SWITZERLAND Trends and Developments Contributed by: Simon Holzer, Ulrike Ciesla, Louisa Galbraith and Michael Ritscher, MLL Legal
invention, claiming priority based on the original provisional US patent application. The transfer of US 165 from the holder of the priority document to the applicant of EP 415 did not take place until several years after the filing of the EP 415 application. The Federal Patent Court confirmed an implied transfer of the right to claim the priority of the priority application on the basis of the evidence submitted by the parties. In particular, the Fed- eral Patent Court took into account the vital interest of BMS Pharma and the subsequent applicant BMS Company – which both belong to the same group of companies – that the sub- sequent application could claim the priority of the first application US 165, as well as the fact that BMS Pharma had provided BMS Company with the priority documents and the details of the priority declaration in the knowledge that BMS Company would need them to claim priority. The Federal Supreme Court meanwhile con- firmed the assessment of the Federal Patent Court. The Supreme Court explicitly left open the question of whether third parties who do not have allegedly better priority rights may even challenge that the patent proprietor is not val- idly entitled to claim priority, or whether this is reserved for parties who can claim better rights to the priority for themselves. In the consolidated cases G 1/22 and G 2/22, the Enlarged Board of Appeal of the EPO concluded that, in principle, anyone could challenge the entitlement to prior- ity before the EPO, but that this may be different in proceedings in the EPO member states. Regarding the technical effect of the invention, the Federal Patent Court interpreted the decision G 2/21 as follows. Two criteria must be fulfilled for a technical effect to be taken into account in
the assessment of inventive step. The technical effect must be: • encompassed by the technical teaching; and • embodied by the originally disclosed techni- cal teaching. The first criterion is met if the alleged technical effect, together with the claimed subject-matter, is conceptually covered by the broadest techni- cal teaching of the application as filed. There is no need for the technical effect to be be express- ly disclosed in the original application. It is suf- ficient if the skilled person recognises, based on common general knowledge and the original application, that the technical effect is necessar- ily relevant to the claimed subject-matter. The second criterion is fulfilled if the technical effect is derivable for the skilled person from the original application, taking into account the general technical knowledge at the filing date. Experimental data or an explicit statement on the technical effect in the original application are not necessary. Since the purpose of this crite- rion is to prevent abusive speculative applica- tions, the hurdle for the patentee must not be set too high according to the Swiss Federal Patent Court, as otherwise inventions worthy of reward would not receive protection. In the light of the above, post-published data supporting the technical effect were taken into consideration and the Federal Patent Court acknowledged the presence of an inventive step. Therefore, the validity of the Swiss SPC for apixaban was finally confirmed by the Federal Patent Court. The Federal Supreme Court did not have to deal with the alleged lack of the technical effect of
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