PART III CIVIL AND PENAL SANCTIONS
Chapter 1 Provisions for Protection Under Both Civil Law and Penal Law
A. Conditions for Responsibility
Art. 66
Action may be taken under civil law or penal law, in the conditions hereinafter set forth against any person:
(a) who unlawfully utilizes the patented invention; imitation shall be deemed to be utilization;
(b) who refuses to name to the competent authorities the origin of unlawfully manufactured products in his possession;
(c) who removes the patent marking from products or their packages without authorization from the patentee or the licensee;
(d) who abets any of the said offenses, participates in them, aids or facilitates performance of any of these acts.
B. Reversal of Burden of Proof
Art. 67
(1) If the invention concerns a process for the manufacture of a new product, every product of the same composition shall be presumed to have been made by the patented process until proof to the contrary has been adduced.
(2) Paragraph (1) shall apply by analogy in the case of a process for the manufacture of a known product if the patentee shows prima facie evidence of infringement of the patent.
C. Safeguard of Manufacturing or Business Secrets
Art. 68
(1) Manufacturing or business secrets of the parties shall be safeguarded.
(2) Evidence which would disclose such secrets may be made available to the adversary only to such an extent as is compatible with the safeguard of the secrets.
D. Sale or Destruction of Products or Installations
Art. 69
(1) In the event of a condemnation, the court may order the confiscation and the sale or destruction of the unlawfully manufactured goods or of the instruments, tooling and other means whose main purpose is to manufacture such goods.
(2) The net result of such sale shall primarily be used for payment of the fine, next for payment of the costs for the judicial investigation and the court costs, and finally for collection of damages and costs granted to the adverse party by a final and unappealable decision; any remaining sum shall revert to the former owner of the objects sold.
(3) Even in the event of acquittal or dismissal of the action, the court may order the destruction of the instruments, tooling and other means whose main purpose is to infringe the patent.
E. Publication of Decision
Art. 70
(1) The judge may authorize the party in favor of whom he has rendered his decision to publish the decision at the expense of the other party; he shall decide upon the nature, the extent and the time of the publication.
(2) In penal cases (Articles 81 and 82), the publication of the decision shall be governed by Article 61 of the Swiss Penal Code.
F. Interdiction of Successive Actions
Art. 71
Whoever takes one of the actions provided for in Article 72, 73, 74 or 81, and subsequently takes further action against the same party for the same or a similar act on the basis of another patent shall bear the court costs and the costs of the other party for the new action if he does not furnish prima facie evidence that in the prior action he was, through no fault on his part, unable to invoke the other patent.
Chapter 2 Special Provisions for Protection Under Civil Law
A. Action for Injunction or
Suppression of the State of Things
Art. 72
(1) Whoever is threatened with or has his rights violated by an act mentioned in Article 66 may demand an injunction for the suppression of the resulting state of things.
(2) In the case of patent applications subject to preliminary examination (Article 87 et seq.), the applicant has the right to be a party to judicial proceedings as from the publication of the patent application, provided that he gives the opposing party equitable security; Article 80 (responsibility) shall apply mutatis mutandis.
B. Action for Damages
Art. 73
(1) Whoever performs an act mentioned in Article 66 either willfully or by negligence or imprudence shall be bound to pay damages to the injured party according to the provisions of the Code of Obligations.
(2) If the injured party is unable to assess beforehand the amount of the damages to which he is entitled, he may request the judge to award damages at the latter's discretion on the basis of the evidence produced later to determine the extent of the damages.
(3) The action for damages may be introduced only after grant of the patent; however, damages may be claimed from the time at which the defendant became aware of the contents of the patent application.
(4) In the case of patents granted after preliminary examination (Article 87 et seq.), it shall be possible, in all cases, to demand redress for damages caused by the defendant after publication of the patent application.
C. Action for Declaratory Judgment
Art. 74
Any person proving an interest may enter an action to obtain a declaratory judgment on the existence or the nonexistence of a circumstance or legal relationship governed by this Law, in particular:
1. that a certain patent is valid;
2. that the defendant has performed an act mentioned in Article 66;
3. that the plaintiff has not performed an act mentioned in Article 66;
4. that a certain patent is not enforceable against the plaintiff by virtue of a legal provision;
5. that with regard to two specific patents the conditions of Article 36 for the grant of a license are or are not fulfilled;
6. that the plaintiff has made an invention covered by a certain patent application or patent;
7. that a certain patent has become invalid because it violates the prohibition on cumulative protection.
D. Jurisdiction
Art. 75
(1) For the actions provided for in this Law, jurisdiction is granted:
(a) for actions entered by the patent applicant or patentee against third parties: to the court at the domicile of the defendant, or at the place where the act was performed, or at the place where the act has taken effect;
(b) for actions entered by third parties against the patent applicant or patentee: to the court at the domicile of the defendant; if that place is not in Switzerland, then at the place of business of the agent recorded in the Register or, if such record has been expunged from the Register, at the place of the principal offices of the Federal Institute of Intellectual Property.
