Patent Litigation In Switzerland — At The Brink Of A New Era

Author:Dr. Michael Ritscher
  1. Introduction

    Creativity is something everybody expects from a painter, a writer, or another professional in the liberal arts. It is not normally expected from a lawyer, and it takes some experience with the law to find and appreciate creativity in a lawyer. Everybody who has had the privilege of working with Guntram Rahn knows that his mind is not only sharp but also that it is as creative as that of the many inventors he has helped to protect the results of their creativity. And he became an inventor himself when he invented what became known as the "Swiss torpedo".

    Switzerland is not located adjacent the sea so the term "Swiss land mine" would have been more to the point – though politically not quite correct. Both the torpedo and the land mine aim to destroy – or render ineffective – a target: The "Swiss torpedo" sought to render ineffective the threat of an action for patent infringement before the Düsseldorf Court by the Swiss proprietor of a European patent. The "torpedo" was a petition for a declaration of non-infringement by the alleged infringer to the Cantonal Court of Grison, this being the proper venue because the patent proprietor was domiciled in the Canton of Grison in Switzerland.

    This strategy, developed by Guntram, was a complete success: the Düsseldorf Court did stay the infringement proceeding which had been initiated shortly after the Swiss proceedings had been initiated. The Swiss Federal Supreme Court confirmed the jurisdiction of the Cantonal Court of Grison1 and the parties settled the case even before the Swiss court started investigating the petition for non-infringement of the European patent.

  2. Deficiencies Of Previous Patent Litigation In Switzerland

    Guntram's creative strategy was successful not only because of Art. 2(1) of the Lugano Convention which stipulates jurisdiction is generally at the court at the domicile of the defendant; but also because, unlike the courts in Germany, Swiss courts tend to review patent validity prior to deciding the question of the alleged infringement. Of course, another reason for advocating this approach is the assumption that an action before a Swiss Court will take more time than an action before a German Court, a rule of thumb that has worked well with courts in Italy.

    At that time, patent litigation in Switzerland was not renowned for either its speed or its quality, but change is in the making. Previously, legal actions in patent matters in Switzerland could be taken to the cantonal courts of any of the 26 cantons (actually: States) which did, and for a short while still continue, to have legal autonomy in matters of procedural law. While patent law was and is uniform Federal law, its implementation was in the hands of the cantonal courts as the Courts of First Instance.

    About 20 patent cases per year are brought before the 26 cantonal courts. While the majority of patent cases is handled by one of the four Courts of Commerce (in the Cantons of Zurich, Berne, Aargau and St. Gall), with the Zurich Court handling approximately 10 of these cases per year, this still is anything but impressive considering, for example, that the two patent chambers of the Düsseldorf Court probably handle more than 10 cases per month. In other words, most of the Swiss Courts handling patent cases do not have sufficient experience. Aside from the differing procedural rules (which finally have been unified) only a few judges have a technological background or training so the courts have to appoint experts, even in preliminary injunction proceedings. In difficult cases this may take several months or even years, and it is quite problematic from a constitutional point of view in that patent disputes are decided, in essence, by an expert who – even though appointed by the Court – is not a judge himself.

  3. The Birth Of A Swiss Patent Court

    There is general and growing understanding within the IP community that IP proprietors not only need firm property rights but also a system which allows for swift enforcement and where court decisions can be expected within a reasonably short time, preferably within one year. It is recognized that predictability of the result of application of the legal provisions by the court is not only in the interest of the proprietors of IP property but also in the interest of their competitors, keeping in mind that whoever alleges his rights to be infringed is not immune from becoming accused of infringing the IP rights of others; and that thanks to globalisation and international forum shopping there is worldwide and increasing competition among IP Courts. This can be observed particularly well when looking at the patent courts in Germany, France, the UK and the Netherlands,2 and also at the national level as well, e.g. as in the case of the patent courts at Düsseldorf, Mannheim, Hamburg and Munich.

    Decades ago 'interested parties' within the Swiss industry as well as Swiss IP attorneys and IP associations, such as AIPPI and INGRES, proposed the establishment of a single court for all patent disputes in Switzerland. They held that it was in the interest of the Swiss economy – considered one of the leading technological innovators – that technological innovation should be protected by an efficient and reliable system of patent enforcement. An informal survey among cantonal courts indicated that all of the courts (except the Cantonal Court of Zurich) would have been happy to relinquish their jurisdiction over patent disputes (not, however, their jurisdiction in other types of IP disputes). The movement in favour of establishing a Federal Patent Court in Switzerland was further helped by the enactment of uniform Civil Procedure Rules for all civil courts in Switzerland (which...

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