Saisie contrefaçon introduced into Patent Law

01 July 2010

With the entry into force of the Law on the Swiss Federal Patent Court (which may be expected to start operating in the first half of 2011) provisions will be introduced in the Swiss Patent Act that allow for a detailed description of patent infringing acts (saisie descriptive) as well as the seizure of goods (saisie réelle). The newly worded Article 77 of the Patent Act deals with this as follows:

A person requesting a preliminary injunction may in particular request that the court orders:

...

a detailed description:
1. of the allegedly unlawful use of methods,
2. of the allegedly unlawfully manufactured goods as well as the auxiliary means for such manufacture; or

a seizure of these objects.

The party requesting a description has to show credibly that a claim to which this party is entitled is infringed or that infringement has to be expected.

If the opposite party asserts that manufacturing or business secrets are involved, the necessary steps for its protection are ordered by the court. The court may exclude the requesting party from the description procedure.

The description with or without seizure will be conducted by a member of the Federal Patent Court, if necessary with the help of an expert in the field. If necessary the cantonal instances are involved.

The opposite party shall be given the opportunity to file a statement before the requesting party is informed about the result of the description.

It remains to be seen how the new Federal Patent Court will interpret this Article. If the threshold to make infringement credible is set high by the court, this new Article will have little impact on patent litigation. If on the other hand the threshold is set low (which seems reasonable in view of the protection mechanism provided for the opposite party) the saisie descriptive may become a helpful tool for patentees and in particular owners of method patents. With regard to 77c it is assumed that such a seizure covers the taking of a sample product from mass products; to what extent the court will allow a seizure in other circumstances is still an open question which will certainly be tested in the near future.