This country-specific Q&A provides an overview to intellectual property law in Switzerland.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
An invention can be protected by patent if it is new, inventive and applicable in industry.
Supplementary protection certificates can be granted in relation to active ingredients or combination of active ingredients of medicinal products, provided that the product as such is protected by a patent and an official authorisation has been granted for placing the product on the Swiss market as medicinal product.
Inventions may also qualify as trade or business secrets. Even though trade or business secrets are not considered as intellectual property rights, there are protected to some extent under the Swiss Criminal Code, the Unfair Competition Act and the Swiss Code of Obligations.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
Brands are primarily protected by trademarks, which are governed by the Trade Mark Protection Act ("TmPA"). Guarantee marks are also available to provide a guarantee that goods and service possess specific characteristics. Associations (not individuals) can file collective marks to protect a brand representing the goods or services of an association of manufacturing, trading or service companies.
Geographical indications ("PGI") and designations of origin ("PAO") are also protected under Swiss law.
Under certain conditions, brands can also be protected by the Unfair Competition Act, which provides rights to prevent passing-off and unfair competition.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
A literary or artistic intellectual creation with an individual character, which somehow requires a certain degree of originality, can be protected by copyright (Art. 2 of the Federal Act on Copyright and Related Rights, "CopA"). The CopA also protects related rights, i.e. rights of performers, phonogram and audio-visual fixation producers and broadcasting organisations.
A design, whether two - or three-dimensional, can be protected if it is new and has individual character, i.e. if its overall impression differs sufficiently from existing designs.
Three-dimensional structures in the field of semiconductors can be protected as topographies under the Topographies Act.
Plant varieties and their designations are protected by the Federal Law on the Protection of New Plant Varieties.
Other creations, technology and proprietary interests may also qualify as trade or business secrets, which are protected to some extent under the Swiss Criminal Code, the Unfair Competition Act and the Swiss Code of Obligations.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents are protected for a maximum of 20 years from the filing date of the patent application. The term of protection of a supplementary protection certificate begins as soon as the maximum term of protection (20 years) for the patent protection for the active ingredient expires, and lasts for up to 5 years.
Trademarks are protected 10 years from their filing date. Protection can then be renewed indefinitely for 10 years at a time, upon request to the Federal Institute of Intellectual Property ("IPI") and payment of the renewal fee.
Designs are protected 5 years from their filing date and the protection may be extended for 4 periods of 5 years each, upon request to the IPI and payment of the renewal fee.
The duration of copyright protection varies depending on the type of work. For computer programs, protection expires 50 years after the author's death, whereas for all other works, protection expires 70 years after the author's death. In case of joint ownership where the individual contributions may not be separated, the relevant time is the death of the last surviving joint author. If the author is unknown, protection expires 70 years after the publication of the work or, if it has been published in instalments, 70 years after the final instalment.
The term of protection for a registered topography is 10 years from the date the registration request has been recognised as valid or the date the topography has been put on the market.
Protection of plant varieties expires at the end of the 25th calendar year following the granting of the title, and at the end of the 13th calendar year for varieties of vines and trees.
Inventions and creations that qualify as business secrets are protected as long as they remain secret and have a commercial value.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
As a general rule, the first owner is the person who created or invented, subject to registration for all intellectual property rights, except copyright.
According to the Swiss Code of Obligations, inventions and designs produced by the employee in the course of his/her work for the employer and in performance of his/her contractual obligations belong to the employer. The parties can however provide otherwise in writing. The employer has also a legal right to reserve in writing its rights to acquire inventions and designs produced by the employee in the course of his/her work for the employer but not in relation to the performance of his/her contractual obligations. In such case, the employer must pay the employee an appropriate remuneration.
For copyrights, there is no "work for hire" concept. Copyright vests with the employee who has created the work. For computer programs created by an employee under an employment contract as part of his/her duties or contractual obligations, even though the ownership vests with the employee, the employer alone is entitled to exercise the exclusive rights of use (Art. 17 CopA).
Which of the intellectual property rights described above are registered rights?
