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Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Patent rights are mainly enforced by court actions. The Federal Patent Court, whose seat is in St Gallen, has exclusive jurisdiction to adjudicate first-instance patent infringement actions and order preliminary injunctions in patent infringement proceedings (Article 26(1) of the Patent Court Act).

Under Article 81 of the Patent Act, wilful patent infringement is a criminal offence. Therefore, patentees can also instigate criminal proceedings against an infringer.

In addition, patentees can request border control measures (Article 86a et seq of the Patent Act).

What scope is there for forum selection?

The Federal Patent Court has exclusive jurisdiction to adjudicate first-instance patent infringement and validity disputes and order preliminary injunctions in patent infringement proceedings. Therefore, there is no possibility for forum shopping in Switzerland.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

Swiss court proceedings in patent matters are initiated when a plaintiff submits a detailed statement of claim, in which it describes the claim’s factual background and provides evidence proving these facts. Options for discovery are limited and of only limited relevance in practice.

On receipt of the statement of claim, the court will ask the plaintiff to pay a court fee retainer, typically within two weeks. The amount of the retainer depends on the amount in dispute, although the retainer requested usually corresponds to 50% of the presumed total court fees.

Once the retainer has been paid, the defendant will be asked to file a statement of defence within six weeks. On receipt of the statement of defence, the court will usually summon the parties to a preparatory hearing, which has two main purposes. First, the court will ask questions and inform the parties on which issues further substantiation is required. Second, the court will give its preliminary assessment of the matter in dispute, which is strictly off the record and cannot be used in further proceedings. The court will then invite the parties to consider a settlement or a withdrawal or acknowledgement of the claim. The majority of cases will end here. However, if no settlement can be reached, the court will establish a schedule for further proceedings, which usually consist of a second exchange of briefs (reply and rejoinder), the rendering of an opinion by the technical judge, comments by the parties to the opinion, followed by a main oral hearing and the issuing of a written judgment.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

There is little room for delay tactics. The Federal Patent Court imposes strict deadlines for the filing of court submissions, such as the statement of defence and rejoinder. These deadlines will typically be extended only on the defendant’s request and for a maximum of two weeks. The dates of the preparatory hearing and the main oral hearing will usually be determined with both parties’ agreement, but if no agreement can be reached, the court will set the dates.

In practice, one factor that can cause delay is if the defendant’s domicile is located abroad and it has yet to be represented by Swiss counsel. In such cases, the initial service of documents must take place by means of international legal assistance. Depending on the jurisdiction to which service must be made, this can take several weeks.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A party may bring a nullity action before the Federal Patent Court against:

  • a Swiss national patent; and
  • the Swiss part of a European patent designating Switzerland.

If the nullity of a patent is raised before a cantonal court as a preliminary issue or defence, the cantonal court will grant the parties a reasonable period in which to file a nullity action before the Federal Patent Court and stay its proceedings in the meantime. Where no action is filed before the Federal Patent Court within the specified period, the cantonal court will resume its proceedings and the preliminary question or defence will be disregarded (Article 26(3) of the Patent Court Act). Where the defendant party files a nullity counterclaim in cantonal court proceedings, the cantonal court will refer both the main action and the nullity counterclaim to the Federal Patent Court (Article 26(4) of the Patent Court Act).

Pursuant to Article 26(1) of the Patent Act, a nullity action may be filed on the basis of:

  • a lack of novelty;
  • obviousness;
  • unpatentable subject matter;
  • the invention not being described in the patent specification in a manner sufficiently clear and precise to enable it to be carried out by a person skilled in the art;
  • the patent’s subject matter exceeding the content of the patent application in the version that determined the filing date; and
  • a lack of entitlement to the patent.

At trial

What level of expertise can a patent owner expect from the courts?

As the Federal Patent Court is a specialised court dealing exclusively with patent disputes, a patent owner can expect a high level of expertise. The panel of judges must include at least one judge with a legal background and one with a technical background (Article 21(1) of the Patent Court Act). Federal Patent Court judges must have considerable experience and knowledge in patent law. Since there is always at least one judge with a technical background, cases will usually be decided without court-appointed technical experts.

