Patent litigation in Switzerland: overview
A Q&A guide to patent litigation in Switzerland.
The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.
To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.
This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.
Sources of law
The principal source of national law relating to patents is the Swiss Patent Act. Subsidiary provisions concerning the registry and the registration procedure are set out in the Patent Ordinance. Inventions made by employees in the course of their duties are governed by Article 332 of the Swiss Code of Obligations. The procedural law relating to patent litigation is set out in the:
Federal Patent Court Act.
Federal Code of Civil Procedure.
Federal Act of Private International Law.
Switzerland is a party to a number of international treaties in relation to patents, including the:
WIPO Paris Convention for the Protection of Industrial Property 1883.
WTO Agreement on Trade-Related Aspects of Intellectual Property 1994.
Patent Cooperation Treaty 1970.
European Patent Convention 1973.
Switzerland is also a party to the Lugano Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters 2007.
Switzerland is not a member of the European Union. Therefore, EU law is not directly applicable in Switzerland. However, the Patent Act is largely compliant, although not identical, with harmonised EU law.
Switzerland does not adhere to the concept of binding precedence of court decisions (see Question 2).
A specialised Federal Patent Court has exclusive jurisdiction over patent infringement and invalidity actions. The panel of judges in the Patent Court is composed of at least one judge with a legal background and one judge with a technical background. Knowledge of, and experience in, patent law is a criterion for the election of the judges of the Patent Court. Therefore, a patent owner can expect a significant level of expertise from the Patent Court. Appeals are heard by the Federal Supreme Court.
Infringement and invalidity are dealt with in the same proceedings. The defendant to infringement proceedings can challenge the validity of the patent by way of a defence or by way of a counterclaim. Typically, the court will first deal with invalidity and, if the patent is held to be valid, it will then deal with infringement.
To invalidate a Swiss patent, an invalidity action must be brought in court proceedings before the Federal Patent Court.
The Federal Institute for Intellectual Property does not provide for opposition proceedings and does not itself handle invalidity issues, other than cancellation following a finding of invalidity by the Federal Patent Court in court proceedings. For European patents, opposition can be filed with the European Patent Office within the opposition period. After expiry of the opposition period or dismissal of the opposition, an invalidity action can be brought in court proceedings before the Federal Patent Court in Switzerland to invalidate the Swiss part (but not the foreign counterparts) of a European patent.
Attorneys at law admitted to practice can represent parties in all patent proceedings before the Federal Patent Court and Federal Supreme Court. It is common and highly advisable to retain specialised attorneys at law for representation. Patent agents (usually known as patent attorneys in Switzerland) can only represent parties in patent invalidity proceedings before the Federal Patent Court, but have rights of audience in all patent proceedings before the Federal Patent Court (that is, they are permitted to speak before the judges to assist attorneys at law in technical matters at hearings).
Patent agents who are admitted to practice before the European Patent Office (EPO) can represent parties in opposition proceedings before the EPO.
German, French and Italian are the official languages in Switzerland. Proceedings before the Federal Patent Court are conducted in one of the official languages, to be determined by the Federal Patent Court on receipt of the statement of claim. Usually, the language of the statement of claim determines the language of the proceedings.
Alternatively, the parties can agree in writing on English as the language of the proceedings. However, even if the parties agree that English is the language of the proceedings, the judgment and procedural orders will be handed down in one of the official languages. Foreign language documents must be accompanied by a translation in one of the official languages or English.
In principle, the courts in Switzerland are not bound by the opinions and decisions of other Swiss courts that have dealt with similar cases. The lower instance courts are not even bound by the opinions of the Federal Supreme Court, except when a court decision has been remanded by the Federal Supreme Court, in which case the court, in handing down a new decision, is bound by the opinion of the Federal Supreme Court. However, it is unlikely that a lower instance court will decide a case differently if the Federal Supreme Court has already dealt with a similar case. Therefore, in practice, the opinions of the Federal Supreme Court are generally binding for lower instance courts, including the Federal Patent Court.
Generally, Swiss courts are willing to consider the reasoning of foreign courts that have handed down decisions in similar cases, especially courts from neighbouring countries, notably Germany. This applies especially in proceedings involving European patents, given the significant degree of harmonisation of European patent law. Although decisions of foreign courts are not binding on Swiss courts, they are generally taken into account as an important additional source of guidance. The Federal Patent Court expressly requests parties to provide information on all foreign judgments relating to the same European patent.
Determining whether a patent is infringed essentially involves two steps:
Construction of the patent claim.
