Facts

On 6 October 1976, De Beers Industrial Diamond Division (Proprietary) Ltd. brought an action for nullity of Swiss patents No. 453315, 506438, 517561 and 554209 against General Electric Company, a company established in the United States of America, before the Commercial Court of the Canton of Zurich. The plaintiff also requested the execution of the conciliation procedure before the conciliation office of the city of Zurich.

The plaintiff considered that the venue of Zurich was given, because on 6 October 1976, for all four patents, [A.], a patent attorney with his seat in Zurich, was registered in the patent register as the representative of the owner. On 20 October 1976, [A.] informed the plaintiff that he had decided to renounce the representation of the four patents. On the same day, he also informed the Federal Office of Intellectual Property and requested to be deleted from the register.

On 28 October 1976, the plaintiff filed a request with the Commercial Court. The Federal Office of Intellectual Property recorded A.'s renunciation on 4 November 1976.

The new representative of the defendant's patents, with his seat in Berne, contested the jurisdiction of the Commercial Court of Zurich on 8 December 1976. The Commercial Court rejected this exception by a preliminary decision of 8 February 1977, considering that it was competent under Article 75 paragraph 1 letter b of the Patents Act, since [A.] was still registered in the patent register as the representative of the defendant on 28 October 1976, the date on which the action became pending.

Considerations

The Federal Court considered that Article 75 paragraph 1 letter b of the Patents Act provides that the venue of the place of activity of the representative is determined exclusively by the registration, and not by the reality of the quality of representative of the person registered. This provision aims to avoid a temporary gap in which the patent owner could not be sued in Switzerland.

The Federal Court also considered that the history of the creation of this provision clearly shows that the legislator wanted the venue of the place of activity of the representative to be determined by the registration, and not by the reality of the quality of representative.…