Facts
B. Inc. (plaintiff, respondent) is the proprietor of European Patent x. Based on this, the supplementary protection certificate (SPC) y "Tenofovir Disoproxil Fumarate + Emtricitabine" was granted to it on August 29, 2008. A. AG, Basel (defendant, appellant) is a company that, among other things, distributes and manufactures medicinal products and chemical products.
The Federal Patent Court confirmed the validity of the SPC in a judgment dated October 3, 2017. An appeal in civil matters against this decision was dismissed by the Federal Supreme Court.
The plaintiff applied to the Federal Patent Court for an order prohibiting the defendant from manufacturing and distributing in Switzerland pharmaceutical products containing Tenofovir Disoproxil in the form of a phosphate salt and Emtricitabine during the term of protection of SPC y. The Federal Patent Court granted the claim.
Considerations
The Federal Supreme Court examined whether the scope of protection of the SPC covers the products manufactured by the defendant containing Tenofovir Disoproxil Phosphate. It concluded that the scope of protection of the SPC extends to all derivatives of the product, provided that they are covered by the scope of protection of the basic patent and have the same pharmacological effect as the form of the product listed in the marketing authorization.
The Federal Supreme Court justified this by stating that the introduction of the supplementary protection certificate was intended to compensate for the fact that the time-consuming official approval procedure for medicinal products delays market introduction and thus shortens the remaining term of patent protection. If a certificate were to protect only the specific salt of the active ingredient mentioned as an effective ingredient in the marketing authorization, any competitor would be free to have another salt of the…