Are cases decided by one judge, a panel of judges or a jury?

The court decides as a panel. This is generally a panel of three, although in special cases it is a panel of five (Article 21 of the Patent Court Act).

In case of preliminary injunctions, a decision can be taken by a single judge unless the technical background of the case requires a panel of three, which is usually the case (Articles 23(1)(b) and (3) of the Patent Court Act).

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There are no jury trials in Switzerland.

What role can and do expert witnesses play in proceedings?

The Federal Patent Court panel must comprise at least one judge with a technical background. While, in theory, the court has the power to appoint experts, it usually relies on a formal opinion of one of the technical judges. This opinion is made available to the parties for comment (Article 183(3) of the Civil Procedure Code and Article 37(3) of the Patent Court Act).

Opinions by party-appointed experts do not qualify as a piece of evidence under the Civil Procedure Code and are thus considered only as a party's allegation. Nonetheless, party-appointed expert opinions are often filed by a party to support its pleading of complex technical issues and assist the court in framing the issues to be answered by the technical judge.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

According to Article 66(a) of the Patent Act, infringement may take place by equivalents. Swiss case law applies the following set of questions to assess equivalence:

  • Do the replaced features objectively fulfil the same function as the features of the patent claim?
  • Are the replaced features and their objective function rendered obvious by the teaching of the patent to the skilled person?
  • Considering the wording of the claim in light of the description, would a person skilled in the art have considered the replacing features to be an equivalent solution?

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions are available in Switzerland under Article 261 of the Civil Procedure Code and Article 77 of the Patent Act.

In order to obtain a preliminary injunction, a petitioner must show prima facie that:

  • the respondent has infringed or is likely to infringe the petitioner's patent right; and
  • the petitioner is threatened by harm that cannot be easily remedied.

In case of special urgency and provided that the petitioner initiated the proceedings without undue delay, the Federal Patent Court may order the preliminary injunction immediately and without hearing the opposing party first. However, such ex parte injunctions are rarely granted in practice.

The court may make the interim measure conditional on the payment of security by the petitioner if it is anticipated that the measures could cause loss or damage to the opposing party.

Preliminary measures may also be requested to preserve evidence or obtain a precise description of an allegedly infringing process (Article 77(1) of the Patent Act). A petitioner may also request the taking of evidence at a pre-trial stage if this is required to assess a potential claim’s likelihood of success (Article 158 of the Civil Procedure Code).

How are issues around infringement and validity treated in your jurisdiction?

Issues of infringement and validity can be adjudicated only before the Federal Patent Court (Article 26(1)(a) of the Patent Court Act). Both issues regularly form part of the same court proceedings before the Federal Patent Court (eg, if the defendant in an infringement suit challenges the patent's validity by way of a counterclaim or defence).

Will courts consider decisions in cases involving similar issues from other jurisdictions?

In cases relating to European patents, the Federal Patent Court generally considers decisions from courts of other jurisdictions, particularly Germany. The court invites parties to file foreign decisions relating to the same European patents spontaneously in pending proceedings once they become available.

In a request for preliminary measures, foreign decisions may play a crucial role in providing prima facie evidence of a patent's validity. Notably, the courts expect petitioners for ex parte preliminary measures to disclose foreign decisions that not only support the petitioner's position, but also go against it (eg, foreign judgments that hold a foreign part of the relevant European patent invalid).

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, successful parties are usually awarded compensation for attorneys’ fees (Article 106(1) of the Civil Procedure Code). Attorneys representing parties in a patent litigation are usually assisted by patent attorneys. The successful party may also claim compensation for its patent attorneys’ fees.

The losing party is further ordered to bear the court fees.

What are the typical remedies granted to a successful plaintiff?

The focus in Swiss patent infringement litigation is on obtaining injunctive relief. Both preliminary and permanent injunctions are available. Monetary relief is also available, but the threshold to prove causation and loss is high.

