1 Patent Enforcement
1.1 Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant's choice?
In Switzerland, the Federal Patent Court has exclusive jurisdiction over those actions that require the application of substantive patent law, in particular, actions regarding the validity of patents, patent infringement actions and applications for preliminary measures.
Besides that, the Federal Patent Court Act (PCA) provides for concurrent jurisdiction of the Federal Patent Court and the cantonal courts for other patent-related disputes, such as disputes arising from patent licensing agreements.
In addition, willful patent infringement is a criminal offence under the Federal Act on Patents for Inventions, (PatA). In such cases, the patentee may initiate criminal proceedings against an infringer.
Finally, the patentee may request border control measures (see question 6.1).
1.2 Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?
No, the parties cannot be required to undertake mediation before commencing court proceedings. Further, mediation or arbitration are not a commonly used alternative to court proceedings, although patent infringement (and validity) matters are considered to be arbitrable in Switzerland.
1.3 Who is permitted to represent parties to a patent dispute in court?
Registered Swiss patent attorneys may represent their clients in proceedings concerning the validity of Swiss national patents or the Swiss part of a European Patent alone. In all other court proceedings, only Swiss attorneys are permitted to represent parties. Swiss patent attorneys are, however, given the opportunity to comment on the technical merits in all hearings before the Federal Patent Court.
1.4 What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?
Proceedings are started by the filing of a detailed written statement of claim (or a request for a PI) by the plaintiff. Upon the filing of the statement of claim, the proceedings are pending, subject to the payment of the advance. There are no other pre-trial steps required under Swiss law.
The Federal Patent Court will request the plaintiff to pay the advance within two weeks by a related order.
The amount of the requested advance depends on the amount in dispute. The following table lists the court fees to be paid in advance for different amounts in dispute. The specific costs within the indicate ranges depend on the subject-matter of the dispute and are determined by the importance, the level of difficulty and the scope of the matter, as well as by the attorney's expenditure of time.
Recently, the Federal Patent Court changed its practice regarding the payment of the advance in ordinary proceedings in such way as henceforth the plaintiff has to pay an advance on only half of the above court costs for a decision.
1.5 Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?
The Swiss Code of Civil Procedure provides that courts must take evidence at any time before a case on the merits becomes pending if the requesting party has an "interest worthy of protection". Such interest is assumed to exist in case the relevant evidence is at risk, as it would otherwise not be available at a later date, or where the requesting party has an interest to be better able to assess the chances of success of a potential civil claim. This is aimed at helping to avoid unnecessary proceedings. It has proved to be helpful in cases where a party requires information that is in the hands of the presumed defendant in order to decide whether initiating a litigation is justified or not.
During a lawsuit, a party may be ordered by the court upon application of the other party to provide disclosure of relevant and specific documents or materials that are in that party's possession.
Failure to comply with such order may be taken into account by the court when assessing the weight of the evidence presented. The court may further request third parties to produce specific documents or materials relevant to the lawsuit. Finally, disclosure may also be ordered during a lawsuit in order to allow the plaintiff to substantiate its monetary claims. Specifically, the plaintiff may demand disclosure of the defendant's financial statements and information on the infringing activities in a first step. This shall enable the plaintiff to substantiate and quantify its monetary claim in a second step, i.e. once an infringement is established.
1.6 What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?
There are no mandatory pre-trial steps to be taken. However, in order to not only preserve but establish evidence (unlike the precautionary taking of evidenced described under question 1.5), the Federal Patent Court can be requested to order the presumably infringing party to produce a description of an allegedly infringing process, of allegedly infringing products or of the means used for producing such products.
1.7 How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?
Patent actions are usually 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, such as, witnesses, are used less frequently. Further, affidavits and private expert opinions do not qualify as means of evidence, and since the Federal Patent Court usually finds the required expertise among its judges, it does not need to rely on the opinion of external experts.
A party is permitted to change its pleaded factual arguments in its second written submission (reply or rejoinder), if a second exchange of briefs is ordered, or during the oral instruction hearing that may be held before the main hearing. However, in the course of the main hearing, new facts and new exhibits are admitted only if certain prerequisites are met. If neither a second exchange of briefs nor an instruction hearing was held, new facts and exhibits are fully permitted.
1.8 How long does the trial generally last and how long is it before a judgment is made available?
In 2018, regular proceedings (without settlements) before the Federal Patent Court regarding patent infringement without counter-claim of nullity of patent on average took 354 days, such regarding the nullity of patent without counter-claim of patent infringement 545 days, and such regarding the infringement and nullity of patent 828 days.
The Federal Patent Court strives to render a first-instance judgment within 12 months of the commencement of proceedings. Therefore, the parties are confronted with relatively short time limits to submit their briefs and limited possibilities to request an extension of time limits.
1.9 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
No, Swiss law does not provide such alternative procedures.
1.10 Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?
Yes, the decisions of the Federal Patent Court are made available to the public, usually in unreacted form, on the Federal Patent Court's website: www.bundespatentgericht.ch/en/case-law/case-law/.
1.11 Are courts obliged to follow precedents from previous similar cases as a matter of binding or persuasive authority? Are decisions of any other jurisdictions of persuasive authority?
The Swiss legal system is based on the civil law tradition. As such, it depends widely on written codes as a primary source for authoritative statements of law. Accordingly, judicial decisions are of less importance than they are in common law jurisdictions. Even though a line of judicial decisions establishing a particular legal practice does carry substantial weight, in particular as the Federal Patent Court has exclusive jurisdiction with regard to the application of substantive patent law (subject only to appeals against its decisions to the Federal Supreme Court), the common law rule of binding precedent (stare decisis) is not recognised. Foreign decisions concerning the same patent at dispute are considered in particular in connection with nullity actions, but are not as such a persuasive authority, let alone binding.
1.12 Are there specialist judges or hearing officers, and if so, do they have a technical background?
The Federal Patent Court comprises both legally and technically trained judges. Roughly two-fifths of the technical judges graduated in chemistry, biochemistry or biology, a third in physics, and the rest in mechanical and electrical engineering (see the list of judges at https://www.bundespatentgericht.ch/en/about-the-court/judges/). Most of the technically trained judges are European patent attorneys.
1.13 What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?
Any person who is threatened with or has his/her rights infringed may demand an injunction or that the unlawful situation be remedied (Article 72 PatA). In order to have an interest in infringement proceedings, the plaintiff must show that infringing acts have already occurred or are reasonably expected to occur.
Anyone with a proven interest may bring a revocation (invalidity) action (see Article 28 PatA). The burden for proving an interest in a declaration of a patent's invalidity is rather low. Specifically, the plaintiff has to show that the challenged patent potentially creates a conflict with its contemplated business activity in Switzerland. With regard to already expired patents, it needs to be demonstrated that the patentee may still assert claims against the plaintiff resulting from the period when the patent was still in force.
Any person showing an interest may bring an action to obtain a declaratory judgment on the existence or non-existence of a circumstance or legal relationship governed by the PatA, such as, that a particular patent is valid or that the defendant has performed a patent infringing act (Article 74 PatA).
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