“Medication Injection Pen”

• 1. The dismissal of an application for suspension of proceedings based on Art. 126 of the Code of Civil Procedure constitutes a decision on precautionary measures within the meaning of Art. 98 Federal Supreme Court Act, with the consequence being that the only ground of appeal that may be raised in the final instance is the violation of constitutional rights.

• 2. The restriction of the patent claims – whether verbally in the proceedings before the Federal Patent Court or with erga omnes effect by the EPO or the Swiss Federal Institute of Intellectual Property (IPI) – leads to a new (technical) fact and consequently to a new basis for a claim.

• 3. A suspension of the domestic patent infringement proceedings cannot be requested merely when opposition proceedings before the European Patent Office are pending, as the European Patent Convention (EPC) does not provide for a general suspensive effect. Rather, the EPC creates the enforceable claims from the patent with the grant, and not with the final rejection of an opposition.

• 4. Article 128(b) Patent Act does not provide a basis for a general suspensive effect of proceedings but rather requires a weighing of the interests in the individual case.

• 5. The “subject-matter of the patent” is not to be understood as the “scope of protection” under Art. 69 EPC as determined by the patent claims. Rather, it is the “subject-matter” within the meaning of Art. 123(2) EPC, i.e. including the entire disclosure in the description and drawings.

• 6. This provision allows a post-filing amendment only within the scope of what the person skilled in the art can directly and unambiguously infer from the entirety of the application documents as originally filed, using general technical knowledge – objectively and related to the filing date. This standard of proof is called the “gold standard”.

• 7. An intermediate generalisation can only be justified if there is no clearly recognisable functional or structural connection between the features of the specific combination or if the selected feature is not inseparably linked to these features. It is therefore only admissible if the person skilled in the art can see beyond doubt from the application as originally filed that the selected feature has no close connection with the other features of the embodiment example, but relates directly and clearly to the more general context.