SWITZERLAND Trends and Developments Contributed by: Simon Holzer, Ulrike Ciesla, Louisa Galbraith and Michael Ritscher, MLL Legal
or more auxiliary requests is a legitimate means against a nullity plea. The principles of procedur- al fairness and the right to be heard require that parties in civil proceedings may submit argu- ments and requests (including auxiliary requests) and that the courts duly consider, examine and take them into account in their decision. How- ever, according to the Federal Patent Court, it is neither unfair nor contrary to the right to be heard to require a plaintiff in PI proceedings to indicate in which (single) version it intends to assert the patent in suit. The plaintiff also argued that if the proceedings had to be procedurally limited, the defendant should be ordered to present only those valid- ity and prior art arguments that had not already been considered in opposition and appeal pro- ceedings before the European Patent Office against the basic patent. However, according to the Federal Patent Court, this binding effect of decisions of the EPO Board of Appeal is unknown under Swiss law. The plaintiff’s proce- dural motions were therefore rejected. Patent owners should adapt to this new prac- tice of the Federal Patent Court and adjust their strategy before initiating PI proceedings accord- ingly. Unexpected final rejection of ex parte PI request due to protective letter (S2024_003, judgment of 10 July 2024) A case that has gained significant attention inter- nationally beyond the borders of Switzerland is the judgment of the Federal Patent Court in the case S2024_003 of 10 July 2024 concerning Bayer’s blockbuster product XARELTO® con- taining the active ingredient rivaroxaban. After the SPC for rivaroxaban having expired in Switzerland in June 2024, the first generic com-
panies entered the market with their generic products, despite Bayer’s Swiss part of EP 1 845 961 B1 (EP 961) titled “Therapy of throm- boembolic disorders with Rivaroxaban”, which is valid until 19 January 2026. EP 961 specifi- cally protects the once-daily administration of rivaroxaban for the treatment of thromboembolic diseases. The validity of EP 961 was confirmed in opposi- tion-appeal proceedings before the EPO by the Board of Appeal and is currently the subject of numerous infringement and nullity proceedings before national courts. The results in the nation- al proceedings are mixed and mostly not final. For example, EP 961 was considered invalid by courts in the UK, France, and South Africa, while its validity was confirmed in the Netherlands, Belgium, and according to the preliminary opin- ion of the German Federal Patent Court. Since the validity of EP 961 had been confirmed by the EPO Board of Appeal, Bayer filed an ex parte PI request before the Swiss Federal Pat- ent Court in June 2024 based on the Swiss part of the once-daily dosage patent EP 961. Previously, the defendant had filed a protective letter with the Swiss Federal Patent Court. As the judgment shows, the Federal Patent Court considered the protective letter and concluded, without the plaintiff being able to comment on the allegations made in the protective letter, that EP 961 was likely not valid due to alleged lack of inventive step. Bayer’s request for an ex parte PI was thus rejected. According to the previous practice of the Fed- eral Patent Court, a decision on an ex parte PI request was normally issued within 1–2 days. If an ex parte request was dismissed, inter partes PI proceedings usually followed, in which both
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