Swiss Infringement Test for SPCs– like a Rock in troubled CJEU Waters…
In order to obtain a supplementary protection certificate (SPC) in Switzerland, the product has to be protected by a basic patent. According to the Federal Supreme Court’s Fosinopril decision (BGE 124 III 375), this criterion is to be determined by the well-established infringement test: the product for which supplementary protection is sought has to be covered by the basic patent.
In the recent Swiss Federal Patent Court (FPC) case O2017_001, the plaintiff argued that the application of the Swiss Patent Act with respect to SPCs should be adapted to the case law of the European Union, in particular to the Medeva decision of the Court of Justice of the European Union (CJEU) (C322/10). In this decision, the infringement test was rejected and it was stated that according to Regulation (EC) No. 469/2009 a product is only protected by a basic patent if it is “specified in the wording of the claims”. What was meant by “specified” remained unclear and national courts referred meanwhile nu-merous questions to the CJEU, which caused more confusion by trying to establish even more interpretations of a product being protected by a basic patent according to Article 3(a) of the SPC Regulation (See for example: a) Yeda C518/10; b) Actavis/Sanofi C-443/12; c) University of Queensland C-630/10; d) Daiichi Sankyo C-6/11; e) Eli Lilly C-493/12; f) Act-avis/Boehringer Ingelheim C-577/13).
In O2017_001 the FPC did not adopt the Defendant’s analogy of a “salad”, recognized however a certain “terminological confusion” in the CJEU decisions. The FPC saw no reason to abandon the infringement test and considered a harmonization with CJEU caselaw as premature. From a practitioner’s point of view harmonization between Switzerland and the EU – especially in SPC prosecution – is desirable in the long run for many reasons, however in the short term the FPC decision to maintain the well-established infringement test is highly welcomed for sake of legal certainty.