Comparison of the construed claim and the allegedly infringing product.
Article 69 of the European Patent Convention 1973 (EPC) is relevant for the construction of patent claims (either directly in the case of a European patent or by analogy in the case of a Swiss patent). The extent of the protection conferred by a European patent/patent application must be determined by the terms of the claims. However, the description and drawings must be used to interpret the claims.
Under the Protocol on the Interpretation of Article 69 of the EPC, Article 69 must not be interpreted in the sense that the extent of the protection is to be understood as defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. In addition, Article 69 must not be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred can extend to what the patentee has contemplated, based on a consideration of the description and drawings by a person skilled in the art. Article 69 must be interpreted as defining a position between these extremes, which combines a fair protection for the patentee and a reasonable degree of certainty for third parties. The prosecution file must generally not be used for claim construction.
The doctrine of equivalents also applies in infringement actions in Switzerland. To extend the scope of protection beyond the strict literal meaning of the words of the claim, any element that is equivalent to an element specified in that claim is taken into account. Therefore, the scope of protection conferred by a patent claim is not limited to the identical use of the features of the construed claim by the defendant's product or process, but also extends to equivalent embodiments, if the skilled person in the art is able to recognise these as being equally effective.
An alleged infringer can use the following defences:
The product/process does not fall within the patent claims if properly construed (see Question 7).
Invalidity of the patent.
Exemption from patent infringement. Under Swiss law, patent rights do not extend to:
acts done privately for non-commercial purposes;
acts done for experimental purposes;
acts done for the purpose of obtaining a marketing registration (Bolar-type exemption); and
use on vehicles, ships and aircrafts temporarily or accidentally entering Switzerland.
The import and multiplication of biological material is exempted to the extent that such material was put on the market in Switzerland or the European Economic Area (EEA).
Exhaustion of rights. This applies if the patented product or the product resulting from a patented process has been sold in Switzerland or in the EEA by the patentee or with the patentee's consent. Generally, Switzerland adheres to the principle of regional exhaustion, except for patented products with regulated prices (such as pharmaceuticals), for which the principle of national exhaustion applies. Biological materials can also be multiplied for their intended use.
Anti-trust violation, in the case of parallel importation of patented products from a country outside Switzerland and the EEA, although only in exceptional circumstances (see Question 23).
Prior user right. This only applies if the alleged infringer had already used or made all necessary preparations to use the invention claimed by the patent at the patent's priority date.
The patentee is estopped from enforcing an otherwise valid and infringed patent due to lapse of a substantial period of time. However, this defence is limited to rare cases where the patentee, through its conduct, has given the alleged infringer reasonable grounds to believe that it would not bring any claim for patent infringement. Mere inactivity of the patentee, even for a long period of time, is generally not sufficient.
If none of the above defences prove successful, the alleged infringer can argue that it is entitled to a compulsory licence. This may be the case in any of the following circumstances:
The alleged infringer has an invention that is dependent on the prior invention.
The prior invention is not exploited in Switzerland.
Public interests require a compulsory licence.
The grant of a compulsory licence must be requested in separate proceedings.
Under the Federal Patent Act, the Federal Patent Court can revoke a patent on any of the following grounds:
The invention is not a patentable invention (for example, if it is a discovery (as distinct from an invention), it is obvious, lacks novelty or industrial applicability).
The invention is not a patentable subject matter. Excluded subject matters are:
methods for treating the human and animal body;
plant and animal varieties and essentially biological methods for their creation; and
inventions contrary to public order (ordre public) and morality.
The specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art.
The matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent as filed.
The patent was granted to a person who was not entitled to be granted that patent.
If the Federal Patent Court determines that one of the grounds for invalidation has been established, but only so as to invalidate the patent to a limited extent, the Court will only partially invalidate the patent.
There are no utility patents/models in Switzerland. Therefore, the Court cannot transform a patent into a utility patent/model.
It is possible for the patentee to amend the patent claims during proceedings, but the claims can only be restricted (that is, not extended), as they must not add something new to the specification. The patent can be restricted by eliminating patent claims altogether or by combining independent patent claims and dependent claims. In addition, patent claims can only be restricted if the restricted claims still relate to the same invention and are still supported by the description of the original application.
A patent cannot be deemed unenforceable based on the misconduct of the patent holder. An otherwise valid and infringed patent can be deemed unenforceable due to delay in bringing proceedings, although only in exceptional circumstances (see Question 8).