Patents, supplementary protection certificates, designs, trademarks, topography rights, POA/PGI.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Except in cases described below, any natural or legal person can apply for registration of these intellectual rights: first owner, successor in title or an third person whose right is based on other legal grounds, e.g. assignment of rights.
For registering a patent, the applicant must file a patent application including a patent claim defining the invention, technical drawings, an abstract and the technical documents. The IPI first examines whether the formal requirements have been met. In case there are any deficiencies, the applicant will be granted a deadline to correct them in order for the procedure to continue. Otherwise, the application will be rejected. The patent application is published 18 months after the application or where appropriate after the priority date. Around three years after the application (or earlier in case of an accelerated examination procedure), the IPI will conduct a substantive examination, during which patent experts examine the technical content of the application and notify the owner of any potential deficiencies. If there are no deficiencies or if they have been rectified within a given deadline, the patent will be granted.
For trademarks and designs, the applicant must file an application containing basic information such as the reproduction of the sign, the designated goods and/or services, the name of the owner, etc. Upon payment by the applicant of the registration fee, the IPI examines the formal requirements and - for trademarks - the potential absolute grounds for refusal. If the IPI considers that the requirements are fulfilled, the trademark/design is registered. If there are deficiencies in the application, it will grant the applicant a deadline to correct them. If the applicant does not correct them, the IPI will reject the application.
Collective marks can only be registered by an association of manufacturing, trading or service undertakings, to the exclusion of natural persons.
PGI/POA can only be registered by a representative group of producers. The application is filed with the IPI for non-agricultural products, and with the Federal Office for Agriculture for agricultural products, and must include amongst others a product specification defining the product and its method of production.
Supplementary protection certificates can only be filed for a patented and authorised product. The application must be filed within 6 months of either the first authorisation to place the product on the market in Switzerland as a medicinal product, or of the grant of the patent if this was granted later than the first authorisation.
The registration of topographies only require the applicant to submit an application form containing the necessary details along with documentation identifying the topography, and pay the registration fee. The examination itself is a mere formality.
How long does the registration procedure usually take?
The duration of the registration procedure varies on a case by case basis.
The registration procedure of a patent can take several years. The applicant can submit a request for an accelerated procedure, in which case the substantive examination will begin immediately upon receipt of the application (instead of about 3 years after filing).
In trademark matters, the time required to register an application is usually between 3 and 4 months from the time of payment of the fee. Against payment of an additional fee of CHF 400, the applicant can request a fast-track examination, where the IPI will examine the application within a maximum of 10 working days following filing and register the trademark after the payment of the filing fee.
A design registration can be completed in a matter of days, as the IPI only reviews the formal requirements, without conducting a material review of the design.
The PGI/POA registration generally takes approximately 2 years. The procedure involves amongst others an investigation of the representativeness of the group applying for registration and the product specification. Moreover, the Federal Office for Agriculture shall obtain the opinion of the Commission for Designations of Origin and Geographical Indications, and shall also call upon the relevant cantonal and federal authorities for their opinions.
Do third parties have the right to take part in or comment on the registration process?
Third parties do not have the right to take part in or comment on the registration process. However, they can assert their rights once the registration has been published.
What (if any) steps can the applicant take if registration is refused?
A decision refusing the registration can be appealed within 30 days to the Federal Administrative Tribunal. The decision of the Federal Administrative Tribunal can then be appealed to the Federal Tribunal.
What are the current application and renewal fees for each of these intellectual property rights?
The fee for protecting a patent is of CHF 200 for the application, CHF 500 for the optional search and CHF 500 for the examination. A renewal fee of CHF 100 is requested for the 4th year, after which the fee increases annually by CHF 50 (CHF 150 for the 5th year, etc.). The fee for obtaining a supplementary registration certificate is CHF 2,500, with an annual maintenance fee of CHF 950 for the first year, increasing annually by CHF 50 for the next years.
The basic fee for protecting a trademark in 1 up to 3 classes of products or services for 10 years is CHF 550. A fee of CHF 100 is requested for each additional class of products or services. For fast-track proceedings, an additional fee of CHF 400 is requested. The renewal fee for 10 additional years is CHF 700, irrespective of the number of classes.
