SWITZERLAND Law and Practice Contributed by: Lara Dorigo and Alexandra Bühlmann, Pestalozzi
In addition, when the patent has been filed by an applicant who was not entitled to that pat- ent, the entitled person may apply for assign- ment of the patent application or, if the patent has already been granted, of the patent itself (Article 29, PatA). Compulsory Licensing Under Swiss law, third parties with a legitimate interest may, under certain conditions, also initi- ate actions for the grant of compulsory licences (Articles 36 et seq, PatA), if: • a patented invention cannot be used without infringing a prior patent, provided that the invention represents an important technical advance of considerable economic signifi- cance in relation to the invention that is the subject matter of the prior patent; • a patent is not sufficiently exploited in Swit- zerland, and where such a failure to exploit cannot be justified; • the public interest so requires; • a licence to patents in the field of semicon- ductor technology is required to remedy a practice held to be anti-competitive; or • a licence to use a patented biotechnological invention is required for research purposes. Requests for the grant of compulsory licences are rare and to date no compulsory licence appears to have ever been granted by a court in Switzerland. 2.3 Courts With Jurisdiction The Swiss Federal Patent Court rules on civil actions concerning patents at first instance. Pursuant to Article 26 of the Patent Court Act (PCA), it has exclusive jurisdiction over civil pat- ent litigation concerning patent validity as well as patent infringement, compulsory licence actions, requests for preliminary measures and enforce-
ment of judgments made under its exclusive jurisdiction. The Federal Patent Court also has jurisdiction in other civil actions that have a connection to pat- ents, in particular those concerning contractual rights to patents (ownership and licensing) or their assignment. In such cases, the jurisdiction of the Federal Patent Court does not preclude the jurisdiction of the cantonal courts. An appeal against the decision of the Federal Patent Court or of a cantonal court can only be lodged with the Federal Supreme Court directly as second instance. The decision of the Federal Supreme Court is final. The Federal Supreme Court can, however, remand the case back to the Federal Patent Court for new consideration of certain aspects. In such event, the Federal Patent Court’s second decision can again be appealed to the Federal Supreme Court. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes The Federal Patent Court is a specialised court for patent matters. It comprises judges with legal training and judges with a technical qualification. Besides the Federal Patent Court and cantonal courts, arbitral tribunals may also be competent to resolve disputes related to patents. Accord- ing to Swiss case law, all aspects of intellec- tual property disputes are arbitrable, including contractual issues related to patents as well as disputes over the validity of patents. Although arbitral awards on the validity of patents are rec- ognised and enforced in Switzerland, arbitration proceedings related to mere validity disputes are rather rare, because of the multi-jurisdictional nature of most arbitral proceedings and hence possible enforcement issues with respect to cer- tain jurisdictions. However, contractual disputes
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