New Developments In Swiss Patent Law

Author:Mr Andrea Mondini and Philipp Groz
Profession:Schellenberg Wittmer

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 New Exhaustion Regime in Patent Law 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. The holder of the intellectual property right can no longer forbid a resale of such product. The intellectual property rights regarding the product sold (and only regarding this product) are exhausted after the first sale.

1.2 National, Regional or International Exhaustion 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 term regional exhaustion means that exhaustion occurs only when the product is first sold in a particular region (such as the European Economic Area).

1.3 Present Exhaustion Regime in Swiss Intellectual Property Law Until now, the exhaustion regime in Swiss copyright, trademark, 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 design rights.

Under the concept of national exhaustion, patent rights could be asserted to prevent parallel imports to Switzerland of patent-protected products first sold abroad, provided that the patent owner did not engage in a restriction of trade amounting to a violation of competition law. Since the Kodak judgment, the national exhaustion of patent...

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