Tenofovir - the Swiss Bundespatentgericht goes for the infringement test

The SPC Blog is grateful to Siegfried Grimm at E. Blum & Co. for providing the following summary of a recent Tenofovir case in Switzerland:

The year is 2017 B.C. Europe is entirely governed by European Legislation. Well, not entirely... One small country of indomitable Swiss still holds out against the invaders. And life is not easy for the European judges who reside the fortified camps of Luxembourg ... 

In its decision of October 3, 2017 (here in German), the Swiss Federal Patent Court clarified what the criteria are for deciding “whether the product is protected by a basic patent in force”.  The Swiss court clearly refused to adopt the CJEU's “Medeva” line of decisions. As a consequence, Swiss SPCs will be assessed based on the infringement test.  No additional criteria, such as “specified in the wording of the claims” (Medeva), “the claims relate, implicitly but necessarily …” (Eli Lilly), “core inventive advance …” (Actavis) or the like are to be applied.  Accordingly, the Swiss court applied a more liberal approach compared to the CJEU, leaving room for Swiss SPCs where European SPCs are likely not available.  

The SPC in question relates to tenovofir disoproxil fumarate + emtricitabine.  Claim 1 of the basic patent covers tenovofir disoproxil fumarate and claim 27 mentions “optionally other active ingredients”, without mentioning of emtricitabine.  The Swiss court came to the conclusion that this SPC is protected by a basic patent in force and thus perfectly complies with Swiss practice.  The court also came to the conclusion, that the above CJEU decisions will not help deciding the case, as Eli Lilly might be in favor of such decision while Actavis would rule against it.  

The decision is open to appeal within 30 days. 

Interestingly, the same case is litigated before the High Court, [2017] EWHC 13 (Pat), now pending before the CJEU.