Parties to litigation
The patent holder can sue for patent infringement. In the case of co-ownership, this applies to each co-owner of the patent.
The exclusive licensee can generally sue for patent infringement, unless the licence agreement specifically excludes this right. However, the right to sue applies only with respect to licence agreements entered into or renewed after 1 July 2008.
Exclusive licensees need not be registered to have the right to sue.
Non-exclusive licensees have no statutory right to sue for patent infringement. However, they can join a damages claim to claim their own damages. Therefore, it is important for non-exclusive licensees and distributors that the relevant licence or distributorship agreement contains a clause requiring the patentee to take action for patent infringement.
Distributors are at least implicitly granted a licence to distribute the patented products. Therefore, the same rights apply as for licensees, unless expressly excluded in the agreement. An exclusive distributor can take action against unlicensed distributors, whereas non-exclusive distributors are prevented from taking legal action.
Under Swiss law, an alleged infringer can bring a lawsuit to obtain a declaratory judgment that an act does not, or that a proposed act would not, constitute an infringement of a patent, provided that it has a legitimate interest in obtaining such judgment. This is usually the case if either:
The alleged infringer has received a cease and desist letter.
The patent holder has otherwise asserted that it infringes the patentee's patent.
An alleged infringer is generally barred from bringing a lawsuit to obtain a declaratory judgment on non-infringement if the patent holder has not yet given any indication that it considers the alleged infringer's activities as infringement.
Any person infringing a patent itself or through its agents is potentially liable and can be made a defendant to proceedings.
Directors of a company are not normally liable simply because their company has been engaged in infringing activities, unless one of the following can be proved:
They have personally committed or directed the infringing acts.
The company committed the infringement as their agent.
They expressly authorised the infringement.
They were aware of the infringement and did not take steps to stop it.
A company is liable for any acts committed by its directors and/or employees in the course of their duties.
Any person inducing or contributing to a patent infringement is also potentially liable and can be made a defendant to proceedings. It is also a contributory infringement to supply (or offer to supply) materials or parts that are suitable for putting and intended to put the invention into effect. This also applies to foreign contributors. Therefore, the foreign supplier of materials or parts that are brought into Switzerland (where manufacture is completed and the invention is put into effect) can contribute to patent infringement. Conversely, the Swiss supplier of materials or parts that are brought outside Switzerland does not contribute to patent infringement in Switzerland (but can contribute to infringement of a foreign counterpart of this patent).
A patent holder that seeks to enforce its rights can bring a civil action and seek relief such as:
A permanent or (initially) preliminary injunction.
The destruction of infringing goods.
Accounts of profits.
Surrender of unjust enrichment.
The patent holder can also instigate a criminal investigation seeking the criminal prosecution of the patent infringer. However, the patent holder cannot recover financial loss in criminal proceedings.
The criminal sanctions for patent infringement are either a monetary penalty or imprisonment for up to five years, if the accused acted with a commercial purpose.
The patent holder can request that the customs authorities seize infringing goods.
If there is an arbitration agreement in place, the patent holder can also enforce its rights by initiating arbitration proceedings in accordance with the relevant arbitration clause. In Switzerland, both infringement and invalidity disputes are capable of arbitration (see Question 21).
The patent holder can enforce its rights by threatening to take or by taking legal action. Typically, the patent holder initially sends a cease and desist letter asserting the patent infringement and requiring the alleged infringer to:
Immediately cease infringing and desist from future infringements.
Disclose information about the supplier, and on the turnover and profits generated with the infringing product.
Pay compensation for damages suffered by the patent holder (including reasonable attorneys' fees).
Destroy remaining stocks of infringing products.
Sending a cease and desist letter is not required before commencing litigation. However, in specific circumstances, this course of action can be advisable to determine whether the alleged infringer admits the infringement (in which case it may not be necessary to bring proceedings) or denies it.
An accused infringer can use a cease and desist letter from the patent holder as the basis of an action to obtain a declaratory judgment on non-infringement (see Question 14).
Unjustified threats of patent infringement can be considered a disparagement and, therefore, a violation of the Unfair Competition Law. Threats are generally considered unjustified if the patent holder has good reason to believe that there is no infringement.
In principle, Swiss courts can grant cross-border or extra-territorial injunctions (involving foreign counterparts of a Swiss patent) if they have jurisdiction over the cross-border dispute. It is generally recognised that this is only the case if the defendant to infringement proceedings is domiciled in Switzerland.
