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Procedure in patent enforcement and invalidity actions

i Patent enforcement actions

In Switzerland, the Federal Patent Court has exclusive jurisdiction for patent enforcement actions. 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. In the case of a counterclaim, the Federal Patent Court declares the patent invalid with erga omnes effect if it finds that the challenge has merit, while in the case of a successful invalidity defence, the infringement claim is dismissed without the court revoking the patent. Challenging the validity of a patent is usually not considered a reason for staying infringement proceedings.

Swiss courts have a long tradition of actively facilitating and promoting settlements. The Federal Patent Court is faithful to this tradition. The procedural step that serves this purpose is the preparatory or settlement hearing, to which the parties are typically summoned after the first exchange of submissions. At the preparatory hearing, a court delegation typically consisting of a legal and a technical judge provide their preliminary opinions on how they would decide the case in light of the submissions and evidence produced so far. Because at this stage the fact-finding has not been concluded and only the opinions of two out of three to five judges that would render a final judgment are given, this preliminary assessment does not prejudice the final outcome of the case. In order to reinforce the preliminary nature of their opinions, the opinions are only provided orally, and the parties are prohibited from referring to them in their subsequent submissions and pleadings. The preliminary opinions of the judges serve as starting point for subsequent settlement discussions with the involvement of the court delegation. Historically, the majority of patent disputes was settled at this stage. In recent years, this percentage has decreased dramatically.

The further course of the litigation depends on whether the case is settled at the preparatory hearing or not. If no settlement is achieved, the plaintiff is given the opportunity to submit the statement of reply, followed by defendant's statement of rejoinder. After the double exchange of briefs has been completed, a technical judge provides a written opinion that is then provided to the parties for commenting. 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 from introducing new facts at this stage, they typically use this opportunity to emphasise certain points and summarise their view, in particular on the technical judge's opinion. The court then renders its judgment on infringement and, if relevant, the invalidity counterclaim, typically within around 18–24 months of commencement of the action.

In the case of infringement actions, it is standard practice in Switzerland to request the court to decide on the infringement or liability first, to then order the defendant to provide information on his or her sales and profits and to decide on the quantum only thereafter. This course of action is called 'action by stages'.

Under Swiss law, the owner of a patent as well as any person who holds an exclusive licence under the respective patent is entitled to bring an infringement action, irrespective of whether the licence is registered in the patent register.

The following table provides an overview of the steps and the timing of a typical infringement action before the Federal Patent Court.

PlaintiffFederal Patent CourtDefendantTimeline (tentative)
Statement of claimDay 0
First advance on court costs3 weeks
Statement of defence (invalidity counterclaim or invalidity defence possible)8 weeks
Instruction/settlement hearing. Litigation terminates if there is a settlement. If no settlement is reached, litigation continues
Second advance on court costs3 weeks
Reply6 weeks
Rejoinder6 weeks
Comments on new allegations in rejoinder3 weeks
Written opinion of technical judge1–6 months
Comments on written opinion of technical judgeComments on written opinion of technical judge6 weeks
Main hearingApproximately 3 months after last submission
Appeal proceedings at Federal Supreme CourtApproximately 6–9 months
ii Invalidity actions

Invalidity actions follow the same structure and are typically also decided within around 18–24 months of the filing of the action. Exclusive jurisdiction for invalidity actions is with the Federal Patent Court.

Pursuant to the Swiss Patent Act, anyone with a proven interest may bring an invalidity action. An invalidity action may be brought despite pending proceedings before the European Patent Office, but the Patent Act provides that the Federal Patent Court may stay its action pending a final decision of the patent office. In practice, the Federal Patent Court only makes very reluctant use of this option. Rather than staying an invalidity action, the Federal Patent Court prefers to invite the European Patent Office to accelerate its proceedings.

Whenever the validity of a patent is challenged, be it in an invalidity action or in the case of a counterclaim in infringement proceedings, the patentee is free to amend the patent claims in the court proceedings. In principle, the same is true for situations where the defendant only raised an invalidity defence, in which case, however, limitations only have effects as between the litigant parties. The patent may be limited by deleting patent claims altogether, by combining an independent claim with one or more dependent claims, or otherwise, provided the restricted claim still relates to the same invention and defines an embodiment that is included in the specification of the published patent and in the version of the application that determined the date of filing.

iii Interim relief

Anybody who has standing to bring an infringement action is entitled to interim relief, in particular in the form of a preliminary injunction, if he or she provides prima facie evidence:

  1. that the defendant has committed or intends to commit an act of infringement; and
  2. that he or she is threatened by a loss that is not easily reparable.

Such requests are decided in inter partes proceedings, unless the urgency is so great that hearing the defendant prior to ordering measures is not warranted, in particular because it would frustrate the very purpose of the requested measure. If an interim measure is ordered ex parte, it needs to be confirmed inter partes.

For inter partes interim relief, immediate urgency is not an independent requirement. According to case law, a claim for preliminary relief is forfeited if the petitioner, after having learned about the infringement, files the request for preliminary relief so late that a decision on this request may no longer be expected to issue sooner than a judgment in an ordinary proceedings initiated immediately after the petitioner had learned about the infringement would have issued. This is called the concept of 'relative urgency'. Pursuant to the case law of the Federal Patent Court, the requirement of relative urgency is no longer met if the petitioner initiates interim relief proceedings more than 14 months after having learned of the infringing activities.

As in proceedings on the merit, the defendant can raise invalidity of the asserted patent as a defence.

The Federal Patent Court may, upon request or ex officio, make an interim measure conditional on the payment of security by the applicant if it is anticipated that the interim measures may cause loss or damage to the alleged infringer.

A party expecting a patentee to file an ex parte request for interim measures can deposit a protective letter explaining to the Federal Patent Court the reasons why such a request should be dismissed, or at least not decided ex parte. The patentee is only informed of the protective letter after having filed a request for interim measures.

Interim relief proceedings before the Federal Patent Court typically take between three and nine months, depending on the number of asserted patents and the complexity of the issues raised by the parties.

The applicant is liable for any loss or damage caused by unjustified interim measures. An action for damages must be substantiated and proven in a separate lawsuit. Where the exact value of the loss or damage cannot be quantified, the court may estimate the amount, provided the claimant has sufficiently substantiated the factors required for the estimation. On the other hand, the court may reduce the damages or entirely release the applicant from liability if the latter proves that he or she applied for the interim measure in good faith. Whether full or any damages are awarded therefore depends on whether the applicant is found to have applied for the interim measure for legitimate reasons and has conducted the proceedings in good faith.

iv Means of evidence

Patent actions are largely based on written evidence such as written prior art, evidence in writing for the skilled person's general knowledge, drawings and photographs of the allegedly infringing embodiment, correspondence between the parties and the like. Other means of evidence are used much less frequently; witnesses are heard but not as a matter of routine, affidavits and private expert opinions do not qualify as means of evidence, and because the Federal Patent Court usually finds the required expertise among its judges, it does not need to rely on the opinion of external experts.