Report of Swiss Group​^*

The Federal Act on the Protection of Designs protects the design “of products or parts of products” that is characterised, in particular, by the arrangement of lines, surfaces, contours or colours or by the materials used (art. 1 Design Act). In general view, protection is given to Partial Designs. The Design Act does not state any additional or different requirements for the protection of Partial Designs. In legal literature, however, it is disputed whether a Partial Design is capable of being protected only

• – if it could be sold on its own (pro: P. Heinrich, DesG/HMA, 2. Aufl., Zürich 2014, DesG 1 N 26; M. Wang, SIWR IV, Basel 2007, 74; E. Marbach, in: E. Marbach /  P. Ducrey / G. Wild: Immaterialgüter- und Wettbewerbsrecht, 4. Aufl., Bern 2017, N 440; contra: R. M. Stutz / S. Beutler /  M. Künzi, Designgesetz, Bern 2006, DesG 1 N 40) and/or
• – if it is visible in normal use (pro: Marbach, N 448; contra: Heinrich, DesG 1 N 27; Wang, 74; Stutz / Beutler / Künzi, DesG 1 N 37; Celli, DesG 1 N 52).

These issues have not been clarified by Swiss case law yet. Denying individual character of the design in question, the Swiss Federal Supreme Court notably left undecided any requirement of “autonomy” (“Eigenständigkeit”; BGer 4A_44/2016, E. 2.3.5, “Saunapritschen”). There is no legal requirement to show the Partial Design in connection with the unclaimed part. It is possible to represent the Partial Design (i.e. a part of a product as such). The Swiss Federal Institute of Intellectual Property accepts dotted or dashed lines as indications of the unclaimed Part of the Partial Design. By way of exceptions, it does accept shading when it is not possible to define the unclaimed part otherwise. In the Swiss Group’s view, colouring should be allowed as an ultima ratio as well. Swiss law foresees the possibility to add a description in order to explain the representation of the Design (art. 19 al. 4 Design Act, DesA). However, this is optional. The Partial Design has to be clearly depicted in the submitted representation. Furthermore, it must be clear to the examiner which part is protected and which is excluded from protection while examining the representation. A description only explains the representation and does not add any new features. The Swiss practice does not allow a verbal disclaimer. The representation must contain the part of the design that has to be protected, either alone or in its context using dotted or dashed lines for the Unclaimed Part. The representation has to reveal the protected Design. Art. 8 of the Design Act stipulates that the protection of the design right includes designs that have the same essential features and thus produce the same overall impression as the registered design. There is no provision in the Design Act which would limit the scope of protection in any way. Furthermore, there is no high court decision in Switzerland concerning that question. From legal literature, the main opinion appears to be that the only criteria regarding the question of infringement is the same overall impression [Staub, in: Staub (Hg.), Designrecht, Zürich 2003, DesG 8 N 26]. Therefore, the scope of protection of a Partial Design (that is registered in combination with a disclaimed product) should extend also on Partial Designs which are used with products that are different from the disclaimed product. Hence, the registered design of the handle as discussed within the scope of this questionnaire would cover the handle on the pan as well as on the sieve. Whether and to which extent a link or nexus between X and Y is required, is not entirely clear. In BGE 134 III 205, 213, the Swiss Federal Supreme Court only held that the scope of different products to consider in this context does not only extend to substitutable products, but did not provide any further guidance. In literature, the question has been heavily discussed. While some authors take the position that the products should at least be “akin” (see Heinrich, DesG/HMA, DesG 2 N 161 et seq.; SWIR-Wang, 67 et seq.; Eschmann, 150 et seq.), others appear to decline the requirement of a link or nexus (Stutz / ​Beutler / Künzi, DesG 8 N 72; Marbach, N 457). Yes, a Partial Design forming part of a Product X can be considered not novel in view of the same Partial Design in prior Product Y. With respect to the nexus required, the situation is the same as mentioned with regard to question 3. It is generally acknowledged the same principle should apply when assessing novelty and infringement. Elements outside of the scope of Partial Design are not to be taken into account. The Swiss Design Act foresees with art. 4c that a design shall not be protected in case the features of the design are dictated solely by the technical function of the product. Alternative forms – even if the part only embodies a technical function – must be taken into consideration for the Partial Design itself. However, the overall impression is decisive. As outlined above, the design system in Switzerland follows a liberal approach with regard to Partial Designs. The group is of the opinion that such a liberal approach is in favour of the stakeholders and therefore, no further clarification on a statutory basis is necessary in Switzerland. Under current Swiss practice, Partial Designs are usually defined by representing the non-claimed subject matter with broken lines. In some types of representations, such as renderings or photographs, this is not always feasible. The group is of the opinion that with this regard the Swiss practice could be enhanced. In particular by admitting other ways of depicting or describing the parts for which no protection is claimed. Furthermore, the way of specifying, describing or depicting Partial Designs shall be harmonized internationally. On principle, the Swiss Group is of the opinion that the filed representations shall determine the scope of protection and that there shall be no limitation of the scope of protection by other factors, such as the title or the Locarno classification. In view of this general principle, the Swiss Group believes that the unclaimed part shall not influence the scope of protection. The main reason is to avoid that the rights of the design proprietor are limited unnecessarily. For example: When considering the example with the handle as indicated in the introduction of this study question, the scope of a handle-design shall not be limited to a sieve or a pan, in case the handle is registered as a Partial Design and the sieve or the pan, respectively, are disclaimed. Limiting the scope of the handle to either the sieve or the pan, would constitute an unjustified limitation in case the core of the design lies in the design of the handle. Design constraints shall not influence the scope of protection, in particular, if several design alternatives are feasible within the boundary of designs constraints. According to the opinion of the Swiss Group, the overall impression together with its distinctive features of the protected design shall be decisive for the scope of protection. The Swiss Group is of the opinion that the only exception when it comes to design constraints concerns those features of the designs which are dictated solely by the technical function of the product. In case the distinctive features are dictated solely by the technical function of the product, no protection shall result for said technical features. Yes, the assessment should take into account the design as shown. The unclaimed part shall play, as indicated above, no or only a minor role. No. The validity and/or the scope of protection shall be independent from the sale. The Swiss Group is of the opinion that the AIPPI should focus on a liberal approach. In particular, the Swiss Group believes that it is in the interest of the property rights owner that design protection is available for Partial Designs in a broad manner. However, as the only exception, there shall be no design protection available for those features which are dictated solely by their technical function. Other exceptions, such as a must-fit/must-match exception or a replacement part exception shall not be provided. Yes, Partial Designs shall also be protected as such, provided that the Partial Design as such is novel and has an individual character. Yes. The Swiss Group considers harmonisation important to provide an international framework for design protection providing easy access to the users of the design systems. Harmonization would also enhance legal certainty for property rights owner as well as for third parties. A suitable framework of specifying, describing and/or graphically depicting the Partial Design and the Unclaimed Part would be the use of the following elements:

• – Broken lines for the unclaimed part and normal lines for the claimed parts;
• – If broken lines are not suitable, any other means, such as shading/encompassing lines or as an ultima ratio a coloured layer, shall be used to define the Unclaimed Parts in the representations, whereby additionally a description clarifying which parts are to be considered as unclaimed shall be added.

• – Unclaimed Part (UP) of the Partial Design is the pan without the handle;
• – Surrounding Context (SC) is the part of the accused product without the protected Partial Design, i.e. the sieve without the handle.

Please explain whether differences between the SC and UP should be relevant when considering the overall impressions of the accused product and the Partial Design in the following circumstances. In each case, please briefly explain why. The Swiss Group comes to the conclusion that no separation is necessary as the handle which is to be considered as the Partial Design shall be protected as such irrespective of its use with the unclaimed part shown in the representation or with any other element that is not shown in the representation. As mentioned above, the unclaimed part shall not be taken into account. The scope of protection of a Partial Design shall include all combinations with other elements as long as the protected Partial Design is used. The Swiss Group is of the opinion that there shall be no limitation in the scope of protection based on design constraints apart from the only exception when the design constraints are purely technical. However, it appears to be important that the Partial Design as such is novel and has an individual character. The Swiss Group has no further comments.

• – Consumer goods
• – Building industry
• – Pharmaceutical industry

Switzerland is a member of the EPC, and the European Patent Office grants patents with effect in Switzerland under the EPC. However, a complete detailed report for this regional law appears not necessary: Art 54(2) and (3) EPC are substantially identical to Art. 7(1) and (2) (Swiss Federal Act on Patents for Inventions [PatA]), and treatment and importance of secret prior art according to the EPC and the PatA are consistent. Hence, this Report refers to Swiss national law, which applies mutatis mutandis to European patent applications as well.​¹ A substantial difference between the EPC and the PatA resides in the origin of secret prior art: Art 54(3) EPC restricts secret prior art to earlier filed European patent applications, and Art. 153(4) EPC adds PCT applications of earlier priority date provided they are published by the EPO which is substantially equivalent to be validly entered into the regional phase before the EPO. National secret prior art (national patent applications having an earlier priority and corresponding to a national phase of PCT applications) is dealt with on a national level after grant only according to Art. 139(2) EPC as if the national part of a European patent was a national patent. Yes, according to Art. 7(3) PatA. With regard to novelty, the state of the art also includes the content of an earlier application or application with earlier priority designating Switzerland in the version originally filed, and with a filing or priority date that precedes the filing or priority date (Art. 7[2]PatA) of the later-filed application, and which was only made available to the public on or after that date, provided that the following requirements are fulfilled:

• – in the case of an international application: designation of inventor in writing, remarks concerning the source, payment of the filing fee, translation in an official language (Art. 138 PatA);
• – in the case of a European application based on an international application: filing fee paid at the EPO, translation in an official language if published in a non-official language of the EPO (Art. 153[5] EPC);
• – in the case of a European application: the designation fees for Switzerland have been paid (Art.79[2]EPC).