In determining infringement of foreign counterparts, the court must apply the respective foreign law (for example, French law in relation to a French patent (or the French part of a European patent)). Therefore, it is more likely that a court will grant a cross-border or extra-territorial injunction in a dispute involving a European patent, given the significant degree of harmonisation of European patent law. Even then, judges will generally be reluctant to grant cross-border or extra-territorial injunctions, especially in preliminary injunction proceedings.
If the defendant to patent infringement proceedings challenges the validity of the foreign patents, the Federal Patent Court no longer has jurisdiction over the dispute, since the question of validity of the foreign patent falls under the exclusive jurisdiction of the courts of the country in which the patent was issued. According to case law, this does not only apply in the case of a counterclaim, but also if the defendant challenges the validity of the patent by way of a defence. In practice, if the defendant challenges the validity of a foreign patent, the court will stay the infringement proceedings and order the defendant to initiate invalidity proceedings in the country in which the patent was issued. If the defendant fails to initiate invalidity proceedings, the court will deal with the question of invalidity as a preliminary question to infringement. See also Question 20.
As a general rule, a Swiss court must stay proceedings if there are already proceedings pending between the parties on the same subject matter before a foreign court. Where the alleged infringer has filed a "torpedo" action for a declaratory judgment of non-infringement in a "slow" jurisdiction and the patentee (or exclusive licensee) commences infringement proceedings in Switzerland in respect of the same patent, the Swiss court will therefore generally stay the Swiss proceedings. Some academic authors have argued that if the foreign court in which the "torpedo" was filed has clearly no jurisdiction to hear the case, the action before the foreign court constitutes an abuse of law and does not justify a stay of the Swiss proceedings.
Arbitration is available for resolving patent disputes if the parties to the dispute have agreed on the competence of an arbitral tribunal. In Switzerland, both patent infringement and invalidity disputes are capable of arbitration. However, arbitration proceedings are rarely used to resolve pure patent infringement and invalidity disputes. It is more common for parties to conclude an arbitration agreement in patent licensing contracts, which also empowers the arbitral tribunal to decide on underlying patent infringement and validity issues.
An arbitral award declaring a patent invalid will be recognised and enforced by the Swiss Institute for Intellectual Property in the same manner as a judgment or order to the same effect.
In the course of litigation, the Federal Patent Court requires parties to engage in court-mediated settlement negotiations after the first exchange of briefs. Outside court proceedings, ADR methods such as mediation are available for determining patent disputes. However, these methods are not widespread in Switzerland and are mostly chosen as a first step to dispute resolution under licensing agreements.
Competition and anti-trust
In principle, a patent holder can bring proceedings claiming both patent infringement and unfair competition for the same set of facts. Some courts have considered that mere patent infringement constitutes an act of unfair competition. However, additional activities of the alleged infringer (such as using a confusingly similar trade dress) can also constitute acts of unfair competition, which may be actionable in the same lawsuit.
The Federal Supreme Court has held that a patentee that has a dominant position in a market can be liable for an anti-trust violation if it enforces its patent to prevent the parallel importation of a patented product already sold in another country. However, this only applies if the following conditions are met:
The patentee is dominant in the market.
The legal and economic conditions of the country where the first sale occurred are comparable to those of Switzerland.
The enforcement of the patent only seeks to maintain substantially higher prices in Switzerland, thereby sealing off Switzerland in an abusive way.
Some academic authors have argued that market dominant patentees are generally obliged to grant compulsory licences if both:
The use of the patented technology is indispensable for a third party that wishes to offer new products.
The patentee does not have legitimate grounds to refuse the grant of a licence.
The Federal Patent Act specifically provides for compulsory licences in the case of anti-trust violations, although this issue is generally not settled in Switzerland.
Procedure in civil courts
To initiate court proceedings before the Federal Patent Court, the claimant files a statement of claim, which indicates the remedies sought against the defendant, presents the facts and sets out the legal arguments. The defendant will then file a statement of defence and a counterclaim (if any) refuting the infringement claim and asserting invalidity. If the defendant files a counterclaim asserting the invalidity of the patent, this is followed by a reply and answer to the counterclaim to be filed by the claimant.
After this first exchange of briefs, the parties are summoned to a hearing that consists of two parts:
In a first (official) part, the judges will direct questions to the parties if specific issues are unclear or will provide guidance if further substantiation is required. Witnesses can be heard and other evidence can be taken. This first part is minuted.
During the second (informal) part, the judges provide their preliminary view on the dispute and the parties must engage in court-mediated settlement negotiations. This second part is not minuted. If the dispute cannot be resolved, the future timetable of the proceedings (case management) is directed by the court.
