01 Changed practice for granting of supplementary protection certificates (following Federal Supreme Court’s decision)
The IPI is retroactively changing its practice of granting supplementary protection certificates (SPC) from 11 June 2018. This is due to the change in practice made by the Federal Supreme Court in its decision BGE 4 A_576/2017 “Tenefovir” of 11 June 2018.
The Federal Supreme Court decided that the requirements for granting an SPC, whereby a product must be “protected by the basic patent”, must be interpreted in line with recent European case law (delivered by the European Court of Justice). Thus now, for an SPC to be granted, it is essential that the product is detailed in the patent claims in a form recognisable for a person skilled in the art. Under previous case law, however, it had to be determined that the product fell within the scope of protection of the basic patent (known as an infringement test).
The Federal Supreme Court justified its decision for the change of practice with the legislative aim of harmonising legal practice for SPCs between Switzerland and the EU. The court also referred to the consent of interested stakeholders to principles developed by the IPI regarding a change to the guidelines in the course of a consultation procedure.
Between 2014 and 2017, the IPI had already conducted a consultation procedure with patent attorney associations (VESPA, VSP and VIPS), AIPPI Switzerland as well as affected industry associations (Interpharma, scienceindustries, vips and Intergenerika) and an external expert about a change of practice in granting SPCs on the basis of the most recent European case law. The newly introduced guideline conforms – without any change – to the new jointly developed examination principles, as were communicated by the IPI on 22 March 2017 to all parties involved.
The change of practice will be implemented in chapter 13.2.1 of the Patent Examination Guidelines. It applies retroactively from the date of the Federal Supreme Court’s decision, i.e. from 11 June 2018. The newly introduced guideline will hence be applied to all applications for the grant of an SPC submitted since or still pending from this date.
The IPI has developed fictitious case studies in cooperation with the involved stakeholders to facilitate a better understanding of this new practice. You can find the case studies together with the amended guidelines for the SPCs on the IPI’s website under the heading Law and policy > National IP law > Change of practice.
Federal Institute of Intellectual Property
Deputy Director General