At torne ys at L aw
S epte m b e r 2 0 0 9
Newsletter
Authors:
Andrea Mondini
Philipp Groz
Intellectual Property
New Developments in Swiss Patent Law
Swiss patent law has recently been subject to significant changes. On 1 July 2009, the principle
of regional exhaustion for patent-protected products was introduced in relation to the member States
of the European Economic Area. Expected by early 2011, the Federal Patent Court will begin
­operations. At the same time, the title of patent attorney will become protected by the new Patent
Attorney Act.
1 N e w E x h a u s t i o n R e g i m e i n Pat e n t L a w
1 . 2 Nat io n a l , R e gio n a l o r I n t e r n atio n a l
­Ex h a u s ti o n
1.1 The Concept of Exhaustion
The holder of an intellectual property right (e.g., of a patent
or a trademark) generally has the exclusive right to put a
product protected by an intellectual property right on the
market. However, once such a product has been first sold
by the holder of the intellectual property right or with his
consent, the purchaser of this product may freely resell it.
From a territorial perspective, the question arises as to
whether the Swiss intellectual property rights existing
in Switzerland are only exhausted if the product at issue
was first sold in Switzerland (national exhaustion) or
whether such exhaustion may also take place if the first
sale took place abroad (international exhaustion).
The holder of the intellectual property right can no longer
The term regional exhaustion means that exhaustion
rights regarding the product sold (and only regarding this
region (such as the European Economic Area).
forbid a resale of such product. The intellectual property
product) are exhausted after the first sale.
occurs only when the product is first sold in a particular
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1.3 Present Exhaustion Regime in Swiss
­I n t e l l e c t u a l P r o p e r t y L a w
Until now, the exhaustion regime in Swiss copyright, trade­
mark, and patent law was solely determined by case law.
The Swiss Federal Court ruled that, under Swiss law, the
principle of international exhaustion applies to copyrights
(BGE 124 III 321, Nintendo) and to trademark rights (BGE
122 III 469, Chanel). However, patent rights were subject to
national exhaustion (BGE 126 III 129, Kodak). No relevant
Swiss Federal Court decision exists as yet concerning
If a patented product is first put on the market outside the
European Economic Area, the patent holder continues
to be able to defend against possible parallel imports into
Switzerland. The patent holder may not prevent the importation, however, where the patent in question does not
pertain to the main function of the product (e.g., a perfume)
to be imported, but is instead only of secondary impor-
tance (e.g., a patented closure on a perfume bottle, Art. 9a
para 4 PatA).
design rights.
It is noteworthy that the concept of national exhaustion
Under the concept of national exhaustion, patent rights
administered prices (particularly pharmaceuticals) in
could be asserted to prevent parallel imports to Switzerland
continues to apply for patented goods with governmentSwitzerland or in the country of sale (Art. 9a para 5 PatA).
of patent-protected products first sold abroad, provided
This exception (introduced as a result of the efforts of the
amounting to a violation of competition law. Since the
great practical relevance. First, patent protection is of
that the patent owner did not engage in a restriction of trade
Kodak judgment, the national exhaustion of patent rights
has been the subject of much controversy.
On one hand it was argued, inter alia, that national exhaus-
strongly-represented Swiss pharmaceutical industry) is of
fundamental importance to the pharmaceutical industry.
Second, the price of pharmaceuticals differs greatly
among European countries due to national regulations.
tion enables the patent holder to charge different prices in
It should finally be noted that, exceptionally, international
further financing of research and development activities.
of production and investment goods.
different countries depending on the demand. This allows
A move away from the system of national exhaustion would
harm Switzerland as a place for research. Similarly, with
(not just regional) exhaustion applies to agricultural means
1 . 5 Si m p l i f i e d App r o va l o f Pa r a l l e l -
a transition to international exhaustion, there would be a
Imported Drugs
plied with drugs or other patent-protected products because
fied marketing authorization procedure for parallel-
danger that developing countries might no longer be sup-
The Swiss Therapeutic Products Act provides for a simpli-
of the fear that products sold in those countries at a lower
imported drugs that are already approved in Switzerland.
price would then be re-imported to Switzerland.
Previously, simplified approval was not possible as long
as the already-approved therapeutic product (i.e., the orig-
On the other hand, it was broadly criticized that the restric-
inal preparation) was still patent-protected. The first
of national exhaustion is one of the main reasons that prices
the marketing authorization procedure for the parallel-
tion of intra-brand competition that follows from a system
in Switzerland for some products are higher than in neighboring countries.
1 . 4 R e g i o n a l E x h a u s t i o n i n Pat e n t L a w
s i n c e 1 J u ly 2 0 0 9
After a highly publicized political debate, the Swiss Par­
liament decided to amend the Patent Act (PatA) by intro­
applicant was allowed to assert its patent rights during
imported drug before the Swiss Agency for Therapeutic
Products (Swissmedic).