After the hearing, there will be a second exchange of briefs (that is, the claimant will file the reply, followed by the rejoinder to be filed by the defendant). Alternatively, in the case of a counterclaim, the defendant will file the rejoinder and reply to the counterclaim, followed by the rejoinder to the counterclaim to be filed by the claimant.
After the briefs have been exchanged, the judge will decide whether a court expert will be appointed, whether witnesses will be heard or other evidence taken. Since there is always at least one judge with a technical background, it is expected that the Federal Patent Court can decide most cases without having to appoint court experts. In practice, the Court is generally reluctant to appoint experts.
Once the technical judge or the court-appointed expert has provided his opinion, witnesses have been heard and other evidence has been taken, the parties will make observations on the evidence taken. These final pleadings are ordinarily made in writing, but can also be made at a final oral hearing. If the court-appointed expert does not support a party's position, this party can request that the expert be asked to supplement his opinion or that the court appoint a new expert (although this is very rarely granted, except under exceptional circumstances).
There are no jury trials in Switzerland.
Patent proceedings are largely based on written documents, including among others:
Correspondence between the parties.
Illustrations of the invention.
Drawings and pictures of the allegedly infringing product or process.
Leaflets and brochures establishing infringement.
Affidavits are not frequently used, but can sometimes be helpful in lieu of witnesses. Especially in preliminary injunction proceedings, the applicant sometimes files affidavit evidence in support of its application. It is not necessary (but sometimes advisable) for persons who have made the affidavit to testify in court.
Witnesses are rarely used and heard in patent infringement or validity proceedings. Depending on the circumstances, they can play a significant role, (for example, in relation to claims of patent ownership). It is normally not possible to cross-examine witnesses as practiced under the Anglo-American legal systems. Usually, witnesses are questioned by the chief judge The parties are allowed to ask additional questions either directly to the witnesses or to read their questions out to the judge who will in turn question the witnesses.
Private experts. Opinions of private experts are sometimes used in support of specific allegations (for example, in relation to infringement and validity issues or calculation of damages). The evidential value of private experts' opinions is low as the Federal Supreme Court and the Federal Patent Court consider them to be mere party allegations. However, private experts' opinions may still be important as they provide guidance to the (technical) judges and the court-appointed expert. The Federal Patent Court appears to be generally reluctant to hear party-appointed experts. However, the confrontation of party-appointed experts and court-appointed experts or technical judges at oral hearings is not excluded and has taken place in rare cases.
Court-appointed experts. Traditionally, court-appointed experts played a significant role in patent proceedings in Switzerland. However, this has changed with the establishment of the Federal Patent Court, as there is always at least one judge with a technical background, which allows the court to decide most cases without retaining further experts. In highly complex cases or cases relating to a very particular field of technology, external court experts may still be needed and appointed.
US-style pre-trial discovery is not permitted in Switzerland. Generally, parties do not have an obligation to disclose relevant documents and materials to their opponent. However, some limited, yet effective, options are available for obtaining documents and materials before initiating infringement proceedings:
Under the Swiss Patent Act, the court can order, as a preliminary measure, a description or seizure of the allegedly infringing product, process and means of production based on a prima facie showing of actual or imminent infringement. This option is available before initiating proceedings and the findings resulting from the description or seizure can be used in later infringement proceedings in Switzerland or abroad. The party seeking this measure does not need to show that the evidence is likely to be destroyed or abandoned. Showing another legitimate interest is not required either. A member of the Federal Patent Court carries out the order, if necessary with the assistance of a court-appointed expert or local authorities, such as the police.
Under the Civil Code of Procedure, a party can at any time (that is, even before initiating proceedings) request the court to order the provisional seizure of evidence if it is prima facie established that:
this evidence is likely to be destroyed or abandoned; or
there is another legitimate interest for the seizure, such as analysing the merits of a future lawsuit.
While it is recognised that a full substantiation of the case is not possible at such an early stage, a claimant seeking either of the above options must substantially allege all relevant facts known to him and explain why the requested information is relevant. Fishing expeditions are not permitted.
Other mechanisms to obtain evidence are as follows:
During proceedings, the court can order a party to produce specific documents that are in the party's custody if the party seeking the production can prove their relevance to the outcome of the case. No fishing expeditions are permitted. Failure to comply with a court order can be taken into account by the court when weighing the evidence. The court can also compel third parties to produce specific documents relevant to the outcome of the case.
