What options are open to a patent owner seeking to enforce its rights in your jurisdiction?
A patent holder can send a warning letter and seek an out-of-court settlement with an alleged infringer. A warning letter is the most effective way to enforce rights, since it is subject to no formalities and costs little. If no solution can be found in this way – or through arbitration or mediation (to which the alleged infringer must agree) – the patent holder has no option other than to enforce its patent through a court action. No warning letter need be served before commencing a suit. Patent rights are enforceable through cease and desist orders which, if granted by the court, require a third party to stop using an infringing product or method – in particular, to stop manufacturing, importing, advertising, offering or selling the infringing products. In addition, financial compensation is available to the patent holder. The cease and desist order can be requested in the form of a preliminary injunction; this is often advisable in view of the time it takes to obtain a final decision in patent matters.
Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?
There is no obligation to undertake mediation or arbitration before bringing a case before the courts. However, provided that both parties agree, mediation or arbitration may speed up the case.
Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?
Since January 2012 Switzerland has had a specialist patent court – the Federal Patent Court of First Instance. This has technical judges on the bench, all of whom have expertise in patent law. The technical judges are primarily patent attorneys with a technical background in diverse scientific and technical fields. In specific cases the court may appoint an external expert. The Federal Court, which acts as the court of second instance, has experience in patent law, although no technical judges sit on the bench.
Are validity and infringement dealt with together, or does your country have a bifurcated system?
The Federal Patent Court of First Instance is competent to deal with validity andinfringement issues. It deals with them in the same procedure.
Who may represent parties engaged in a dispute?
Representation is limited to attorneys holding the Swiss attorney at law qualification or a recognised equivalent qualification from an EU or European Free Trade Agreement member state. Assistance and co-representation by a Swiss patent attorney is recommended in most cases. In cases to be heard by the Federal Patent Court of First Instance that are restricted to the issue of patent nullity, a Swiss patent attorney may be appointed as the sole representative.
To what extent is pre-trial discovery permitted in cases?
There is no pre-trial discovery in Switzerland. However, the Patents Act has been amended to allow for a description by the court of potentially infringing methods, products or means for their manufacture. It must be made credible to the court that a claim to which the claimant is entitled has been infringed. In such cases a member of the court – in some cases accompanied by an expert or person skilled in the relevant field – may visit the production facilities of an alleged possible infringer and make a detailed description of the method applied, the products made and the means of production. The claimant may be excluded from the description procedure and receives no documents before the opposing party has had the opportunity to file comments. Legal representatives of the claimant (attorneys at law and patent attorneys) may be allowed to attend the description procedure, but are obliged to keep confidential any information exceeding the information handed over to the claimant by the court. Other pre-trial measures ordered by the court are possible, but only under the limits of provisional measures, requiring the claimant to demonstrate credibly that it is threatened by a harm that cannot be easily remedied and provided that the claimant has not delayed the case (see below).
Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?
The Federal Civil Procedure Code came into force in January 2011. The code provides that witnesses are primarily examined by the court, although the court may also allow the parties to pose questions directly.
What use of expert witnesses is permitted?
Patent proceedings are predominantly based on written evidence, but any type of evidence that is allowed in civil proceedings is also allowed in patent proceedings. With regard to expert opinions provided by the parties, the Federal Civil Procedure Code does not recognise such opinions as evidence, so they are regarded as party allegations only. However, the parties may be able to submit expert opinions by naming the expert as an expert witness under the new code. Expert opinions provided by court-appointed experts are evidence.
Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?
The doctrine of equivalents has been accepted for many years and is provided for in the Patents Act. The act explicitly distinguishes between infringement by counterfeiting and infringement by imitation. Imitation – supported by long-established case law – encompasses embodiments using equivalent means.
Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods and software?
All types of patent right granted by the European Patent Office are enforceable in Switzerland. However, the evidential requirements may present problems for the enforcement of certain types of patent right. Since the burden of proof rests with the plaintiff, method patents may present problems if the use of the method cannot be ascertained by the product itself or if no prima facie evidence of infringement can be provided to lead to a description by the court (see above) or a reversal of the burden of proof. On the other hand, the complexity of software-related or biotech patents and the infringing products may present problems for the patentee and the courts. In mid-2008 an amended Swiss patent law entered into force, setting out more restrictive regulations for Swiss national applications in the field of biotech and genetic engineering than the European Patent Convention. Whether these differences will cause problems for the enforcement of European patents is controversial and relevant court decisions are not yet available.
To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?
Since Switzerland now has one single patent court – the Federal Patent Court of First Instance – it is likely that this court will consider earlier decisions in similar cases unless overturned by the last-instance Federal Court. In general, courts are not bound by the opinions and decisions of other courts at the same level, although lower courts are usually bound by the decisions of higher courts.
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?
Since the Federal Patent Court of First Instance only opened for business in January 2012, there is little established practice so far. However, going by the experiences of similar commercial courts, the Federal Patent Court of First Instance may also be willing to consider the reasoning of foreign courts with similar levels of expertise and legal backgrounds (eg, German courts).
What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?
Once the case is pending before the court, the possibilities for delaying the case are limited, since the court handles proceedings according to a strict timeframe. In order to delay, the defendant can seek the maximum number of time extensions, while the plaintiff may try to accelerate the proceedings by responding to court orders promptly.
Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?
