SWITZERLAND Law and Practice Contributed by: Lara Dorigo and Alexandra Bühlmann, Pestalozzi
for the assessment of an equivalent infringement based on three main steps. • Equal effect – the modified feature must objectively fulfil the same technical function as the corresponding feature of the patent claim. • Accessibility – the modified feature must be obvious to the skilled person in light of the teaching of the patent; the Federal Patent Court has clarified that the starting point for the assessment of accessibility is not the general prior art, but the patent at issue, as this step should not be confused with the assessment of the inventive step. • Equality – the skilled person must consider the modified feature as an equivalent solution taking into account the claim language and the description. If all three requirements are fulfilled, an equiva- lent patent infringement exists according to Swiss practice. 3.5 Defences Against Infringement Within Swiss patent infringement proceed- ings, the defendant may attack the validity of the claimant’s patent or raise non-infringement arguments. Validity Defences The defendant may plead the invalidity of the patent as a defence in the form of an objection or as a formal counterclaim. If the defendant raises the invalidity as an objection and the court deter- mines that the patent is in fact invalid, that deci- sion has only a direct effect between the parties – ie, the infringement action is rejected but the patent is not revoked from the patent register. If the defendant decides to file a counterclaim, this has the same effect as a standalone inva- lidity action – ie, if the invalidity of the patent is
confirmed by the court, the infringement action is rejected and the patent is also declared invalid
and formally revoked. Lawful Use Defences
Alternatively, or additionally, defendants may also claim to have lawfully used the allegedly infringed patent. Defendants may argue the fol- lowing. • That they have been granted a valid licence right. • That they can rely on a statutory exception as per Article 9 of the PatA, including the excep- tions of: (a) private use for non-commercial purpose; (b) use for research or experimental purpos- es (in order to obtain knowledge about the subject-matter of the invention); (c) use for teaching purposes; (d) use for obtaining marketing authorisa- tion for a medicinal product (Bolar-type exemption); (e) use by a medicinal professional for an individual person (medical prescription exemption); or (f) use for a direct individual preparation of a medicinal product in a pharmacy (phar- macists’ exemption). • That the patent owner’s rights were exhaust- ed (Article 9a paragraph 1, PatA); whereas in general EEA-wide exhaustion applies, but if the patent is of subordinate importance for the functional characteristics of the goods, global exhaustion applies, and if the price of the patented goods is fixed by the state (such as with medicinal products), national exhaus- tion applies. • That they have a prior use right (ie, have commercially used the invention in good faith in Switzerland or have made special prepa- rations for that purpose prior to the filing or
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