The court can order the production of a defendant's accounting documents and information on the extent of infringing activities in order to allow the claimant to quantify its monetary claims (damages and account of profits).
The length of patent infringement proceedings depends on the:
Complexity of the technology in question.
Number of patents and/or patent claims allegedly infringed.
Number of defences raised.
In principle, the Federal Patent Court aims to conclude patent infringement proceedings within about 18 months, except in cases involving complex technology. To reach this goal, the Federal Patent Court generally sets binding deadlines of:
Six weeks for filing the statement of defence and reply/answer to the counterclaim.
Four weeks for filing the reply to the counterclaim and rejoinder to the counterclaim.
Parties can obtain a two-week extension. Further extensions can generally only be obtained with the other party's consent. However, in complex cases or under extraordinary circumstances, the court can grant longer extensions. Complex patent proceedings can last two to three years in the first instance, and another eight to ten months for appeal proceedings.
Fast-track procedures are available in cases where the facts are undisputed or can be immediately proved and the legal situation is clear. These cases are handled in summary proceedings and a judgment can generally be expected within six months.
In addition, preliminary relief is available. If granted, the preliminary judgment must be confirmed in ordinary proceedings (see Questions 31 to 34).
After receipt of the statement of claim and statement of defence, the Federal Patent Court sets a preliminary hearing. If no settlement is found at this hearing, the Court directs the future timetable of the proceedings. However, these case management directions are not binding and extensions are possible, although the parties can explicitly agree to exclude deadline extensions. In any event, expediting the process is only possible to a limited extent because the court controls the conduct of the proceedings.
Defendants seeking to delay the proceedings can:
Request extensions of the deadlines set for filing submissions (see above).
Be unco-operative when the court looks for commonly acceptable hearing dates.
Request the appointment of court-appointed experts.
File unsolicited submissions.
If opposition or appeal proceedings are pending before the European Patent Office (EPO), defendants can request the stay of Swiss proceedings. However, the Federal Patent Court does not normally stay the proceedings in these circumstances, unless a final decision of the EPO is expected shortly or both parties request a stay of the Swiss proceedings.
Search and preservation orders
The applicant can request a description or seizure of the allegedly infringing product, process and means of production based on a prima facie showing of actual or imminent infringement (see Question 28, Pre-trial discovery). However, no fishing expedition is allowed. The applicant must give details on:
The documents or items that are the object of the description or seizure.
Why it believes that these documents or items can be found at the relevant site.
Their relevance to its case for infringement.
Preservation orders are available if the applicant can credibly show a risk that important evidence may no longer be available during main proceedings. In this case, the court can request the defendant or a third party to edit documents. These orders can also serve to avoid the occurrence of an infringement (for example, by ordering an infringer to stop marketing infringing goods).
Preliminary relief is available in the form of preliminary injunctions if the following requirements are met:
There is a prima facie case of infringement and validity (the burden of proof in relation to invalidity lies on the defendant).
The applicant will suffer irreparable harm if the injunction is not granted.
Urgency is not a condition for the grant of preliminary relief. However, if the applicant has waited for a substantial period of time (for example, more than one year) before requesting preliminary relief, preliminary relief will generally no longer be available.
In cases of urgency and where there is a strong prima facie case of infringement, an application for an ex parte (without notice) injunction can be made to the Federal Patent Court. In practice, ex parte injunctions are rarely granted in patent matters.
Actions started through an ex parte application require confirmation in inter partes proceedings. All preliminary injunction proceedings require confirmation in main proceedings. After issuing a preliminary judgment, the Federal Patent Court will set a deadline for the commencement of main proceedings. If no main proceedings are initiated, the injunction fails and the applicant is liable for any damages caused to the defendant (see Question 34).
In principle, cross-border injunctions are also available as preliminary relief, provided the court has jurisdiction over the case (see Question 19). However, no cross-border injunctions have yet been granted by the Federal Patent Court in preliminary proceedings, and the Court will most likely be reluctant to grant these injunctions in this context.
It is possible to file a protective writ with the Federal Patent Court. The Court will not communicate the protective writ to the potential claimant, but keep it on record until an ex parte application is filed. Once an application is filed, the Court will consider the arguments set out in the protective writ to determine whether to grant an ex parte injunction. If no ex parte application is filed within six months, the protective writ will be returned to the potential defendant, unless it is renewed.
Preliminary injunction proceedings are summary proceedings, which means that shorter deadlines and a reduced level of proof apply.