Other available forms of relief include:

  • declaratory relief (eg, concerning non-infringement (Article 74 of the Patent Act)); and
  • an order:
    • requesting the defendant to disclose the origin and quantity of products in its possession which were unlawfully manufactured or placed on the market, as well as

naming the recipients and disclosing the extent of any distribution to commercial and industrial customers (Article 66(b) of the Patent Act);

  • seizing and destroying the infringing products and related manufacturing equipment (Article 69 of the Patent Act); or
  • authorising the successful party to publish the judgment at the counterparty's expense (Article 70(1) of the Patent Act).

How are damages awards calculated? Are punitive damages available?

Under Swiss law, monetary remedies are assessed on the basis of putting the party that suffered the patent infringement into the same financial situation as if the infringement had not occurred. Monetary relief is always compensatory, but not punitive in nature.

A plaintiff's losses may encompass actual damage suffered and lost profits, both of which must be proven by the plaintiff, including the link of causation between the damages or lost profits and the patent infringement. In practice, this usually poses a major obstacle for plaintiffs.

Provided that the specific legal requirements are met, the plaintiff may choose whether to claim:

  • compensation for the loss sustained (ie, damages); or
  • the infringer’s profits resulting from the infringing activities (ie, account of profits and disgorgement).

The calculation of lost profits based on a reasonable royalty rate is permissible only if it may be assumed that the patentee would have granted a licence to the infringer on request. This will usually be the case only if the patentee can show that it:

  • granted non-exclusive licences to third parties; and
  • would have been willing to grant a licence to the infringer based on the same or similar terms.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are granted if the plaintiff proves actual or impending patent infringement. No further requirement must be shown (eg, irreparable harm) to obtain a permanent injunction against an infringer.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

A Federal Patent Court decision on the merits is usually rendered within 12 to 24 months. The majority of cases before the Federal Patent Court (approximately 75%) are terminated by settlement (often at the preparatory hearing). The preparatory hearing usually takes place approximately six months after the statement of claim has been filed. It is impossible to expedite this process.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Typical patent litigation costs include:

  • court fees and expenses;
  • attorneys’ fees; and
  • patent attorneys’ fees.

If a litigant loses the lawsuit, it must bear the court fees and expenses and will be ordered to pay the prevailing party compensation for attorneys’ and patent attorneys’ fees.

The Federal Patent Court will determine court fees and the adverse party's attorneys’ fees on the basis of a statutory tariff. Parties may also demand compensation for the reasonable actual legal costs incurred to pay their attorneys and patent attorneys by furnishing proof of actual costs.

As an example, if a case is assumed to have an amount in dispute of Sfr1 million, a litigant who loses the lawsuit should plan to pay approximately Sfr300,000. This comprises:

  • its own legal costs for attorneys and patent attorneys, which are approximately Sfr120,000 (but may be more or less, depending on the complexity and length of the lawsuit);
  • court fees, which are approximately Sfr60,000; and
  • compensation for costs of the prevailing party's attorneys and patent attorneys, which are approximately Sfr120,000.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

Federal Patent Court judgments are subject to appeal to the Federal Tribunal, Switzerland's highest court. The right to appeal is granted by law and not subject to a leave to appeal.

In an appeal, the losing party may challenge only legal issues. The Federal Tribunal will not review the Federal Patent Court’s factual findings unless they were due to obvious mistakes. New evidence is generally not allowed. Where the Federal Patent Court did not exhaustively establish the facts of the case, the Federal Tribunal will not render a decision, but refer the case back to the Federal Patent Court so that it may complete the factual findings.

The deadline to appeal is 30 days. Appeal proceedings usually take three to nine months.

Options outside court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Parties are free to agree on mediation, arbitration or other alternative dispute resolution mechanisms. Patent infringement and validity issues are considered arbitrable in Switzerland. In practice, it is rare for a patentee and an alleged infringer to agree on mediation or arbitration if they have no prior contractual relationship. 

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