Book review: L'épuisement des droits de propriété intellectuelle sur un matériel biologique en droit suisse

There is plenty of issues surrounding exhaustion of intellectual property rights, which are also the subject of numerous decisions [IPKat here, here or here]. This time, this Kat had the opportunity to review Pierre Heuzé's published PhD thesis, written in French, titled "L'épuisement des droits de propriété intellectuelle sur un matériel biologique en droit suisse" [Exhaustion of intellectual property rights in biological material under Swiss law], published earlier this year.

Structure of the thesis

The core of this work consists of answering the following questions. If the purchaser has bought patented biological copies and sees these copies multiply, does he use them or manufacture new copies? Is the situation different for the holder of a plant variety certificate? Can the owner of the patent oppose the multiplication of copies? What exhaustion regime should be applied when both protection regimes are applicable to the same copy?

To answer these questions, the author has chosen to focus on the application of the Loi fédérale sur les Brevets d’Invention (Federal Law on Patents) and the Loi fédérale sur la Protection des Obtentions Végétales (Federal Law on the Protection of New Plant Varieties). This work therefore excludes any questions relating to copyright, trade mark law, design law or business secrecy that may arise.

The structure is conventional. It consists of an introduction and four main parts. Each part contains definitions of key concepts and explanations of the relevant legislative framework.

A Kat studying new IP fields

The first part deals with the means of protecting biological material. After defining what is meant by "biological material" (i.e. any material that contains genetic information and is self-replicating or reproducible in a biological system), the author seeks to determine the means of protection available to the holder against any use of this material. This section therefore explores the possibilities offered by patent law under the Federal Law on Patents for Inventions and by plant variety law under the Federal Law on the Protection of Plant Varieties. The question of the cumulation of rights is also addressed in this first part.

The second part deals with exhaustion of the proprietor's rights over biological material protected by a patent. Based on the general principle identified in the first part, this part examines the legal framework relating to questions of exhaustion faced by the holders of patents and/or plant variety certificates when biological specimens capable of multiplying without any human intervention are put into circulation on the market.

The third part deals with the exhaustion of the holder's rights over biological material protected by a plant variety certificate. Here, the author examines the conditions and effects governing the exhaustion of the rights of a holder of a plant variety certificate. This examination notably includes determining whether Article 8a of the Federal Law on Patents for Inventions is mandatory or not, as well as the conditions and effects of the exhaustion of the rights of a plant variety certificate.

The fourth part deals with the exhaustion of the holder's rights over biological material protected by a patent and by a plant variety certificate. The aim is to explore the question of exhaustion where there is a combination of protection, for a plant variety protected by a patent and a plant variety certificate. The author seeks to identify the gaps in the coordination between the exhaustion regimes and how these gaps might be filled.

Thoughts

This book is mostly aimed at an audience consisting of both academics and legal professionals specialising in patents and plant varieties, specifically those with an interest in Swiss law. Of course, anyone with an interest in the subject may wish to look at it, not least because of the pedagogical aspect of the structuring of this thesis. The nature of this work necessarily implies that the author has chosen a specific and targeted angle of approach. Readers seeking a more global or broader view of the subject, or of other national or European legislation, will have to supplement this reading by consulting other sources.

It should also be noted that this thesis tends to focus on Swiss law, although links are clearly established with certain EU law provisions. That said, it is not necessary for the reader to have an advanced knowledge of Swiss law on this point. This Kat, for example, has none. Indeed, throughout this thesis, the author makes a point of recalling in detail the legal rules applicable to his case study. This approach allows the reader to avoid getting lost in a subject that is both dense and complex.

This thesis complements the existing doctrine on exhaustion of intellectual property rights. While the subject matter may appear obscure to readers without an in-depth knowledge of biology and related fields - which is the case for this Kat - it should nevertheless arouse interest. Throughout this work, the author has taken care to define key concepts, such as biological matter. This helps providing a better understanding of the subject of the book.


Publisher: Schulthess Verlag
ISBN/ISSN: 978-3-7255-8923-4
Extent: 380 pages
Price: CHF77.00