Recent developments in European and national patent law and case law

Chair: Kai Härmand (EE)

NATIONAL JUDGES' PRESENTATIONS

CH Switzerland

Dieter BRÄNDLE

President, Swiss Federal Patent Court

Recent developments in European and national patent legislation and case law

I. Decisions from Switzerland

Dear colleagues and friends,

I will be reporting on three decisions from Switzerland, two taken by its Federal Patent Court and one by its Federal Supreme Court (BGE), the (only) court of appeal. All three decisions concern fundamental issues that are likely to be of interest in your countries.

II. Equivalence (S2013_001)

1. Switzerland in the past

The first case relates to the criteria for equivalence.

In the past in Switzerland, according to Supreme Court case law, equivalence existed if

• a process or product, although not embodying one or more features of the claim, replaced those features with others which, in the context of the problem underlying the patented solution, performed the same function as the claim features

(BGE 97 II 85, E. 2), [first question]

and

• these other features replacing the claim features were also made obvious to the average skilled person by the patented teaching

(BGE 97 II 85 E. 1; BGE 125 III 29 E. 3b; 115 II 490 E. 2a) [second question].

Thus two questions had to be answered: do the features have the same function/effect, and are they obvious?

2. Germany

In Germany, according to the case law of its Federal Court of Justice (BGH), three questions have to be answered:

(1) Does the contested embodiment solve the problem underlying the invention by means which, albeit modified, objectively have the same effect? (same effect, corresponds to the first question above)

(2) If yes: Does the skilled person's specialised knowledge enable him to identify the modified means as having the same effect? (accessibility to the skilled person, corresponds to the second question above)

(3) If yes: Is the effort that this requires of the skilled person based on the sense of the technical teaching protected by the claim in such a way that the skilled person would consider the variant embodiment with its modified means as a solution of equal value to the literal solution? (equal value)

(BGH Schneidmesser I and II of 12 March 2002, GRUR 2002, 515 and 519)

3. England and Wales

The questions asked in England and Wales are:

(1) Does the variant have a material effect upon the way the invention works?

If yes, the variant is outside the claim. If no –

(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art?

If no, the variant is outside the claim. If yes –

(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention?

If yes, the variant is outside the claim.

(Improver Corporation/Remington Consumer Products Ltd; R.P.C. 1990, 181; GRUR Int. 1993, 245)

4. Switzerland in future according to its Federal Patent Court

In a judgment of 21 March 2013 in preliminary proceedings the Federal Patent Court examined the above situation in Switzerland, Germany and England/Wales and then ruled as follows:

"In determining the extent to which patent protection goes beyond the actual wording (equivalence, imitation), due allowance must be made both for the contribution made by the invention and for the legal certainty of third parties. From studying the patent, third parties must, without undue effort, be able to establish what is and is not allowed, which can be particularly difficult in relation to equivalence. The first question (same effect) and the second (accessibility or obviousness to the skilled person) take this interest into account, but in the light of the primacy of the claims (see Art. 51 PatG) they focus too little on the effective claim wording. Hitherto, in assessing equivalence, Swiss case law has disregarded the third question (equal value), which centres on the effective wording of the claims. However, in view of the treaty objective of legal unity in interpreting the extent of protection of European patents (which are the subject of the present case), relevant judgments of foreign courts must be taken into consideration for purposes of interpretation, special significance attaching to supreme-court rulings (see BGE 121 III 336 E. 5c p. 338; BGE 117 II 480 E. 2b p. 486 f.; BGE 137 III 170E. 2.2). In that respect the question of equal value as discussed above should also be considered by Swiss courts in relation to both European and Swiss patents, as that third question ensures that equivalence is confined, as comprehensibly as possible for third parties, to variants that the skilled person would, on the basis of the claim wording, identify as being open to variation and of equal value." (S2013_001)

That means that in the court's view, to conclude that there is equivalence, the following questions must cumulatively be answered in the affirmative:

1. Do the replaced features have the same objective function? (same effect)

2. Are the replaced features and their same objective function made obvious to the skilled person by the teaching of the patent? (accessibility)

3. After reading the wording of the claim in the light of the description, would the skilled person have considered the replaced features as a solution of equal value? (equal value)

(You can find this and all other court judgments on our website.)

With this judgment the court, having taken foreign supreme-court decisions into account, has taken a further step along the road to harmonisation in Europe. Minor differences may remain. Germany's BGH, for example, on the third question refers to the "sense of the technical teaching protected by the claim", whereas we – more prosaically – talk of the "wording of the claim in the light of the description". But ultimately that is unlikely to make much difference in practice. And similarly the English formulation – that on the basis of the third question equivalence will be denied only if the skilled person understands that the claimed means is an essential requirement of the invention – is likely to produce similar results.

This Patent Court judgment has been challenged – unsuccessfully – before the Supreme Court. Somewhat unfortunately, our equivalence question was not discussed, so the Supreme Court's assessment of that aspect remains to be seen.

III. Duration of patent protection

1. Facts

Shortly before expiry of a supplementary protection certificate, a generics manufacturer offers its generic drug – covered by the certificate – for doctors to order, promising delivery after the certificate has expired.

Question: Does an invitation to order a drug during the term of a supplementary protection certificate for delivery after the certificate's expiry constitute infringement?

