On 14 October 2020, the Swiss Federal Council published a preliminary draft of a revised version of the Swiss Patent Act (R-PatA; see current PatA). Further official documents in German/Italian/French can be found here: Explanatory Notes. The Swiss Institute of Intellectual Property (IPI) published additional information in English here and here. Stakeholders are invited to comment on the draft bill by 1 February 2021.
The most important changes envisaged in the proposed draft can be summarized as follows:
- Introduction of full-fledged patent examination proceedings including examination of novelty and inventive step;
- Introduction of a new utility model (unexamined on the merits and with a term of 10 years);
- Post-grant opposition proceedings for all patents that also include the alleged lack of novelty and inventive step;
- Administrative cancellation proceedings against utility models, which can be initiated at any time, even after nine months from the grant;
- Possibility of appeal proceedings before the Federal Administrative Court in examination proceedings; judges with technical expertise may be appointed.
As mentioned above, the most important proposed innovation is the introduction of a national patent based on a full-fledged patent examination by the Intellectual Property Institute (IPI). Under current law, the IPI carries out only a limited examination of national patent applications dealing only with the technical character of the claimed invention, sufficiency of disclosure, clarity, uniformity of the inventive concept, amended subject-matter and formal requirements (for the IPI’s examination guidelines in German click here). If the new law becomes effective, the IPI would also examine the two crucial requirements of novelty and inventive step. The R-PatA extends the IPI’s examination powers and brings its competence on a par with that of the European Patent Office (EPO), which examines also the merits of patent applications (EPC Patent Guide, p. 47 et seqq.). While novelty and inventive step have always been a condition for a legally valid Swiss patent, the two requirements have never been examined in the context of examination proceedings in Switzerland. Third parties who wanted to invalidate a Swiss patent because of alleged lack of novelty or inventive step have to initiate revocation action proceedings before the Swiss Federal Patent Court under the current law.
The second major revision is the planned introduction of a utility model as a further protective right for technical inventions. This so-called “small patent” is intended by the legislature to replace the current national Swiss patent but it would only have a validity term of 10 years. In addition, a utility model cannot protect inventions in the field of biotechnology, pharmaceuticals and chemical substances and processes. Most importantly, the utility model is only subject to a limited examination procedure, which is simpler and much more time and cost effective but at the same time competent enough to exclude obviously abusive applications. Novelty and inventive step will not be examined during examination proceedings concerning utility models. The utility model should therefore meet the needs of Swiss applicants who are looking for an uncomplicated and affordable protection of their inventions. The utility model is a possibility to ensure prompt protection while a patent application is still pending. It also qualifies for the so-called patent box under Swiss tax law.
This proposed dual system with fully examined patents on the one hand and utility models on the other hand offers companies and inventors more choices for the protection of their inventions. It is one of the goals of the new system to enhance the attractiveness of Switzerland as a location for innovation.
Thirdly, the new proposal plans to introduce additional opposition grounds for third parties who want to invalidate Swiss patents in post-grant opposition proceedings. Opposition proceedings have to be initiated within nine months after the date of grant. Until now, Swiss opposition proceedings have generally been limited to the question of whether the IPI handled the exclusions in the field of biotechnology properly. The new opposition proceedings provide for all grounds of opposition including alleged lack of novelty and inventive step. In addition, the proposed amendments enable third parties to not only oppose the whole patent but also single patent claims. Moreover, the IPI would have the competence to proceed with the opposition ex officio, even if the opposing party withdraws its opposition.
In addition, the draft bill provides for a new administrative cancellation procedure against utility models, which can be initiated at any time, even after nine months from the grant.
Patentee and opponents may file an appeal against decisions of the IPI with the Swiss Federal Administrative Court. In principle, it is already possible today for an unsuccessful party to lodge an appeal against a decision issued by the IPI with the Federal Administrative Court. Because the scope of the current opposition procedure is very limited, this does not occur in practice.
Because it will be necessary for the IPI as well as the Federal Administrative Court to deal with the prior art of patents and the questions of novelty and inventive step if the current proposal becomes effective, it must also be ensured that the technical competence is available among the examiners and judges. It will be interesting to see how the IPI and the Federal Administrative Court will make sure that they can provide the necessary technical experience and skills. The present draft and the explanatory notes do not explain in detail how this important problem would be solved.
As a further procedural change, English, the reference language of science and research, can be used in application proceedings and opposition proceedings.
For the sake of procedural efficiency, the IPI will have the opportunity to cooperate and exchange information with other national and international patent offices.
Overall, the new draft would bring Switzerland a full-fledged patent system. This patent system would be independent of any developments at the European level. As is well known, Switzerland is not a member of the planned unitary EU patent system comprising a European patent with unitary effect and the Unified Patent Court and, therefore, a revision of the Swiss patent system could make sense against the background of these developments.
However, the proposed changes would also require significant investments, especially in finding qualified personnel at the IPI and the Federal Administrative Court and the implementation of the new processes.
The Swiss Federal Patent Court has already created a large pool of specialized judges who can be called upon for civil court patent cases. If it is not possible to create certain synergies in this respect, it seems difficult to find the necessary resources and skills. The current laws do not allow this and the proposed bill does not give a sufficient answer to this issue.
