Patent law: groundbreaking decision of the Swiss Federal Supreme Court of 6 August 2019 - 4A_70/2019 ('flow sensor')
In this landmark decision, the Swiss Federal Supreme Court revalues a long-standing process for Swiss patent proceedings in front of the Federal Patent Court, thereby strengthening the principle of procedural equality of arms.

In its decision of 6 August 2019, the first civil law division of the Federal Patent Court, composed of a panel of five judges, decided in proceedings involving IPrime Legal that parties to patent proceedings, too, are limited to two non-restricted briefs, and that they are thereafter bound to the procedural restictions in accordance with established case law on art. 229 CPC. Likewise, amendments of patent claims are as a matter of law subject to the requirements to present new matter (nova).

The Swiss Federal Supreme Court overturned the lower instance decision of the Federal Patent Court, which had assumed that the claimant and patent owner was entitled to unrestrictedly voice its position on the validity of the patent both within the first, limited reply as well as within the second, complementary reply. The decision now rendered states that the claimant already had a chance to express its position on the merits without limitation for the first time when filing the statement of claim.

Together with the two additional opportunities to provide its comments on the occasion of the two partial replies, the claimant as a result submitted three unlimited statements on the validity of the patent, which is not in line with the case law of the Federal Supreme Court. Contrary to the lower instance court's position, the Federal Supreme Court held that the particularities of patent disputes cannot justify such a course of proceedings. It is in the nature of civil proceedings that, at the time of the filing of the statement of claim i.e. at the time of the claimant's first opportunity to unrestrictedly present new evidence and state ist position the claimant does not know with certainty what the defendant will bring forward in its defense. According to the Federal Supreme Court, a differentiation according to the predictability of the defense arguments and objections of the defendant would considerably jeopardise the legal certainty. In light of this background, a deviation to the general rule of two unrestricted opportunities to state its position for the area of patent law is not justifiable.

In this context, the Federal Supreme Court examines whether the thematic division of the reply, as it has been practiced up until the present day in ordinary proceedings before the Federal Patent Court, was in fact admissible. It then also calls into question the appropriateness of such approach, since the patent nullity can in any event not be clearly distinguished from the rest of the procedural questions.

According to the Federal Supreme Court, the so-called "verbal limitation" of the main claim of the claimant's patent after the closing of the file also constitutes an improper novum, which must comply with the requirements of admissibility as per art. 229 para.1 let. b CPC. The court emphasises in particular that it is indispensable for the prove that these requirements have been fulfilled by the claimant that rejoinder nova have a causal connection to the verbal limitation.

With a view to the fundamental importance of the ability to present new evidence in civil proceedings, the Federal Supreme Court highlights that it is unavoidable to have clear and unambiguous general rules, allowing parties to determine without any doubt until when they are free to submit their unrestricted comments on the merits. Consequently, the closing of the file cannot be left at the court's discretion (decision of the Federal Supreme Court 144 III 67 consid. 2.1 with further references). According to the Federal Supreme Court, the instruction hearing cannot represent a second opportunity for the parties to unrestrictedly bring new facts or evidence, resulting in the postponement of the closing of the file. Whether or not the thematic division of the reply is admissible seems at least questionable. Such a thematic division must in any event not lead to the claimant being allowed to unrestrictedly comment on its position twice. Therefore, the reformulation of patent claims in civil Proceedings are to be considered anologously to nova.

The successful appellant was in front of the Federal Supreme Court represented by IPrime Legal's attorneys-at-law Dr. Rudolf A. Rentsch and Ernst J. Brem. 

Link to the published judgement