OUR SERVICES

The new Swiss Federal Patent Court (Bundespatentgericht)


With enactment of the Patent Court Act (Patentgerichtsgesetz; PatGG) of March 20, 2009 the new Swiss Federal Patent Court (BPGer) was established. The Court has become operational on January 1, 2012 as the civil court of first instance for patent matters. The Court has its seat in St.Gallen located in the Swiss canton bearing the same name. The Federal Patent Court is attached to the Federal Administrative Court (Bundesverwaltungsgericht) which is likewise going to be located in St.Gallen.

Apart from two full time judges the Federal Patent Court is served by ca. 25 technically qualified part time judges and 11 judicially qualified part time judges (specialized judges). By appointing technically qualified judges patent litigation of high quality is made possible. Furthermore, the Court has set itself the goal of conducting legal proceedings as expediently as possible.

The Federal Patent Court has territorial jurisdiction over the whole of Switzerland and is exclusively responsible for

-         revocation and infringement suits

-         law suits for obtaining patent licenses

The Federal Patent Court and the cantonal courts have concurrent jurisdiction over patent related complaints like

-         law suits for transfer of patent rights

-         law suits concerning contractual matters related to patents like
          licensing disputes, inventors compensation, transfer of rights etc.

Such complaints may be lodged with the Federal Patent Court or with the competent cantonal court.

In contrast to patent infringement proceedings in Germany the Swiss Federal Patent Court does not only decide on the infringement of a patent but also on its validity provided that the validity of the patent has been called into question by the defendant either by way of a counter claim action or as a defense.

Composition of the Court

Normally, the judiciary body of the Court is composed of three judges of whom at least one is technically qualified and not less than one is judicially qualified (Art. 8 and Art. 21 PatGG). However, by order of the President the judiciary body may include five or seven judges if it serves the development of the law or the uniformity of jurisprudence (Art. 21, para. 2 and 3 PatGG). It is to be expected that in the initial phase the tribunals will be composed of five judges in order to ensure the establishment of a coherent jurisprudence. The appointment of the members of the judiciary body is determined by the technical field relevant for the dispute.

Authority to represent

Registered Swiss patent attorneys may represent their clients in cancellation actions against Swiss national patents or the Swiss part of a European Patent alone (Art. 29, para. 1, PatGG). In all other judicial proceedings Swiss attorneys at law have exclusive representative authority. Swiss patent attorneys are however given the opportunity to comment on the technical merits in all hearings before the Federal Patent Court.

Language regime

The proceedings before the Federal Patent Court are conducted in one of the official languages namely German, Italian or French. The language of proceedings is determined after filing of the statement of grounds. Normally, the language of proceedings is the official language in which the lawsuit was filed. Parties to the proceedings may however – regardless of the language of proceedings – use any of the official languages during oral proceedings or in their statements submitted to the Court. If agreed upon in writing the parties may also use English in the proceedings before the Federal Patent Court. Nevertheless, judgment is rendered in the official language chosen as the language of proceedings; the same holds true for all measures of organization of procedure. Documentary evidence filed by a party which is neither in one of the official languages nor in English shall be taken into account only if a translation into an official language or English is provided.

Procedure

After the receipt of a complaint, the Federal Patent Court invites the plaintiff to pay an advance on costs while the complaint is forwarded to the attention of the respondent.

The time limit for payment of the advance shall be set at 2 weeks. Once payment has been received by the Court a time limit for filing a written statement of defense is fixed. As a rule, this time limit will be set at 6 weeks and may be extended once by 2 weeks.

If with the statement of defense the respondent files a counter claim action the plaintiff is given an opportunity to file within 6 weeks an answer to the counter claim and a replica (i.e. reply to the statement of defense). Normally, after filing of the statement of defense or – in case of a counter claim action – after the filing of the answer to the counter claim and the replica a hearing (in German: “Instruktionsverhandlung”) takes place.

In the summons to the hearing the Court may point out questions that in its opinion need to be discussed. The hearing is held by the president or a judge (Instruktionsrichter) appointed by him/her and a specialized judge.

The hearing can be divided in two parts, namely

a first part during which the delegation of the Court discusses the subject-matter of the dispute with the parties and asks questions in respect of issues raised by the parties which are still unclear, and

a second part during which the delegation of the Court attempts (off the transcript) to mediate a settlement between the parties. The Court and the parties are barred from later relying on what was submitted during this second part of the hearing. Its sole purpose is to achieve a settlement (Art.8 of the guidelines).

If during the hearing no settlement is achieved between the parties the proceedings are continued. The respondent is then given 4 weeks to file a rejoinder (i.e. reply to the replica) and a counter claim replica (i.e. reply to the plaintiff’s answer to the counter claim action). Subsequently, the plaintiff is invited to file within 4 weeks a counter claim rejoinder (i.e. reply to the counter claim replica).

After completion of the written part of the proceedings the specialized judge issues an opinion (th so-called “Fachrichtervotum”). The Court aims at issuing the opinion within ca. 4 weeks of completion of the written part of the proceedings. It is then forwarded to the parties to comment on. As a rule, the parties are given two weeks to reply.

The trial is therefore likely to take place within one year of the filing of the complaint. Decisions of the Federal Patent Court may be appealed to the Supreme Court (Bundesgericht).

Costs

The following table lists the anticipated indemnities for costs associated with procedure and legal representation for different amounts in dispute. Indemnities depend on the subject-matter of the dispute and are determined by the importance, the level of difficulty and the scope of the matter as well as by the attorney’s expenditure of time (Art. 4 KR-PatGer).

Amount in Dispute [CHF]

Court fee [CHF]

Indemnity for Legal Representation [CHF]

up to 50 000 

1000 – 12 000 

2 000 – 16 000 

50 000 – 100 000 

8000 – 16 000 

10 000 – 24 000 

100 000 – 200 000 

12 000 – 24 000 

16 000 – 32 000 

200 000 – 1 000 000 

20 000 – 66 000 

24 000 – 70 000 

1 000 000 – 3 000 000 

60 000 – 120 000 

40 000 – 110 000 

3 000 000 – 5 000 000 

80 000 – 150 000 

70 000 – 150 000 

more than 5 000 000 

100 000 – 150 000 

100 000 – 300 000 


For summary proceedings the indemnity for legal representation costs is normally cut to 30-50 percent (Art.6 KR-PatGer).

Where patent attorneys appear as party’s counsel (cancellation actions only), their compensation is calculated in accordance with the above table (Art.9, para.1 KR-PatGer).

Where patent attorneys act exclusively in an advisory capacity, their expenses shall be claimed as necessary expenses (Art. 9, Abs. 2 KR-PatGer)