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Exhaustive List of Nullity Grounds for SPCs
There was even more action on the SPC front last month. On 12 June 2018, the Federal Patent Court (FPC) decided in case O2017/016 that article 140k of the Swiss Patent Act (PA) lists in an exhaustive manner all nullity grounds, which can be invoked against SPCs. The six months application deadline of article 140f PA is not listed in this catalogue and therefore an allegedly wrong reinstatement of such deadline cannot be invoked as nullity ground in civil proceedings. The FPC therewith confirmed its previous judgment in preliminary injunction proceedings (S2016_009).
The catalogue of article 140k PA basically corresponds to article 15 in connection with article 3 of the SPC Regulation (Regulation (EC) No 469/2009). The Swiss rules on SPCs were enacted in 1995 with the aim to largely harmonize Swiss law with EC law. Accordingly, article 140l para. 2 PA orders the Federal Council to take the EC regulations into account when enacting ordinances on the grant procedure, the registration in the patent registry and publications of the Federal Institute of Intellectual Property. However, according to the FPC, article 140l para. 2 PA does not address the civil courts and does therefore not oblige these to follow EC case law. Nonetheless, the FPC took EC case law into account when deciding this case. Defendant (who had invoked nullity of the SPC as a result of an allegedly wrong reinstatement) had argued with reference to judgments of the CJEU (Hässle/ratiopharm C127/00; Synthon C195/09), the High Court of England and Wales (Synthon  EWHC 656, Pat.) and the German Federal Patent Court (3 Ni 59/05, EU) that EC law does not restrict the catalogue of nullity grounds. The FPC however found that none of these judgments enlarged the catalogue of nullity grounds of article 15 in connection with article 3 SPC Regulation, but that additional provisions, such as the transitional provision of article 19 or article 2 had only been used to interpret the criteria of article 3.
As a consequence of this judgment, if a third party wants to invoke the argument that an SPC has been granted despite the application deadline of article 140f PA was missed and/or wrongly reinstated, it has to do so by filing an appeal with the Federal Administrative Court following grant of the SPC. In later civil proceedings, the validity of the SPC cannot be challenged on the basis of this argument. Please note that this judgement is not yet final; the Federal Supreme Court may have a last say on the relevant questions.