jeudi, décembre 16, 2010

Switzerland: Swiss IP landscape to be revamped

Swiss IP landscape to be revamped

Contributed by Froriep Renggli


Until now, each of Switzerland's cantons has had its own laws of civil procedure. This fragmentation has added to the complication and costs of litigating in Switzerland. Now, after years of preparatory work, a new countrywide Code of Civil Procedure is about to enter into force. On January 1 2011 the new code will supersede the 26 cantonal codes of civil procedure. This represents the most important reform ever to affect this area of Swiss law. The code will apply to all civil proceedings, as well as to domestic arbitration, and will have a major impact on litigation and arbitration in the field of intellectual property. This update highlights selected changes that are particularly relevant for IP disputes.

Jurisdiction over IP disputes

The code states that for IP disputes - as well as antitrust, unfair competition and company name disputes - the cantons must designate one single cantonal instance as the venue; this court must also handle requests for preliminary measures in these areas of law (Article 5 of the new code). There is an exception to this rule for certain patent disputes, which will be heard by the new Federal Patent Court. This is an improvement since at present, depending on the nature of the dispute, different courts within a canton can have jurisdiction and it is not always the court that is competent to hear the main claim which is competent to decide on requests for pre-trial preliminary measures. In those cantons where specialised commercial courts exist (ie, Zurich, Bern, Aargau and St Gallen), it is expected that these courts will be designated as the single cantonal instance.

The Federal Patent Court

Even after the code's introduction, the organisation of the judicial system will remain within the power of the cantons. Thus, the new code will be applied mainly by the existing cantonal courts. However, in order to ensure a high-quality judicature for patent litigation, a Federal Patent Court is being introduced by another new act, the Federal Patent Court Act. The Federal Patent Court will act as the the sole instance in patent disputes before the dispute may be taken to the highest court in Switzerland, the Federal Supreme Court. The Federal Patent Court will be located in St Gallen. Originally, the court was expected to start work at the same time as the code entered into force (ie, on January 1 2011). However, at present it is expected that it will commence operations on January 1 2012 at the earliest. The Federal Patent Court will normally sit with three judges. At least one of the judges must have a technical background and at least one must have a legal education.

With regard to the jurisdiction of the Federal Patent Court, the act distinguishes between cases in which the Federal Patent Court has exclusive jurisdiction and cases in which the Federal Patent Court and the cantonal courts have concurrent jurisdiction, giving the claimant a choice of forum. In particular, for claims regarding the validity and/or infringement of a patent and claims for the grant of a patent licence (including interim measures in this regard before the matter is pending at the court), the Federal Patent Court will have exclusive jurisdiction.

For all other civil claims in connection with patents, (eg, claims regarding the transfer of a patent and/or all contractual claims related to patents, such as those regarding a patent licence agreement), the Federal Patent Court has jurisdiction, although concurrently with the cantonal courts. The cantonal court competent to hear such a matter will be the single cantonal instance for IP matters, as mentioned above. Some open questions with regard to this division of jurisdiction will remain to be decided by court practice. Nevertheless, the creation of the Federal Patent Court is a significant step that should ensure a coherent and high-quality judicial system, and increase Switzerland's attractiveness as a forum for international patent disputes.

Preliminary measures

Preliminary measures in IP matters are already governed by federal law. The provisions in the new code are in line with this existing legal tradition, while leaving the judge a fair amount of discretion. A summary procedure applies to preliminary measures and the request for preliminary measures may even be deposited orally. Evidence must be submitted in the form of documents. The term 'documents' also includes photos, movies, sound recordings and electronic files.

Evidence other than documents is permissible only if the proceeding will not be substantially delayed as a result or if such non-documentary evidence is required for procedural purposes. The limitation to documentary evidence does not exclude the submission of written statements by third parties; however, the evidentiary value of such statements will be freely assessed by the judge. The content of preliminary measures may be anything that is suitable to ward off the expected disadvantage.

The code further introduces the concept of the protective brief, which so far has been accepted only by certain cantonal courts. By means of a protective brief, a party that suspects that ex parte provisional measures might be ordered against it may submit its position on the matter to the court in advance of the anticipated filing of a request by the opposing party. The protective brief will be communicated to the opposing party only if that party does in fact initiate proceedings. However, the protective brief comes with an 'expiry date' of six months after filing, following which it must be disregarded by the court. It is expected that the protective brief will play a significant role in the area of intellectual property.

Taking of evidence

Under the code, the principle of free assessment of evidence by the judge continues to be the cardinal rule. Evidence is usually taken after the pleading stage. At the discretion of the court, the pleading stage consists of either a single or double exchange of written submissions, plus oral pleadings in court (although the parties may waive their right to plead orally); the proceeding may thus be ended in an expeditious manner or continue at length. At any rate, exhaustive evidence must be submitted as early as possible, as new evidence generally cannot be submitted once the main hearing has begun.

For further information on this topic please contact Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 1 383 6050) or email (