Secret prior art constituted by national Swiss patent applications is prior art as well according to Art. 7(3) PatA. The former “prior claim approach” has been replaced by the “whole content approach” for assessing novelty in view of secret prior art. Since July 1, 2008, the “whole content approach” is applied in Switzerland, which means that additionally to the claims, the description and the drawings of the secret prior art are relevant for the assessment of novelty. Art. 7(3) PatA does not make any distinction between publicly available prior art and secret prior art for the purpose of evaluating novelty. Thus, the standard to be applied is the same as for publicly available prior art. No, Art. 7(3) PatA refers to novelty only. No, provided that the international application fulfils the requirements given under 1.a. Yes, the international application must fulfil the requirements given under 1.a. No, according to Art. 7(2),(3) PatA, it does not depend on the date of the national phase entry. Yes, it is irrelevant whether the applicant and inventors of the secret prior art and the applicant and inventors of the later-filed application are the same. The Swiss Patent Act is silent in this regard. The “whole content approach” is applied and, therefore, the entire contents of the secret prior art are available, see the response to question 1.a.aa. Art. 7(3) PatA does not make any distinction; see response to question 1.a.bb. No, the Swiss Patent Act does not have any provision relating to anti-self collision. No, for the same reasons as mentioned in response to question 1.b. Anti-self collision is not applied in Switzerland. No, see the response to question 1.c.aa. Yes, see the response to question 1.c.bb. No, see the response to question 1.c.cc. Art. 7(3) PatA does not make any difference between the situation where the applicant and/or the inventor(s) of the secret prior art and the later-filed application are the same and the situation where the applicant and/or the inventor(s) of the secret prior art and the later-filed application are different. Therefore, the answers for the scenarios of Question 3, wherein either the applicant or the inventor(s) of the later-filed application is different, are identical to those set forth in the previous questions. The answers to sub-question aa) for scenario c) and sub-questions aa)–bb) for scenario d) are negative, since the aspects of applicants being part of a joint-industry or industry-university research project and of inventors having an obligation to assign the invention to the same applicant are not dealt with in the Swiss Patent Act.

•  same as Question 1
• ⊠ same as Question 2
•  different (please explain)

•  same as Question 1
• ⊠ same as Question 2
•  different (please explain)

• ⊠ same as Question 1
•  same as Question 2
•  different (please explain)

No.

• ⊠ same as Question 1
•  same as Question 2
•  different (please explain)

No. No. No, Art. 7(3) PatA defines appropriately the “when”. Switzerland applies the “novelty-only” standard. The Study Group does not see any reason to deviate from this standard. No, according to the current Art. 7(3)(a)–(b) PatA, an international or a European patent application has prior art effect when it enters the national phase or when Switzerland is designated (cf. 1. c.). The Study Group does not see any reason to deviate from this provision. Currently, Art. 7(3) PatA does not treat the applicant and third parties differently with regard to applications that are filed after the filing of the first application. The Study Group considers that the treatment of total and partial identity of applicants as it relates to secret prior art should be the same. No. An exception for applicant’s own patent application could be an option for an anti-self collision clause. The Study Group does not see any reason to introduce provisions for further limiting an applicant’s right to obtain patent claims in the later-filed application in addition to the existing provisions. No. Yes. Yes. The entire contents (as with publicly available prior art). The same as the standard applied to publicly available prior art. No, there should be a difference between secret prior art and publicly available prior art when assessing patentability. No. Yes, for the purpose of secret prior art only international patent applications that have validly entered the national phase should be taken into account to avoid double patenting. No. No, as stated in 4.f. the Study Group is in principle open for an exception for applicant’s own patent application. No. No. Cf. 7.c.bb. Cf. 7.c.cc.

•  same as Question 7
• ⊠ same as Question 8
•  different (please explain)

•  same as Question 7
• ⊠ same as Question 8
•  different (please explain)

• ⊠ same as Question 7
•  same as Question 8
•  different (please explain)

No.

• ⊠ same as Question 7
•  same as Question 8
•  different (please explain)

No. No.

• ⊠ same as Question 7
•  same as Question 8
•  different (please explain)

• ⊠ same as Question 7
•  same as Question 8
•  different (please explain)

– None.

Sachverhalt​¹: Der Beschwerdeführer (Verband) reichte gegen zwei Beschwerdegegnerinnen (Medienhäuser) Beschwerde ein. Gegenstand war ein Video, in welchem eine Produktelinie eines Kosmetikunternehmens präsentiert wird. Es ist auf dem Zeitungsportal der einen Beschwerdegegnerin abrufbar​². Nicht im Verfahren involviert war das Kosmetikunternehmen. Die Kammer beanstandete insb. eine Verletzung des (lauterkeitsrechtlichen) Trennungsgebotes sowie einen unlauteren Vergleich, weshalb es den Beschwerdegegnerinnen empfahl, inskünftig auf die Veröffentlichung des Videos zu verzichten.

Mitgeteilt von Mischa Senn, Prof. Dr. iur., Fachexperte und Vizepräsident SLK