The Federal Council acknowledged the results of the consultation (in German) on the partial revision of the Patents Act (implementation of the Hefti Motion – in German, French or Italian) at its meeting on 18 August 2021 and decided on the further course of action. It has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022 which takes into account the criticism voiced in the consultation in individual areas by making adjustments to the contents of the draft bill (see questions 2 and 3).
The consultation demonstrated that a modernisation of the patent examination procedure is welcomed by a large majority of the cantons, political parties and various stakeholder groups. However, some of the feedback criticised the proposed system of a fully examined patent and an unexamined utility model and, in particular, the proposed appeal procedure.
The amendments adopted by the Federal Council take account of this feedback within the framework set by the parliamentary mandate. The aim is to combine the advantages of the existing system with modernisation.
The main changes are:
- Appointment of the Federal Patent Court as the appeal authority against IPI decisions
Due to its high level of technical expertise, the Federal Patent Court is now to be used as the appeal authority against IPI decisions.
- More flexible patent examination with optional full examination
The Hefti Motion approved by Parliament calls for a fully examined patent (i.e. including examination of novelty and inventive step). While full examination is generally supported, various voices in the consultation spoke out in favour of retaining the current system of partially examined patents. In order to meet these different needs, the amended bill proposes to make the current patent examination more flexible by offering an optional full examination.
- Compulsory search for all patent applications
In order to be able to better assess the legal validity of Swiss patents in the future, an compulsory search is to be carried out for every patent application.
- Utility model will not be introduced
As the current (partially examined) patent will continue to be available after the purely optional full examination is introduced, there is no longer a need for a new, partially examined IP right. The introduction of the utility model, which was criticised in the consultation due to its structure (e.g. because of the shorter term of protection), can therefore be waived.
- Opposition procedure to be replaced by an extended possibility for appeal
The opposition procedure was heavily criticised in the consultation for unnecessarily prolonging and complicating the process.
In the amended bill, the opposition procedure before the IPI is to be abolished. It is to be replaced by an extended possibility to appeal to the appellate authority (which will be the Federal Patent Court). This will both streamline the procedure and will ensure the possibility of review by third parties.
Undisputed aspects such as the extended use of the English language, on the other hand, will be retained.
The amended bill stipulates that decisions made by the IPI on patent matters can be referred to the Federal Patent Court. The review of IPI decisions regarding novelty and inventive step requires a high level of technical expertise from the appellate authority in addition to legal expertise. The Federal Patent Court, the federal court that specialises in civil patent disputes, fulfils these requirements. In turn, the decisions of the Federal Patent Court can – where provided for by law – be appealed to the Federal Supreme Court as the court of last instance.
The opposition procedure was strongly criticised in the consultation as being too lengthy and complicated. Even in its current form, the opposition procedure introduced in 2008 has not gained any significance because it has never been resorted to since.
As requested by various consultation responses, it will be replaced by the option to submit an appeal directly to the appellate authority (which will be the Federal Patent Court). By removing the opposition procedure, the appeal process will be streamlined, which will lead to an acceleration of the entire process. At the same time, with the extension of the appeal and right to appeal, the possibility of review by third parties is still guaranteed should they disagree with the decisions of the IPI.
Yes, the current patent will continue to be available because, in principle, even after the revision, the IPI will not examine patent applications for novelty and inventive step. This means that an inexpensive IP right will still be available to inventors. However, anyone who wants a fully examined patent can apply for one in future.
Flexible means that, in future, applicants will be able to choose whether their application is to be fully examined (i.e. including examination of novelty and inventive step). If a request is filed, the IPI will grant a fully examined patent like those granted under the European Patent Convention in Germany, the USA, Japan and many other countries. If a request is not filed, the IPI will grant a patent that has not been examined for novelty and inventive step.
The amended bill makes the patent examination more flexible, while also strengthening the legal certainty. A compulsory prior art search will now be carried out for each patent application. Based on this, patent applicants (and third parties) can form a picture of the probable validity of the patent. After that, applicants can decide whether they want to withdraw the application or continue with the examination. In addition, they can decide whether the application should be fully examined (i.e. including novelty and inventive step). If this is not requested, the patent will be granted without being examined for novelty and inventive step.
With regard to the term of protection, scope of protection, etc., all granted patents are identical, regardless of whether they have been fully examined or not. However, for fully examined patents, the IPI will also examine whether the invention is novel and involves an inventive step. This increases the legal certainty for the applicant and also for third parties. The fully examined patent corresponds to a European patent granted by the European Patent Office (EPO) which has been extended to Switzerland, as well as patents from many other states in Europe and worldwide.
In the case of a fully examined patent, the IPI checks all the legal requirements, including novelty and inventive step, before granting the patent. This offers several advantages:
- It increases the legal certainty for all parties involved because the important aspects of the patent will have been examined by the IPI. This will prevent the filing of ‘junk patents’ (these are patents that do not fulfil the requirements for protection such as novelty etc., but can currently still be registered due to the lack of examination of these requirements).
- It makes it easier to enforce the patent against third parties, because in the case of civil proceedings, there will already be a strong indication of the legal validity of the patent due to the full examination.
- It also makes it more attractive to license a fully examined patent because it reduces the risks for the licensee.
- A fully examined patent is, in particular, for SMEs a valuable alternative to a fully examined European patent granted by the EPO with protection extended to Switzerland – a path that is often laborious and costly for SMEs.
- It also complies with international standards and the patents of most EPC member states and many countries worldwide, as well as with the OECD requirements for IP rights that can be incorporated into a patent box.
The amended bill waives the introduction of a utility model. The Hefti Motion envisaged the introduction of the utility model as a quick and cost-effective alternative to the new fully examined patent. With the new flexible patent examination, inventors now get to choose whether they want a partially or a fully examined patent. The maximum term of protection is 20 years in both cases. A utility model with a mere ten-year term of protection is therefore no longer needed.
The current partial patent examination procedure creates some uncertainty. SMEs and individual inventors with little patenting experience hardly recognise whether a Swiss patent is really novel and inventive. However, the motion and the consultation called for more legal certainty, which is why every patent application is to be supplemented with a compulsory patent search. The public search report documents the state of the art from which the invention must be sufficiently different. On the basis of this information, it is therefore possible for the IPI, the applicant and the third parties affected by the patent to better evaluate whether the invention can really be protected by a patent.
The fee for the search has not yet been set, as the details regarding fees under the new system have not yet been finalised. However, it is important to note that the motion calls for the unexamined IP right to be offered for the same price as the current Swiss patent. This will be taken into account in the setting of the fee.
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