Preliminary injunctions are readily available, provided that the plaintiff can provide prima facie evidence of:
- validity of the patent; and
- a harm that cannot easily be remedied (eg, by the payment of damages).
In addition, the plaintiff must show that it has not delayed the case. As a rule of thumb, a request for a preliminary injunction must be filed within three to six months of the infringement becoming known to the patent holder. The term varies depending on the details of the case. Preliminary injunctions are sought by filing a request that includes a demand for relief and reasoned statements and proof of the infringement. The court will then ask the defendant for its response. Ex parte injunctions are the exception to the rule and are available only in cases where there is a risk of imminent danger (eg, during a trade fair). Due to the broad variety of scientifically and technically skilled judges, the Federal Patent Court of First Instance abstains from appointing court experts, resulting in swift proceedings. If the court finds that there is sufficient evidence that the harm cannot be easily remedied and the matter is urgent, it will grant a preliminary injunction.
How much should a litigant budget for in order to take a case through to a decision at first instance?
The costs of a first-instance decision depend on the value in litigation, but generally amount to between Sfr80,000 and Sfr200,000 per party. The losing party can expect to bear costs of between Sfr160,000 and Sfr450,000, comprising the parties’ costs, possibly the costs of a court expert and court costs.
How long should parties expect to wait for a decision to be handed down at first instance?
The Guidelines of the Federal Patent Court of First Instance set the following time limits for normal cases:
- two weeks to pay the advance on costs;
- six weeks to submit the statement of defence and the reply/defence to the counterclaim; and
- four weeks to submit the reply to a counterclaim and the rejoinder.
Based on a valid request, the time limit for paying the advance on costs may be extended by one week and the time limit for filing submissions by two weeks. Since an informal hearing takes place after the first full exchange of writs (eg, statement of claims, statement of defence and – only for a nullity counterclaim – rejoinder or reply to a counterclaim), the whole first instance procedure may be finished within about six months. In complicated cases, these timeframes may be substantially longer.
To what extent are the winning party’s costs recoverable from the losing party?
The court will calculate the successful party’s attorney costs and the court costs based on an official fee schedule, which depends on the complexity of the case, the number of writs and the value in litigation. The successful party’s patent attorney costs and expert costs are reimbursed based on actual costs.
What remedies are available to a successful plaintiff?
It is usual to request a cease and desist order and reimbursement of damages or lost profits. If a cease and desist order is granted, the defendant must stop using the infringing product or method. In addition, financial compensation is available to the patent holder, which may include compensation for actual damage inflicted.
How are damages awards calculated? Is it possible to obtain punitive damages?
The plaintiff may claim its own damages, infringer’s profits or the amount of the infringer’s unjust enrichment. Previously, claims were often made for damages calculated on the basis of usual royalties, but according to a recent Federal Court decision, payment of an amount equal to a licence fee under the title of damages may be demanded only if the plaintiff can prove that the claimed licence fee income would have been earned if no infringement had taken place. This and other types of damages are usually very difficult to prove. Accordingly, the plaintiff must now provide evidence of the profits made by the infringer in order to claim restitution of the infringer’s profits. Punitive damages are not available.
Under what circumstances might a court grant a permanent injunction? How often does this happen? Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?
Unless the plaintiff and the defendant come to an agreement before a final decision, the court will grant a permanent injunction provided that the infringement is sufficiently substantiated. An appeal to the Federal Court is open to any aggrieved party.
How long does it typically take for the appellate decision to be handed down?
An appeal to the Federal Court is possible in main proceedings. The Federal Court has full jurisdiction in appeal proceedings. The appeal procedure is usually swift, often taking less than a year.
Is it possible to take cases beyond the second instance?
No. The Federal Court is the only instance for an appeal.
To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?
The Federal Patent Court of First Instance will protect patentees’ rights, provided that there is sufficient evidence.
Is your jurisdiction a signatory to the London Agreement on Translations?
Yes. Two of the languages of the European Patent Convention are official Swiss languages, so no translation of the claims need be filed.
Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?
Switzerland is a member of neither the European Union nor the European Economic Area. Therefore, Switzerland cannot sign the agreement on the Unified Patent Court.
Are there any other issues relating to the enforcement system in your country that you would like to raise?
The Federal Patent Court of First Instance has had a successful start and its decisions published so far seem well founded. The court accepts English as the language of proceedings if both parties agree, and may thus become an attractive alternative to other patent courts in Germany, the United Kingdom, Italy and France.
E Blum & Co AG
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Regula Rüedi is a partner in E Blum & Co AG. She holds a PhD in organo-metallic chemistry from the Swiss Federal Institute of Technology and has several years of industry experience in the fields of analytical chemistry, materials and surface analysis. Dr Rüedi became a patent attorney in 1990 and was admitted as a European patent attorney in 1994. Her main activities cover patent law – in particular, expert opinions and litigation work in patent infringement and invalidity cases and counselling clients in patent matters. She is a non-permanent judge at the Swiss Federal Patent Court of First Instance.
Rainer Schalch is a partner in E Blum & Co AG. He holds a degree in electrical engineering from the Swiss Federal Institute of Technology and has worked in industry in the fields of power system management and digital computer design. Mr Schalch’s main activities cover patent law, in particular patent litigation, opinions on infringement and validity as a court or private expert and drafting and prosecuting patent applications. He has several years’ experience as a judge at the Argovia Commercial Court. Mr Schalch works in German and English.