This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 8: Cross-border Proceedings
Federal Patent Court of Switzerland [2024]: Mepha Pharma AG v Bristol-Myers Squibb Holdings Ireland Unlimited Company, O2022_007
Date of judgment: March 5, 2024
Issuing authority: Swiss Federal Patent Court
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civil)
Subject matter: Patents (Inventions); Enforcement of IP and Related Laws
Plaintiff: Mepha Pharma AG
Defendant: Bristol-Myers Squibb Holdings Ireland Unlimited Company
Keywords: International competence to assess whether a party is entitled to claim priority, Significance of parallel proceedings, Interrelation between EPC and national procedural law
Basic facts: The subsequent application WO 652 was not filed by the applicant of the first application US 165 (BMS Pharma), but by BMS Company. BMS Company was not to be regarded as the legal successor of BMS Pharma within the meaning of the relevant standards, since BMS Pharma had neither transferred the provisional US application nor the right to claim priority to it to BMS Company before filing WO 652. In the following, it was therefore questionable whether the economic entitlement to US 165 was governed by Delaware law, or whether this was to be regarded as irrelevant, since the question of the valid priority claim was governed by the lex loci protectionis, i.e., Swiss law or the European Patent Convention (EPC) (parallel court proceedings in France, the UK, Ireland, the Netherlands, Norway, Sweden and Spain).
Held: Decision G 1/22 of the Enlarged Board of Appeal of the European Patent Office (EPO), which affirmed the competence of the EPO to assess whether a party is entitled to claim priority under Art. 87(1) of the EPC, and found there to be a rebuttable presumption that an applicant claiming priority in accordance with the formal requirements of the EPC is entitled to do so, must undoubtedly be taken into account when interpreting Swiss law. However, the assessment of evidence by the Board of Appeal cannot lead to the explicit allocation of the burden of proof in Art. 20 of the Swiss Patent Act (SPA) being irrelevant as being in conflict with the EPC. The decision of the Board of Appeal does not change the fact that there is no provision in the EPC regarding the allocation of the burden of proof for priority claims. According to the prevailing doctrine and case law, the assessment of evidence is determined by the lex fori. The assessment of evidence by the Board of Appeal, which postulates a consequence of a natural presumption that is foreign to Swiss evidence law, directly interferes with the law governing the assessment of evidence by Swiss courts, which is not governed by the applicable substantive law, but by the applicable procedural law. For this reason, too, no regulation of the burden of proof for the valid priority claim binding for Swiss courts follows from decision G 1/22.
Relevant holdings in relation to cross-border proceedings: Forum running with regard to the law applicable to preliminary procedural questions.
Relevant legislation: European Patent Convention; EPO Enlarged Board of Appeal decision in consolidated cases G 1/22 and 2/22; Swiss Patent Act; US Delaware state law.