together with – as the case may be – a technical expert or the police, will visit the facilities and describe in detail the alleged patent infringement. The defendant cannot oppose the description as such but, once the draft report has been established, it can request the redaction of business secrets. The claimant is not entitled to attend the description visit, but its legal representatives may attend. However, the legal representatives must keep secret all information obtained until such information is disclosed in the report and becomes part of the court file.
Q: Is cross-examination of witnesses allowed? If so, what form does this take?
The Rules of Civil Procedure do not provide for the cross-examination of witnesses. The rule is that the court asks questions of the witnesses, and the parties can ask additional questions via the court. In arbitration proceedings, the general rule is that cross-examinations are allowed.
Q: What use of expert witnesses is permitted?
The court can ask an expert to render an opinion and, in addition, to act as an expert witness. However, as the Federal Patent Court bench consists of, among others, technically trained judges, the court rarely appoints external experts. The technically trained judge sitting on the bench renders an expert opinion. In terms of evidence, this opinion of a technically trained judge does not constitute an expert opinion, but forms part of the court’s opinion-making process. The parties can comment on such opinion in writing, but no witness examination or similar is conducted.
The parties are entitled to file an expert opinion as a piece of evidence. However, such an expert opinion mandated by a party is not recognised to constitute evidence, but only the party’s allegations. In addition, in order to be recognised as allegations, the content of the expert opinion must be made part of a writ referring to the opinion; the court does not read the opinion on its own initiative.
Q: Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?
The doctrine of equivalents is applied by the Swiss courts. The Swiss courts have adopted a three-step test to examine whether an infringing equivalent is given. The test is comparable to those used in other countries (eg, the United Kingdom and Germany). The three steps are as follows:
- Same effect – do the replaced features have the same technical effect as the patented invention (ie, is the objective technical function the same)?
- Accessibility – on the basis of the patent, were the replaced features and the technical function obvious to a person skilled in the art?
- Equal value – on the basis of the patent claim, would a person skilled in the art consider the replaced features to constitute a solution of equal value?
Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?
With respect to the protection of biotechnology, business methods or software, Switzerland follows the rules provided by the European Patent Office and has, in general, adopted the principles known in other European countries.
There are no Switzerland-specific problems arising regarding the enforcement of patents in Switzerland. Problems regarding patent enforcement may arise due to the complexity of the technology (eg, biotech or software-related patents) or regarding the rules of civil procedure (eg, the burden of proof regarding method patents or the court’s reluctance to grant ex parte injunctions).
Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?
According to Swiss law, the courts are not strictly bound to previous decisions, although the directions provided by an appellate court when reversing a lower-instance judgment are binding. In practice, the Federal Patent Court considers judgments rendered by the Federal Supreme Court and its own former decisions. The Federal Patent Court will also consider the judgments of other Swiss courts if questions arise in a patent suit that involve other areas of law (eg, contract law).
Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?
In some cases the Federal Patent Court has referred to the reasoning of foreign courts; in practice, most references are made to judgments of German courts. However, the Federal Patent Court makes its own decision in each case (ie, its decision may deviate from the foreign decision).
Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?
The timeframe imposed by the Patent Court is quite strict. The parties can mutually agree to extend the deadline set by the court, but cannot decide unilaterally (except in case of need). There are two options to delay proceedings:
- filing a request to be dealt with by the court (eg, request to obtain a technical opinion from an external third party); or
- filing an additional brief with the court.
The adverse party can accelerate such attempts to delay the proceedings by responding promptly.
Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?
In order to obtain a preliminary injunction, the plaintiff must file a written request with the Federal Patent Court and provide prima facie evidence that:
- its patent is valid;
- the defendant is infringing the patent;
- a harm that is not easily remedied is threatening because of the patent infringement (a harm which can be remedied by a payment does not usually qualify as a harm that cannot be easily remedied); and
- timing issues exist (see below).
According to Swiss law, preliminary injunctions are granted after the court has heard the defendant; in general, the court rules after receiving the defendant’s statement of defence. However, the court may summon the parties for a hearing in which the defendant argues orally. A request for a preliminary injunction must be filed within three to six months of the date on which the defendant’s infringement becomes known to the patent owner; this term varies according to the circumstances of the case. The court will rule on the request within three to six months of receipt.
If the plaintiff intends to obtain ex parte injunctions it must show, in addition to the above requirements, that an imminent danger exists regarding harm that cannot be easily remedied. Such request must be filed within approximately one month of the infringement becoming known to the plaintiff. The court will rule on the request within one week of receipt.
Q: How much should a litigant budget for in order to take a case through to a decision at first instance?
The court’s costs and any compensation depend on the value in dispute, the complexity of the case and the amount of work performed by the court. The court costs are between Sfr20,000 and Sfr200,000. The plaintiff must pay a retainer to the court amounting to half of the estimated court costs (ie, between Sfr10,000 and Sfr100,000), otherwise the court will not hear the case. In the end, the court costs are borne by the parties according to whether they won or lost the case.
The losing party must pay compensation to the winning party. In general, the compensation to be paid to the winning party is between Sfr50,000 and Sfr400,000.
Q: How long should parties expect to wait for a decision to be handed down at first instance?