2. Ruling

In keeping with the BGH's Simvastatin decision (X ZR 76/05 of 5 December 2006, "Simvastatin", E. 10), the Federal Patent Court has reached the following conclusion:

"The object and purpose of prohibiting the offering of protected products imply that the title holder is, for the duration of the term of protection, unrestrictedly to enjoy the protection granted for products in respect of all infringing actions and hence also in respect of offering such products. Consequently, any third party is totally prohibited from offering the protected product for as long as the protection is in force." (S2014_003)

This is the only way to guarantee protection throughout the term of protection. If it were allowable to offer generics earlier (and of course at lower prices), there would be a risk of orders from the certificate holder being deferred to the benefit of the generics manufacturer.

IV. Partiality of part-time judges

1. Facts

Nestlé v Denner (a large food retailer) is a patent infringement case pending before the Federal Patent Court, concerning the marketing of coffee capsules. The panel includes Judge R., a part-time judge who primarily works for a patent law firm. In clarifying a potential conflict of interest in another case he discovers that a colleague at the same firm is representing Migros France in a trade mark case. He knows that Migros France is part of the Migros Cooperative (Switzerland's largest retailer) and that Denner too is part of the same group. Judge R. informs the court of his colleague's brief. The President in turn informs the parties, saying that he sees no grounds for exclusion. The claimant disagrees and files a petition for exclusion, which the court rejects. The claimant appeals to the Supreme Court.

Very interesting, you may be thinking, but it doesn't affect me because we don't have part-time judges, and certainly not ones who primarily work as patent attorneys. If so, I have to say "not yet – but soon"; but I'll come back to that later.

2. Ruling

The Supreme Court bases its ruling (BGE 139 III 433) on its practice regarding the applicable constitutional provisions and on the practice of the European Court of Human Rights regarding Article 6(1) ECHR, which is significant because it is to be observed in all Council of Europe countries and hence also by the Unified Patent Court.

From the outset the court essentially finds that while part-time judges are more likely to have professional links with one of the parties than full-time judges, that does not justify relaxing the impartiality requirements; on the contrary, considerable vigilance must be exercised.

On the problems with major groups, i.e. where a part-time judge, while not working directly for a party, does work for a person with close links to that party, typically a company in the same group, the court says there is no general rule, but that it is necessary to assess in the light of the specific circumstances whether the open lawyer-client relationship between the part-time judge or his law firm and a group company is accompanied by a comparable closeness to the party linked to the latter.

In the present case the court has ruled that the interest of the Migros Cooperative in all trade marks – including those of its subsidiaries – and in the related proceedings is self-evident. Viewed objectively it must be assumed that Judge R.'s law firm too considers itself bound by these interests and that in assessing the petition for exclusion it is not relevant that the open brief for the registration of a Swiss trade mark was issued by a subsidiary of the Migros Cooperative or by the Cooperative itself. At the same time the Migros Cooperative has a significant interest in the proceedings before the Patent Court.

The Supreme Court therefore concludes that, given the Migros Cooperative's close links and its significant interests both in the open client-lawyer relationship and in the outcome of the present patent infringement proceedings, assessment of the partiality issue must in the case in point be the same as if the Migros Cooperative itself were at the same time a party to proceedings before the Patent Court and a client of the patent law firm of the challenged judge. Therefore, viewed objectively, the open brief of his patent law firm is likely to give rise to the appearance of partiality for the part-time judge R.

That is all fairly easy to follow. What is the problem? We are dealing with major groups comprising hundreds of companies, some of which may be mega-corporations in their own right. So it is practically impossible for a part-time judge to establish whether he or a colleague in the same law firm has a brief from a company belonging to the same group as a party to the proceedings. And if a party notices in the course of the proceedings that this is the case, it can file a partiality petition against the judge. That is very unsatisfactory. Contrary to the Supreme Court's view, this problem cannot be solved by full disclosure of special links with a person with connections to a party to the proceedings (E 2.1.6). The judge discloses what he knows, but that's not the problem. The real problem is that he may not know that a client of his law firm belongs to a particular group.

Why should these partiality problems also be of interest to you?

At the Unified Patent Court there will be technically qualified judges working as part-time judges (Article 3(6) UPC Statute):

"(6) Part-time technically qualified judges shall be appointed as judges of the Court and shall be included in the Pool of Judges on the basis of their specific qualifications and experience. The appointment of these judges to the Court shall ensure that all fields of technology are covered."

They will be allowed to exercise other functions (e.g. as patent attorneys) provided there is no conflict of interest (Article 17(4) UPC Agreement).

In case of a conflict of interest, the judge will not take part in proceedings (Article 17(5) UPC Agreement). The provision governing conflicts of interest is in the Statute of the Unified Patent Court (Article 7(2)):

"Judges may not take part in the proceedings of a case in which they:

(a) have taken part as adviser;

(b) have been a party or have acted for one of the parties;

(c) have been called upon to pronounce as a member of a court, tribunal, board of appeal, arbitration or mediation panel, a commission of inquiry or in any other capacity;

(d) have a personal or financial interest in the case or in relation to one of the parties; or

(e) are related to one of the parties or the representatives of the parties by family ties."

I fail to see that this really covers the problems with major groups. So I look forward to interesting times – if the Unified Patent Court does in fact eventually materialise.