To initiate preliminary proceedings, the claimant files a request for a preliminary injunction against the defendant, presenting the facts and setting out its legal arguments. The defendant will then file a statement of defence refuting the infringement claim and claim of irreparable harm, and usually alleging patent invalidity as a defence.
The Federal Patent Court has much discretion with respect to the further course of proceedings. In principle, the procedural law provides for an oral hearing after the first exchange of briefs, during which the parties have the opportunity to plead orally (reply and rejoinder). If such hearing takes place, the court also presents a preliminary view of the case to encourage the parties to resolve their dispute by way of court-mediated settlement negotiations. If the dispute cannot be resolved, the court will usually take an immediate decision. Alternatively, the court can waive the oral hearing and invite the parties to submit reply and rejoinder in writing. In some instances, the technical judge provides a technical opinion on which the parties can comment. The court then takes an immediate decision.
Level of proof
The level of proof in preliminary injunction proceedings is to credibly show the relevant alleged facts.
Due to the speed and nature of preliminary injunction proceedings, only readily available evidence is admitted in these proceedings, which normally means that only documentary evidence is available. Witnesses are generally not heard. Given the technical expertise of the Federal Patent Court, there is normally no need for expert witnesses/reports in preliminary injunction proceedings. However, in particular cases, a short technical expert opinion can be obtained, although the Federal Patent Court is generally reluctant to appoint external experts.
The defendant can (and often will) put the validity of the patent in issue in preliminary injunction proceedings. It is sufficient to credibly show the invalidity of the patent.
Length of proceedings
Preliminary injunction proceedings in patent matters are normally conducted within four to ten months, although highly complex cases can take up to one year.
In the case of an unjustified preliminary injunction, the claimant must pay compensation for damages suffered by the defendant. However, if the claimant filed the request for a preliminary injunction in good faith, a court can dismiss a compensation claim or reduce the compensation.
Regarding the calculation of damages, the defendant must be placed in the position it would have been in if no preliminary injunction had been issued. To this end, the defendant must prove damages suffered as a result of the unjustified preliminary injunction, notably lost profits. Lost profits are profits that the defendant would have made absent the unjustified preliminary injunction. The lost profit award is based on lost sales of the goods that were wrongly held to be infringing in preliminary injunction proceedings.
The Federal Patent Court can order the claimant to provide a bond or a guarantee to ensure payment of compensation in the event of an unjustified preliminary injunction. This is requested in most cases. The amount of the bond/guarantee is determined by the Court. The bond/guarantee is released once it is clear that no damages are claimed. The Federal Patent Court can impose a time limit on the defendant for filing a damages action.
A permanent injunction is the usual remedy against a patent infringer in Switzerland. Public policy considerations are not taken into account when determining whether a permanent injunction can be granted. If the patent is infringed and the claimant requests a permanent injunction, the court has no judicial discretion to deny the grant of the injunction. There are no exemptions for particular subject matter or for particular claimants, such as non-practising entities.
An injunction is strictly confined to the infringing product or process. It only binds the defendant(s) to the proceedings and therefore has no direct effect on third parties (such as suppliers or customers) and cannot be enforced directly against them.
The Federal Patent Court can grant cross-border or extra-territorial permanent injunctions if it has jurisdiction over the dispute (that is, if the defendant is domiciled in Switzerland and does not challenge the validity of the foreign patent) (see Question 19).
Similar to common tort actions, monetary remedies in patent actions are assessed on the basis that the claimant must be placed in the position it would have been in if no infringement had occurred. The claimant can request:
Compensation for the pecuniary loss that it has suffered due to the infringement (damages).
Surrender of the profits made as a result of the sale of the infringing products (account of profits).
Surrender of any unjust enrichment deriving from the infringing act.
Where the claimant is entitled to damages, it can request either compensation for lost profits or a reasonable royalty rate.
The claimant must choose between damages, an account of profits or surrender of unjust enrichment. The court will not, in respect of the same infringement, award pecuniary relief based on multiple grounds. Usually, the claimant will pursue multiple remedies in parallel as alternative claims, and choose the remedy that yields the best result.
In addition and cumulatively to damages, account of profits or surrender of unjust enrichment, the claimant can seek damages for ancillary losses arising from the infringement. Ancillary losses can include:
Legal expenses incurred before initiating the action (for example, the cost of obtaining an opinion on infringement from patent counsel).
Expenses directed at mitigating the impact of the infringement (for example, advertising expenses directed at minimising confusion in the market place).