The average timeframe for proceedings pending before the Federal Patent Court is as follows (based on either a valid request or mutual agreement, an extension may be possible):
- two weeks following receipt of the statement of claims to pay the retainer for the court costs;
- six to eight weeks to file the statement of defence and, if applicable, a counterclaim;
- four to six weeks to file a reply to the counterclaim and the rejoinder; and
- for any further brief, four to six weeks.
The goal of the Federal Patent Court is that a judgment should be rendered approximately one year after the first writ is filed with the court.
After each party has filed a written statement regarding the most important arguments (eg, statement of claims, statement of defence and counterclaim, reply to the counterclaim), the Federal Patent Court summons them for an informal hearing, at which it discloses orally its preliminary view on the case. Based on this statement, it invites the parties to enter into settlement negotiations.
Q: To what extent are the winning party’s costs recoverable from the losing party?
On request the court can order the losing party to pay compensation to the winning party. The extent of the win governs the amount to be paid. The court determines the base amount for the calculation of compensation based on:
- the parties’ actual costs – the parties are invited to file the statement of attorney and patent attorney fees;
- the complexity of the case;
- the number of writs filed; and
- the basis of the value in dispute.
Regarding attorney fees, an official fee schedule provides a range for compensation; patent attorney fees are reimbursed based on actual costs.
Q: What remedies are available to a successful plaintiff?
The plaintiff can request the following:
- a cease and desist order;
- seizure and destruction of infringing products;
- information about the quantity and prices of infringing products, as well as the addresses of suppliers;
- financial compensation; and
- compensation for attorney and patent attorney fees.
Q: How are damages awards calculated? Are punitive damages available?
According to Swiss law, the patent owner can:
- claim the damages that it incurred due to the infringement;
- request an accounting of the infringer’s profits; or
- ask for a payment equal to the infringer’s unjust enrichment.
A plaintiff can seek the payment of royalties, provided that one of the above financial compensation claims applies. In this regard, the Federal Supreme Court has held that if a plaintiff claims the payment of damages, it must prove that it would have received the claimed licence payments if no infringement had taken place. This is not possible if, for example, the patent owner has granted an exclusive licence and sues a third-party infringer for the payment of the usual licence fee. In such case, the plaintiff should base its claim on either an accounting of the infringer’s profits or the restitution of the infringer’s unjust enrichment. Swiss law does not provide for punitive damages.
Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?
The court will grant a permanent injunction if a plaintiff so requests and successfully proves that patent infringement has taken place. Often the parties enter into a settlement either after a preliminary injunction or when proceedings are pending.
Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?
The losing party can file an appeal with the Federal Supreme Court, which examines only questions of law unless a decision turns out to be arbitrary.
Q: How long does it typically take for the appellate decision to be handed down?
The Federal Supreme Court hands down its appellate decisions within approximately nine months.
Q: Is it possible to take cases beyond the second instance?
No, there is no further instance after the Federal Supreme Court.
Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?
The Federal Patent Court does not have a reputation as being for or against patentees. It examines each case on the basis of the facts, the relevant circumstances and the applicable law.
Q: Have courts in your jurisdiction handled cases relating to standard-essential patents and fair, reasonable and non-discriminatory licensing since the ECJ’s Huawei v ZTE decision? If so, what have they decided?
To the author’s knowledge, no case similar to the Huawei decision has been decided since then. However, the Federal Patent Court would probably be competent to decide a similar case.
Q: If they have not handled such cases, how would you expect them to approach the issue?
Most probably the court would approach a case similar to Huawei by applying the provisions regarding compulsory licensing contained in the Patent Act either directly or by analogy and, as the case may be, based on the Act against Cartels (which contains a provision addressing abuse of market power comparable to EU law). As the Swiss courts are open to looking at foreign judgments, the outcome of a Swiss decision could well be comparable to the Huawei v ZTE decision.
Q: Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?
Switzerland is not an EU member state and, to date, non-member states are not entitled to participate in the Unified Patent Court (UPC) regime. From a non-member perspective, it will be interesting to see what the implications of Brexit will be on the United Kingdom and the UPC.
Q: Will your country play host to one or more divisions of the Unified Patent Court?
No (see the previous question).
Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?
Parliament is discussing a bill amending the provisions of the Patent Act addressing the protection of pharmaceuticals. The following amendments are under discussion:
- The use of pharmaceuticals by a medical doctor in favour of a patient will be made exempt from patent infringement.
- The preparation of a pharmaceutical by a pharmacologist in favour of customers will be made exempt from patent infringement.
- A new possibility for a supplementary protection certificate (SPC) for paediatric pharmaceuticals will be introduced. This SPC will be granted on request for six months on the expiry of either the underlying patent or the ‘normal’ SPC.
This article first appeared in IAM. For further information please visit www.IAM-media.com.
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Mathis Berger is a founding partner of Nater Dallafior Rechtsanwälte AG. He represents clients in proceedings before state courts, arbitral tribunals and administrative bodies, focusing on intellectual property and licensing. He is member of the Swiss Federal Arbitration Commission for the Exploitation of Copyrights and Neighbouring Rights and serves as a lecturer on IP law at universities. He is chief editor of sic!, the Swiss review of IP, IT and competition law. He graduated from the University of Zurich in 1991, received his doctoral degree in 1997 and obtained his LLM degree at the University of Chicago in 1997. He is ranked in IAM, Chambers Europe, Who’s Who Legal, Legal 500 and Best Lawyers.