SWITZERLAND Trends and Developments Contributed by: Simon Holzer, Ulrike Ciesla, Louisa Galbraith and Michael Ritscher, MLL Legal
the invention since Mepha’s appeal was solely based on argumentation against the entitlement to priority. The Federal Supreme Court dismissed Mepha’s appeal, and the landmark decision of the Federal Patent Court has become final and binding. Confirmation of validity of the patent protecting sorafenib tosylate (O2022_006, judgment of 15 April 2024) In this case, Bayer asserted the infringement of claim 12 of the Swiss part of EP 2 305 255 B1 (EP255). Claim 12 is directed at an aryl urea compound, which is a tosylate salt of sorafenib. Sorafenib is a protein kinase inhibitor. Protein kinase inhibitors block certain enzymes known as protein kinases. These enzymes are located in certain receptors on the surface of cancer cells, where they are involved in the growth and spread of the cancer cells, as well as in the blood vessels that supply the tumors with blood. Sorafenib blocks these enzymes, including Raf kinase, thereby reducing the growth of cancer cells and cutting off their blood supply. Sorafenib tosylate is the active ingredient in Bayer’s prod- uct NEXAVAR®. The case of sorafenib tosylate also has an inter- national context. Again, there were mixed results in parallel proceedings before national courts, in particular in the assessment of inventive step. For example, the patent was revoked at first instance in Germany and then upheld by the German Federal Supreme Court with amended claims. The nullity proceedings in the UK led to the revocation of the patent. The defendant argued that EP 255 was invalid. Similar to the apixaban case discussed above, the main issues in this case were the validity of the priority claim and inventive step.
The plaintiff, the registered proprietor of EP 255, claimed priority from US 334609P. The defend- ant argued that the transfer of the priority right to Bayer Corporation was not proven, citing three points: • not all inventors/applicants of the US priority were shown to be employed by Bayer Corpo- ration; • employment contracts were not identical; and • contracts did not prove the transfer of the priority right. The plaintiff stated that all 18 inventors/appli- cants were Bayer Corporation employees at the time of the priority application, supported by a declaration and signed copies of the “Bayer Cor- poration Agreements” for eight inventors/appli- cants. The plaintiff also showed that the employ- ment contracts included clauses for an advance transfer of rights under US law and invoked the “hired-to-invent” doctrine. The Federal Patent Court found that the inven- tors/applicants of the US priority validly assigned the priority right to Bayer Corporation, despite the absence of signed letters of assignment for some inventors/applicants. Moreover, the Federal Patent Court pointed out that according to the standing case law of the Federal Patent Court, it is sufficient for a valid priority claim if at least one of the applicants of the previous application or their legal succes- sor and one of the applicants of the subsequent application are identical. In the present case, the subsequent applicant is in any case the legal successor of the eight applicants of the first application, for whom copies of signed decla- rations of assignment are available. Therefore, priority would be validly claimed under Swiss law even if the transfer of rights for the other appli-
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