Lost sales of ancillary products (for example, lost sales of unpatented equipment, spare parts, and so on, which the patentee ordinarily sells alongside its patented articles).
Generally, the quantum of monetary remedies is assessed at a separate, later stage from liability.
Delivery up or destruction of infringing goods
The patentee can seek an order requiring the defendant to deliver up or destroy any infringing products.
Publication of the decision
The claimant can request the publication of the decision at the defendant's costs.
The Swiss Patent Act does not explicitly provide for the possibility to request a recall order from the Federal Patent Court. However, recall orders can be requested as a means to remove an infringing product and are therefore available in Switzerland.
Declaration of infringement and validity
Declaratory actions are only available as subsidiary means if no other relief can be sought. Therefore, declarations of infringement and validity are not normally available if the claimant can seek an injunction. The patentee must show a legitimate interest in the declaration. For example, if the patent has expired, a declaration of infringement and validity can be sought as a basis for a damages claim.
The defeated party in any main proceedings can file an appeal against the decision of the Federal Patent Court to the Federal Supreme Court. The appeal is limited to a review of the legal issues (as opposed to facts). More specifically, the appellant must show that the first instance court misapplied or misinterpreted federal law (that is, patent law).
In preliminary injunction proceedings, an appeal is only available if the defeated applicant can show that it suffers an irreparable harm of a legal nature. The Federal Supreme Court has a strict interpretation of the requirement of legal irreparable harm, which means that the possibility to appeal a preliminary injunction decision is excluded in most cases.
There are three types of costs involved in patent litigation:
Patent agent costs (if a party does not employ in-house patent agents).
Court costs are dependent on the value of litigation. Both attorneys' and (external) patent agents' costs are generally charged on a time costing basis, but are adjusted to reflect other factor, such as the complexity of the dispute and value of litigation.
On average, a party should expect to incur between EUR100,000 and EUR250,000 to take a case through to a first instance decision.
The winning party can generally recover its legal costs and disbursements from the other party. After assessment by the court, the successful party will generally recover about 30% to 50% of legal costs and all disbursements (including fees for retaining a patent agent) actually incurred in the proceedings. The court can exceptionally refuse to make a costs order in favour of the winning party or can penalise this party if it has abused the process of the court, or has contributed to an undue delay of the proceedings in any other way.
The losing party must pay court costs.
The Swiss Patent Act is to be amended as a consequence of the ongoing revision of the Therapeutic Products Act. This revision will change the following two aspects of patent law:
A new exemption will be included. Medical professionals and pharmacists will be exempted from patent liability with respect to the administration, dispense or prescription of drugs to one single person or animal.
Paediatric extensions will be introduced in the form of either a six-month extension to the duration of an existing supplementary protection certificate or the grant of a special supplementary protection certificate with a term of six months. The grant of these extensions will be made dependent on the submission of studies that have been carried out according to an agreed paediatric investigation plan.
The revised provisions are expected to come into force in late 2016/early 2017.
Federal Patent Court
Description. Official website of the Federal Patent Court.
Description. Official website of the Swiss Government.
Swiss Federal Supreme Court
Description. Official website of the Swiss Federal Supreme Court.
Swiss Federal Institute for Intellectual Property
Description. Official website of the Swiss Federal Institute for Intellectual Property.
World Intellectual Property Organisation (WIPO)
Description. Official website of WIPO.
World Trade Organization (WTO)
Description. Official website of the WTO.
European Patent Office (EPO)
Description. Official website of the EPO.
Thierry Calame, Partner
Lenz & Staehelin
Professional qualifications. Switzerland, Attorney at Law
Areas of practice. Intellectual property with a strong focus on patent litigation and patent-related arbitration; licensing, including licensing disputes; unfair competition; life sciences.
Non-professional qualifications. Permanent lecturer at the University of St. Gallen and at the Swiss Federal Institute for Intellectual Property; Master of Chemistry. Has published on a wide range of intellectual property topics.
Board member of the European Patent Lawyers Association (EPLAW).
Reporter General, International Association for the Protection of Intellectual Property (AIPPI), 2010-2014.
Lara Dorigo, Counsel
Lenz & Staehelin
Professional qualifications. Switzerland, Attorney at Law
Areas of practice. Intellectual property with a strong focus on patent litigation and patent-related arbitration; licensing, including licensing disputes, and other technology transfer transactions; unfair competition; life sciences.
Non-professional qualifications. Has published on a wide range of intellectual property and licensing topics. Member of the editorial team of Switzerland's leading intellectual property law magazine.