The basic fee for protecting a design for 5 years is CHF 200. An additional fee of CHF 100 is added up for each additional design submitted within the same application, up to a maximum CHF 700. The basic fee includes the publication of one illustration, each additional illustration costing CHF 20. The renewal fee for 5 additional years of protection is CHF 200.
The filing fee of a PGI/POA for non-agricultural products is of CHF 4,000. There is no filing fee for PGI/POA related to agricultural products.
The fee for protecting a topography is CHF 450.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
As a general rule, the IPI will grant the owner of the IP right an additional deadline to pay the renewal fee, plus a penalty of CHF 50. If the payment is not done within this additional deadline, the IP title will not be renewed. For the renewal of patents, the rights can be re-established if the patent applicant provides prima facie evidence that he/she/it has been prevented, through no fault on his/her/its part, from observing the time-limit.
What are the requirements to assign ownership of each of the intellectual property rights described above?
Patents, trademarks and designs can only be assigned in writing. The assignment of a guarantee or collective mark must be registered in order to be valid.
There is no formal requirement for the assignment of copyright ownership, which may even be concluded orally. There are however exceptions, for example where the assignment arises in the framework of the splitting of a company or a transfer of assets within the meaning of the Swiss Merger Act. In such cases, the agreement must be made in writing and approved by the shareholders meeting. Moreover, in case of joint ownership, the joint owner must obtain the agreement of the other owner(s). Moral rights are in general not assignable. However, the author can waive or allow a third party to exercise certain moral rights, which has the consequences of limiting the scope of these works. In any case, for evidence purposes and to avoid possible interpretation disputes, it is advisable to enter into a written agreement.
As they are tied to a specific product and not to a specific owner, PGI/POA cannot be assigned as such.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Only for guarantee or collective marks. Failing to be registered, the assignment of a guarantee or collective marks will not be valid. Otherwise, there is no requirement to register the assignment. However, if the assignment is not registered, it will not be enforceable against a third party having acquired rights to the intellectual property in good faith (without knowledge of the assignment).
What are the requirements to licence a third party to use each of the intellectual property rights described above?
There is no formal requirement for the licence, which may even be concluded orally. However, a written agreement is advisable for evidence purposes and to avoid possible interpretation disputes.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Only for collective marks. Failing to be registered, the licence on a collective mark will not be valid. Otherwise, there is no requirement to register the license. However, a non-registered license will not be opposable to third parties that are of good faith.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Unless this is expressly excluded in the license agreement, the exclusive licensee is entitled to bring a claim for infringement against third parties, without the consent of the licensor. On the contrary, non-exclusive licensees do not have the capacity to initiate such proceedings. Any licensee may join an infringement action in order to claim its own damages.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Patent, copyright, trademark, design, topography rights and plant variety rights infringement is considered a criminal offence. Criminal liability requires the infringer to have acted wilfully. The sanction is a custodial sentence of up to 1 year and/or a fine. If the offender acts for commercial gain, the sanction is a custodial sentence of up to 5 years or and/or a fine.
Criminal proceedings can be brought by filing a complaint before the competent cantonal criminal prosecutions authorities, either orally or in writing. If the offender acts for commercial gain, he/she shall be prosecuted ex officio.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
IP rights holders can enforce their rights through civil or administrative actions, or with the assistance of custom authorities.
Since 1st January 2017, the cancellation of a trademark on the grounds of non-use can be requested through administrative proceedings before the IPI.
Interim injunctions are available and can be filed prior or simultaneously with a claim on the merits. In case of special urgency, the Court may order interim measures immediately without hearing the opposing party.
What is the length and cost of such procedures?
The length depends on many factors including the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court. It usually takes between 1 and 3 years to obtain a judgement in cantonal proceedings (one instance). As there are no hearings, appeal proceedings before the Federal Supreme Court take in general 6 months to 1 year.
The costs of infringement proceedings (including Court fees and attorneys' fees) in cantonal proceedings (one instance) vary significantly but can be roughly estimated between CHF 30,000 and CHF 100,000. The amount also depends on the above-mentioned factors. The Court will usually request the claimant to pay an advance of costs. The amount of Court fees depends on the value in dispute. The losing party bears the Court fees and usually has to pay a financial indemnity covering part of the successful party's attorney's fees.
