On 1st January 2011 the new Swiss Code of Civil Procedure entered into force. The Swiss Federal Supreme Court recently clarified its provisions regarding interim measures in general, and the precautionary taking of evidence in particular (Decision 4A-532/2011, 31st January 2012). The court held that the precautionary taking of evidence under Swiss law generally (including circumstances of alleged contributory infringement) requires prima facie evidence that the facts of a case grant a substantive right and that the evidence to be taken serves the purpose of proving such right.

A patent owner filed a request for legal inspection and documentation of the inspection as interim measures against a competitor producing and marketing a product that allegedly infringed the patent. It was alleged that the opposing party infringed the patent in a contributory manner by supplying a third party with equipment components designed to work according to a method protected by the patent.

According to Article 158(2) of the Code of Civil Procedure, which refers to the precautionary taking of evidence, the court shall take evidence at any time if:

• The law grants the right to do so.
• The applicant credibly shows that the evidence is at risk or such applicant has a legitimate interest.

The general provisions regarding interim measures also apply to the precautionary taking of evidence. According to Article 77 of the Patent Law, an applicant requesting interim measures may ask the court to order:

• A precise description of the allegedly infringing methods.
• A precise description of the manufactured products and of the relevant equipment.
• The confiscation of such items.

The party requesting such precise description is obliged to prove that its rights have been infringed or that there is a risk of infringement.

Interpreting the law, the court acknowledged that the right to a precise description according to Article 77 of the Patent Law qualifies as a legal right in the sense of Article 158(2)(a) of the Code of Civil Procedure. The court held that an inspection (as an interim measure) requested by a patent owner is independent from requesting a precise description in the sense of Article 77 of the Patent Law. The court acknowledged that the parties to a patent infringement case may request general interim measures (eg, inspection, examination of witnesses or editing of manuals) and are not limited to the precise description (which is tailored to patent infringement cases), provided that the party requesting such general interim measures credibly shows a legitimate interest. 

The court noted that the reference to a legitimate interest in Article 158 of the Code of Civil Procedure aims to create the possibility to request the precautionary taking of evidence in order to establish the value of possible evidence and the likely outcome of a patent infringement action. This possibility aims to avoid futile proceedings. However, the court found that a legitimate interest is not sufficiently shown by simply asserting that it is necessary to establish the value of possible evidence and the likely outcome of a patent infringement action. Rather, the precautionary taking of evidence may be granted only based on a specific substantive right, since a party’s interest in the taking of evidence depends on the interest in the enforcement of such right. The court concluded that a party requesting the precautionary taking of evidence based on Article 158(1)(b) of the Code of Civil Procedure is under an obligation to provide prima facie evidence that the facts of the case grant a substantive right against the opposing party and that the evidence to be taken may serve the purpose of proving such right. An exception applies to facts which a party intends to establish precisely by means of the precautionary taking of evidence: in such cases, a requirement to establish prima facie evidence would impede the possibility to establish the value of possible evidence and the likely outcome of a patent infringement action before the trial. Therefore, the court held that in cases where the evidence to be taken by the court represents the sole piece of evidence allowing a party to prove its right, it is sufficient to substantiate the facts leading to such right.

The importance of this decision lies in the clarification that general interim measures (including the precautionary taking of evidence) may be requested in patent infringement cases. The court found that an inspection may be requested and ordered irrespective of whether the requirements of Article 77 of the Patent Law (being specifically tailored for precise inspection as an interim measure in patent infringement cases) are met, provided that the party requesting such measures credibly shows a legitimate interest in such general interim measures.