(2) Where more than one place enters into consideration, the court at which the action had first been entered shall have jurisdiction.
E. Sole Cantonal Instance
Art. 76
(1) The cantons shall designate a court to be competent to receive the civil actions governed by this Law, which court shall have jurisdiction for the entire territory of the canton as sole cantonal instance.
(2) Appeal to the Federal Court shall be admissible regardless of the value of the interests involved in the action.
F. Provisional Measures
I. Conditions
Art. 77
(1) Upon petition by a person qualified to enter an action, the competent authority shall order provisional measures in order to secure evidence, to maintain the actual state of facts, or provisionally to exercise disputed rights, enjoin or suppress any of the resulting conditions; it may particularly provide for a precise description of the processes or products allegedly used or made contrary to law, and of the installations, appliances, etc., used for the manufacture of those products, or the seizure of those objects.
(2) The petitioner shall produce prima facie evidence that the other party has committed or intends to commit an act contrary to this Law and that he is threatened by a loss which is not easily reparable and which can be avoided only by provisional measures.
(3) Before making a provisional order, the authority shall hear the opposing party. Urgent measures may nevertheless be taken beforehand where there is an imminent danger. The opposing party shall be informed thereof immediately after execution of such measures.
(4) At the time of accepting the petition, the authority shall give the petitioner a term not exceeding 30 days to institute action and shall inform him that the measures ordered will lapse if he does not act within that term.
II. Competence
Art. 78
(1) The competent authority is that of the place for the institution of a civil action according to Article 75; after introduction of the action, only the judge who is dealing with the action shall be competent to order or to revoke provisional measures.
(2) The cantons shall designate the authorities competent to pronounce such measures and shall, where necessary, enact supplementary rules of procedure.
III. Security
Art. 79
(1) As a general rule, the petitioner shall be required to furnish sufficient security.
(2) The competent authority may desist from ordering provisional measures or wholly or in part revoke those ordered if the defendant supplies sufficient security for the benefit of the petitioner.
IV. Responsibility of Petitioner
Art. 80
(1) If it should appear that the petition for provisional measures was not based on a substantive right, the petitioner shall compensate the opposing party for the damages occasioned by the said measures; the judge shall decide upon the nature and the amount of the compensation for damages according to Article 43 of the Code of Obligations.
(2) The action for damages shall be barred by one year's limitation from the time when the provisional measures cease to have effect.
(3) Any security paid by the petitioner shall not be refunded to him unless it has been established that no action for damages will be brought; the authority may grant the opposing party a reasonable term within which to bring such action with the notice that the security shall be refunded to the petitioner if such action is not brought within the prescribed term.
Chapter 3 Special Provisions for Protection Under Penal Law
A. Penal Provisions
I. Patent Infringement
Art. 81
(1) Whoever willfully commits an act referred to in Article 66 shall be liable, on an action brought by the injured party, to imprisonment of up to one year or a fine of up to 100,000 francs.
(2) The right to bring an action against the offender shall be barred by six months' limitation from the time at which the aggrieved person had knowledge of the identity of the offender.
II. Fallacious Allusion to
Protection
Art. 82
(1) Whoever willfully offers for sale or issues his business papers, his advertisements of any kind, his products or goods bearing a notice that is adapted falsely to represent that the products or goods are protected by the present Law shall be liable to a fine not exceeding 2,000 francs.
(2) The judge may order the publication of his decision.
B. General Provisions of the
Swiss Penal Code Applicable
Art. 83
The general provisions of the Swiss penal code shall be applicable insofar as the present Law does not provide otherwise.
C. Jurisdiction
Art. 84
(1) The competent authority for the prosecution and judgment of an offense is the authority of the place where the act was committed or of the place where the act occurred; where more than one place enters into consideration, or where several joint offenders are concerned, the competent authority is that of the place where the offense was first commenced.
(2) The competent authority for the prosecution and judgment of the main offender is also competent for the prosecution and judgment of the instigator and the accomplice.
D. Competence of the Cantonal
Authorities
I. In General
Art. 85
(1) The prosecution and judgment of offenses are incumbent on the cantonal authorities.
(2) Judgments, sentences by administrative bodies and decisions to relinquish a prosecution shall immediately be communicated in full to the Federal Public Prosecutor free of cost.
II. Exception of Nullity of
the Patent
Art. 86
(1) If the accused raises the exception of nullity of the patent, the court may grant him a sufficient term to bring an action for nullity, with a warning of the consequences of his failure so to act; if the patent had been granted without official preliminary examination, or if the accused produces prima facie evidence in support of his exception of nullity so as to make it appear well founded, the court may grant the injured party a sufficient term to bring an action for declaratory judgment on the validity of the patent, as well as with a warning of the consequences of his failure so to act.
(2) Where action is thereupon instituted within the said term, the penal prosecution shall be suspended until a final decision on the action has been rendered; the statute-bar shall be suspended during this period.
(3) The action may be brought either before the judge at the place of domicile of the defendant or before the judge of the place where the penal prosecution was introduced.
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