Facts
A. GmbH (Defendant, Appellant) is a pharmaceutical company that manufactures a generic version of product Y. of C. SA (Plaintiff 2, Respondent 2). C. SA is the holder of supplementary protection certificate No. x, which is valid until February 9, 2019 and covers the active ingredient W. and was granted in Switzerland based on European patent No. y.
The Defendant argued that the supplementary protection certificate is null and void because the request for reinstatement filed by Plaintiff 1 on December 14, 2004 was wrongly granted by the Swiss Federal Institute of Intellectual Property (IGE).
The Federal Patent Court largely upheld the Plaintiffs' claim. It considered that the Defendant could have challenged the IGE's interim decision regarding the reinstatement within 30 days. Since it failed to do so, the granting became formally res judicata. As the list of grounds for nullity pursuant to Art. 140k PatA is exhaustive, even an unlawful reinstatement of the time limit for filing the request for a supplementary protection certificate cannot lead to the nullity of the certificate.
Considerations
The Federal Supreme Court confirms the view of the Federal Patent Court. The lists of grounds for nullity pursuant to Art. 26 and 140k PatA are exhaustive. Non-compliance with the filing deadline pursuant to Art. 140f PatA or an erroneous reinstatement pursuant to Art. 47 PatA cannot be subsumed under a ground for nullity pursuant to Art. 140k PatA.
The Federal Supreme Court justifies this by stating that the provisions on the nullity of European patents and supplementary protection certificates were adopted within the framework of the harmonization of Swiss patent law with the European Patent Convention (EPC). The aim was to create a…