The costs of appeal proceedings before the Federal Supreme Court are usually lower that in cantonal proceedings.
The filing costs for a cancellation request on the grounds of non-use are CHF 800. Attorney's fees depend on the complexity of the case. In a relatively straightforward matter, they can be estimated between CHF 2,000 and CHF 3,000. These proceedings are fast but can easily be extended to 1 year or more if the parties request extensions of deadlines (each party can ask for up to 2 extensions of 2 months without the obligation to motivate such request).
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
In IP matters, each of the 26 cantons have designated a Court which handles intellectual property disputes as a sole instance, with the exception of patent disputes which are handled by the Federal Patent Court.
Proceedings are initiated by filing a written submission with the competent Court. The Court will then set a deadline to the claimant to pay an advance of fees. Upon payment of these fees, the claim will be served upon the defendant with a deadline - from 30 days to 3 months - to respond. In complex matters, the Court may order and the claimant can request a second exchange of briefs. Each party has an unconditional right to take position on the other party's arguments. The Court will then set a hearing. In complex cases, the scope of the first hearing (so-called "instruction hearing") is to prepare the main hearing (discuss the matter in dispute in an informal manner, give details regarding the witnesses, etc.). In more simple cases, this instruction hearing will be immediately followed (within the same session) by the main hearing, where the taking of evidence will take place. The time to judgement depends on various factors, such as the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court.
The decisions of the Cantonal Courts or the Federal Patent Court can be appealed to the Federal Supreme Court.
What customs procedures are available to stop the import and/or export of infringing goods?
In case of suspicion of infringing imported/exported goods, the Customs Administration can temporarily withhold the goods on its own initiative and inform the rights' owner.
The rights' owner can also request the Customs Administration to seize allegedly infringing goods. The applicant must provide all information necessary to the Customs Administration's decision. If the Customs Administration has reasonable grounds to suspect that the goods are counterfeits, it will seize them and inform the rights' owner and the infringing goods' owner. The Customs Administration can withhold the goods for a maximum of 10 working days, within which the rights' owner will have to obtain a preliminary injunction from the competent judge. Within the same deadline, the infringing goods' owner must oppose destruction of the goods if such destruction was requested by the rights' owner.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
They are only mandatory if the dispute is based on a contractual matter where the contract provides for mandatory non-enforcement options and/or dispute resolution mechanisms.
What options are available to settle intellectual property disputes?
In-court conciliation and/or mediation can be requested by the parties or recommended by the judge at any time during the civil proceedings. Out-of-court settlements are also available.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
To establish a patent infringement, the claimant has to evidence a construction of the patent claim and then compare the established claim with the product allegedly infringing the patent.
Infringement of trademark can be established by showing that the disputed sign is (i) identical to the earlier trademark and intended for the same goods or services, or (ii) identical to the earlier trademark and intended for similar goods or services such that a likelihood of confusion results, or (iii) similar to the earlier trademark and intended for the same or similar goods or services such that a likelihood of confusion results.
To establish design infringement, the design right owner must show that the disputed design has the same essential features and thus produces the same overall impression as the registered design.
Copyright infringement requires the owner to show that the infringer has used its work without authorisation. This implies to assess which elements are common to both works, and whether such elements fulfil (alone or in combination) the requirements for copyright protection.
Owners of PGI/POA must show that the PGI/POA is used without meeting the requirements set out in the product specification.
Establishing topography infringement requires the right owners to show that there is an unauthorised reproduction of the topography.
Plant variety right owners must show that unauthorised production or reproduction of the propagating material of the protected variety or conditioning for the purpose of propagation is taking place, or that unauthorised materials of the protected variety are sold and marketed.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
As a general rule, there are no technical judges and it is up to the parties to evidence any factual or technical information by filing physical records and written statements, requesting testimony, inspection, file expert opinions and request expert to be appointed by Court. If a witness has special expertise, the Court may ask him/her/it questions about his/her/its assessment of the facts of the case. The Court may also request ex officio the opinion from one or more experts.