With the revision of patent law effective 1 July 2009, the
Therapeutic Products Act was also amended. It is no longer
possible to claim patent protection in the administrative
marketing authorization procedure for a parallel-imported
ducing the regional exhaustion concept in relation to the
drug. This results in a shortening and simplification of the
patent law revision went into effect on 1 July 2009. This
drugs.
contracting States of the European Economic Area. This
means that patented products first put on the market in
marketing authorization procedure for parallel-imported
the European Economic Area with the consent of the patent
In the future, the owner of the original preparation will
the patent holder’s consent (Art. 9a PatA).
importer in civil court proceedings.
holder may now be imported into Switzerland without
only be able to assert its patent rights against a parallel
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2 Pat e n t C o u r t Ac t
A plaintiff may also choose to bring other disputes related
to patents (e.g., a claim for payment of license fees) before
2 . 1 P r e s e n t R e g u l at i o n o f J u r i s d ic t i o n
i n Pat e n t Di s p u t e s
Currently, each of the 26 Swiss cantons has one court
having jurisdiction, as a first instance, in patent disputes.
the Federal Patent Court. In such cases, however, the plain­
tiff may also elect to submit the claim to a cantonal court,
as before (Art. 26 para 2 PatCA).
A large portion of all patent litigation is handled by one
Where a preliminary question or objection in a dispute
Zurich. Nevertheless, with only approximately 30 patent
ment of a patent, the cantonal court must give the parties
of the four commercial courts in Aarau, Bern, St. Gallen, or
proceedings in Switzerland each year, the problem exists
that the cantonal courts of first instance generally have
only little practical experience in patent litigation and are
not presented with enough opportunities to develop the
necessary technical and legal expertise.
These circumstances made it desirable to concentrate the
jurisdiction for patent cases in one specialized court.
before a cantonal court relates to the validity or infringetime to bring an action before the Federal Patent Court.
The cantonal court must suspend proceedings, pending
the final outcome before the Federal Patent Court. If,
within the period of time set by the cantonal court, no
action is filed with the Federal Patent Court, the cantonal
proceedings may continue and the preliminary question
or objection will not be considered (Art. 26 para 3 PatCA).
If, however, in the cantonal proceedings, a party brings
­Patent law is a highly technical matter that places special
a counterclaim alleging patent invalidity or infringement,
experience and expertise, this may lead to inconsistent
Patent Court (Art. 26 para 4 PatCA).
demands on the courts. If the courts have insufficient
and inadequate adjudication. There is also the risk that
the state’s duty to adjudicate patent disputes is delegated
to court-appointed experts.
Also central to the quality of adjudication in patent matters
is the duration of proceedings. Given the rapid techno­
logical change and the great economic importance of patent
protection, judicial resolutions of patent disputes in the
courts of first instance must be possible within a reason­
able amount of time.
Finally, it should be noted that in the field of patent infringe­
ment actions, it is often possible to choose between a
domestic and a foreign court. In view of this possibility
of forum shopping, the quality of Swiss adjudication
of patent disputes, as well as the expected duration and
the cantonal court must transfer the case to the Federal
The Patent Court Act is expected to enter into force on
1 January 2011 , together with the new federal civil procedure rules applicable to future proceedings before the
Federal Patent Court. The Federal Patent Court will comprise judges with a legal and judges with a technical
­background (Art. 8 para 1 PatCA).
One of Switzerland’s official languages (i.e., German, French
or Italian) will be designated by the court as the language
of the proceedings. The parties may also use one of the
other official languages for submissions and oral arguments
and, with the consent of the court and the opposing party,
may even use the English language (Art. 36 para 1–3
PatCA).
costs of the proceedings, have a direct impact on the
It should be noted that the creation of the Federal Patent
ceedings in a foreign or domestic court.
disputes to arbitration.
plaintiff’s decision concerning whether to initiate pro-
2 . 2 C r e at i o n o f a F e d e r a l Pat e n t C o u r t
In an effort to correct the present situation that is perceived
Court does not affect the parties’ freedom to submit patent
3 Pat e n t At t o r n e y Ac t
as unsatisfactory, the new Patent Court Act (PatCA)
Until now, the patent attorney profession was not regulated
disputes (Art. 26 para 1 lit. a and b PatCA). This court will
training, call him-/herself “patent attorney”. This seems
­c reates a special federal court of first instance for patent
have exclusive jurisdiction in all of Switzerland over dis-
putes regarding the validity and infringement of ­patents.
The Federal Patent Court will also have exclusive jurisdiction for ordering preliminary injunctions before a lawsuit
in Switzerland. Any person may, even without any formal
unsatisfactory. The complexity and economic importance
of protection of innovations makes high-quality advice
from patent attorneys essential.
is filed.
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The new Patent Attorney Act only allows individuals with
proven professional qualifications to use the title “patent
attorney” or “European patent attorney”. It also creates an
The new Patent Attorney Act is expected to enter into
effect with the Patent Court Act on 1 January 2011.
attorney-client privilege relating to secrets entrusted to
patent attorneys in the course of their work.
C o n ta c t s
The content of this Newsletter does not constitute legal or tax advice and may not be relied upon as such. Should you
seek advice with regard to your specific circumstances, please contact your Schellenberg Wittmer liaison or any of the
following persons:
In Zurich:
In Geneva:
Andrea Mondini
Yves Jeanrenaud
Partner
[email protected]
Partner
[email protected]
Philipp Groz
Jean Jacques Ah Choon
Attorney at Law
[email protected]
Partner
[email protected]
Schellenberg Wittmer
Attorneys at Law
Zurich
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