15. January 2014

BPatG: The examination of an equivalent infringement requires equivalence as a third criterion

Plaintiff A. Ltd. applied for precautionary measures against B. Ltd. including interdiction of the use of contraceptives containing determined agents (D1 to D4) in Switzerland. The plaintiff hereby based the claim on European patents in suit EP 791 and EP 840. It was claimed that the defendant obtained the agents from K, who produced these according to a first (conventional) and a second (modified) method. As suggested by the president of the Federal Patent Court the plaintiff added a contingent claim to the original claims in the replication, which contingent claim specified how the agent contained in the products was produced.

The Federal Patent Court indicated that product designation is basically insufficient for the requirements for definitiveness of patent related applications for injunction. An exception, however, is possible for pharmaceuticals subject to admission control. This, however, was not relevant in the present case as the patents in suit were method patents and it was not evident from the registration documents that the product had to be manufactured according to a particular method. The Federal Patent Court thus did not enter on the issues of the original claim but judged the contingent claim.

With respect to the first used method the plaintiff had only claimed an infringement of patent in suit EP 840, had, however, not succeeded in credibly showing that this method was still in use.

With respect to the second method an infringement in form of imitation was discussed. The Federal Patent Court made a statement, considering established case-law of the Federal Court (Bundesgericht) and foreign courts concerning the criteria for examination of an equivalent infringement in Switzerland. According to the Federal Court an equivalent infringement is on hand when a „method or a product, even if it does not realize one or several characteristics of the claim, replaces these characteristics with others, which in the context of the object on which the patented solution is based fulfils the same function as the characteristics according to the claims” (first question) and these replacing characteristics “are evident to one averagely schooled in the art” (second question).

The Federal Patent Court pointed out that in Swiss case-law – in contrast to foreign practice – there had so far been no criterion according to which the replacing characteristics had had to be rated as equivalent, in order to support an equivalent infringement. The Federal Patent Court recognized that due to the claim priority the first two questions did not refer to the effective wording of the claims to a high enough degree. Of late, for imitation Swiss and European patents are also to be examined in view of as to whether one schooled in the art with reference to the wording of the claims in view of the description would consider the replaced characteristics as equivalent solution. This third question guarantees legal certainty for third parties. In the present case imitation relating to patent 791 in suit failed due to the equivalency criterion. The oxidation according to the patent in suit with conventional oxidants and a ruthenium salt as a catalyst had been replaced in the second method by a calcium hypochlorite as conventional oxidant and an organic radical catalyst.
With respect to the patent in suit 840 the Federal Patent Court, on the other hand affirmed imitation for the use of a pyridine/water base instead of p-toluene sulphonic acid for separation of water from an enol. Thus with respect to the second method and patent in suit 840 the court pronounced the interdiction that had been applied for.

(Decision in legal matter S2013_001, 21 March 2013)