The Federal Patent Court is composed of judges with legal training and judges with technical training. In general, the Court makes its decisions as a three-member body, of whom at least one member must possess technical training.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
There is no pre-trial discovery under Swiss proceedings rules. Precautionary taking of evidence is only ordered by the Court in limited cases. The Parties have the obligation to cooperate in the taking of evidence, for instance to produce the physical records requested by the opposing party if ordered by the Court.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
The Court can freely assess the evidence taken. The parties have to evidence each of their allegations by offering evidence, such as physical records, testimony or questioning of the parties, for each allegation. In general, the witnesses and parties will be questioned by the Court or the party who has requested their testimony/questioning and only in relation to the specific allegations where their testimony/questioning was requested, but some Cantonal Courts tend to be more flexible than others.
What defences to infringement are available?
Available defences include without being limited to non-infringement (e.g. no likelihood of confusion in trademark matters), prior use( to the registration), non-use, invalidity of the IP right, exhaustion of the IP right, forfeiture of rights, , compulsory licence, special privileges, private use.
Who can challenge each of the intellectual property rights described above?
As a general rule, any person who can demonstrate a legal interest. Oppositions to trademark registrations may be filed by the owner of an earlier trademark or the owner of a well-known trademark.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
IP rights may not be challenged during the registration process.
An opposition to a trademark or PGI/POA registration must be submitted within 3 months from the registration's publication. An opposition against a patent must be filed within 9 months from the date the patent was granted.
A claim on the merits can be filed at any time, subject to the rights not being forfeited. There is no fixed time period for the forfeiture of rights, which may however occur if the plaintiff has tolerated the infringement for an extensive period of time (several years).
Whereas there is no time limit for filing interim measures, such request is subject to the condition of urgency, which requires the applicant to act promptly upon discovery of the infringement.
Damages claims related to IP infringement become time-barred 1 year from the date on which the claimant became aware of the damage and of the identity of the infringer, but in any event 10 years after the date on which the damage occurred.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The forum for challenging the registration of patents, trademarks, plant variety rights and non-agricultural PGI/POA, as well as for requesting the cancellation of a trademark for non-use, is the seat of the IPI in Bern. The forum for challenging the registration of agricultural PGI/POA is also Bern.
In civil proceedings, the forum depends on whether the case at hand is a national or international dispute. In Swiss infringement cases, the claimant can potentially file its claims in the following venues: its own domicile or registered office, the defendant's domicile or registered office, and the place where the infringing act occurred or had its effects.
The grounds for a finding of invalidity include prior rights, non-fulfilment of the legal registration requirements (e.g. for trademarks, relative or absolute grounds or refusal), non-use, expiry.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Declaratory reliefs are available. Moreover, compulsory licences on a patent may be granted in certain cases where the efforts by the applicant to obtain a contractual licence on appropriate market terms within a reasonable period of time have been unsuccessful. Such compulsory licences are in relation to the field of semiconductor technology, research tools, diagnostic tools and export of pharmaceutical protection.
Copyright law provides for a compulsory licence, against remuneration, for manufacturers of phonograms.
For plant varieties protection rights, a compulsory licence may be granted to a person whose licence request was rejected without sufficient ground, provided that there is a public interest.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
Available remedies include injunctions, declaratory judgements, assignment of the intellectual property rights, order to disclose the origin and quantity of infringing goods and name of the recipients, order to disclose the extent of any distribution to commercial and industrial customers, damages, publication of the judgement and/or destruction of the infringing goods and their removal from the market.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The costs of enforcement proceedings depend on many factors including the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court, the forum of the proceedings and the behaviour of the parties. Each cantons set the tariffs for the procedural costs. The amount of Court fees depends mainly on the value in dispute and is adapted based on the above-mentioned factors.
The Court will request the claimant to make an advance payment up to the amount of the expected Court costs. The Court decides on the procedural costs in its final decision. The decision on the procedural costs for interim measures may be deferred until the final decision on the merits.
In general, the losing party bears the Court fees and usually has to pay a financial indemnity covering part of the successful party's attorney's fees.
At the request of the defendant and under certain conditions, the claimant must provide security for party costs, for example if he/she/it has no residence or registered office in Switzerland or if there is an important risk that the fees will not be paid at the end of the proceedings.