Finally, it is not clear whether the new national patent system will actually meet a need of the Swiss economy as long as the patent protection via the European Patent Office functions as it does today. The number of national patents and utility models expected according to the explanatory notes seems very optimistic and many practitioners doubt that such a number of national patent applications and utility models would actually be filed under the new system. A rather large system seems to be proposed for relatively few cases.
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Funny and sad to see the slow disintegration of the European patent system. One by one, the national states blow up their very own patent system. France’s move towards more thorough examination and towards opposition proceedings was a first significant step. So instead of becoming more and more integrated, the European scene becomes more and more complex and multifaceted. Not sure that this is good news, except for law firms.
On the other side, if you want to avoid the UPC, you have to avoid the European patent. The latter loses some of its attractiveness as it has tied itself to the UPC (not the smartest move ever, in my opinion). So the development of the national systems makes sense, to some extent.
Apparently, Switzerland can afford to subsidize a national patent examination system. Taking into account the number of Swiss national applications, the system cannot be expected to be self-sustaining if a sufficient number of examiners is appointed to cover all technical areas. At present, only 750 national patents are granted per year, i.e. some 9% of European patent applications filed by Swiss applicants. The explanatory notes to the draft bill do not contain any figures how many more national applications are expected by the proposed examination system nor any empirical background for estimations. Thus, one must fear that either the tax payer has to step in or the number of specialized examiners will not be sufficient for a qualified examination. In which way introducing a national patent examination system might make Switzerland independent of developments within the European patent system, like the unitary patent, remains a mystery.
What is the “Swiss Federal Council” and why is it promulgating these ideas? I am a European and UK patent attorney, in practice since 1973. I have seen much progress and many developments in patent law, over the years. What is striking is how IPR used to be something for the experts and the interested circles but has recently become the plaything of politicians. Once a topic gets political, the prospect of law reform in the interests of the public and the “general welfare” disappear, to be replaced by the interests of those who can bring to bear the biggest and most powerful lobbying broadside. See, even here, for Switzerland, lobbying is solicited, welcomed. Loads of free lunches. But what of the general welfare. Who lobbies for that?
A similar development is apparently taking place in The Netherlands.
One wonders why such a move is taking place, especially in EU member states.
On the one hand France has been pushing for the UPC, or at least certain French lobbyists, and on the other hand examination and opposition are introduced. The two seem a bit contradictory.
One could conclude that for French applicants, and especially French SMEs, another option than a European Patent is to be opened.
The French state has been subsidizing French applicants for a long time in that the price for a French search (520 €) is heavily subsidized as the costs for it is much lower as that of a EPO search (1350 €), whereby the search is actually carried out by the EPO, and this since the 70ties.
All the French fees are reduced by 50% for SMEs, universities and non-profit organisations. The Swiss tax payer will contribute like the French tay payer has done for a long time.
One can only agree with “The Last of the Epohicans”, but then what will the UPC be good for but big multinational companies and internationally active lawyers firms working for those.
In Switzerland examination was concentrated in two specific technical areas, and now it should be extended. It really looks that Switzerland seems to want to gain its autonomy vis-à-vis of the EPO. No wonder when you see how the EPO is run down since ten years. And not being part of the EU this should not come as a surprise.
Let us not forget why patent examination was invented (!) in the first place: to ensure that there are fewer (not zero, of course, but fewer) patents invalid as granted.
Before full-blown patent examination was introduced in France earlier this year, in more than a few technical fields, a few big patent applicants would get dozens, if not hundreds, of French patents granted per year in their technical field. A significant proportion of these patents were novel but not inventive, or in fact barely novel at all, even in view of the documents cited in the search report. More than a few times, even a very quick glance at the file wrapper would make this abundantly clear.
It is a fact that if a national patent office performs only a “cursory” patent examination, or no patent examination at all, then some sophisticated, well-funded patent applicants will inevitably push the envelope and try to get as many patents as possible in their technical field – even if not all are valid – if they have an interest in doing so.
And why would these applicants do otherwise? They are making full use of the possibilities granted by the law.
On other hand, imagine a smaller company looking to design a new product. It finds out about a patent owned by a larger company, and consults with a patent attorney. The attorney studies the file wrapper, and finds out that the patent is likely infringed, but not valid, as granted. So far, so good… until the attorney tells their client that they need to go to court and spend €€€ on a nullity action, so that the patent will be reduced in scope… in a few years’ time.
In such a situation, how many smaller companies will simply give up, or pay a license on a patent that is not actually valid? Answer: many will. I have seen it happen more than once. **This** is one reason why patent examination was introduced in France – and, in my opinion, very rightly so, all the more since the French judicial system is as slow as it is appallingly underfunded.
The fact that patentees may limit their patent after grant makes the situation even worse, as it can be exceedingly difficult to predict in which way an invalid patent may be limited and suddenly become valid again.
Now, of course not-as-well-funded patent applicants will have a harder time under a full patent examination regime. But at least, after grant, the playing field will be a little less stacked against them.
Also, full patent examination can also free some smaller patent applicants from the unfortunate illusion that their granted-but-not-examined patent is worth more than the paper is printed on.
All well and good, Extraneous, but sometimes the cure can be worse than the disease.
I’m alluding to the presumption of validity of “examined rights”. If judges presume that a claim duly issued by the Patent Office is proven to be not invalid, the accused infringer is more likely to be enjoined, even before the merits of the patent are examined in any inter Partes proceedings. Bully patent owners prosper, even more than in a zero examination country. Se the USA, if you still have doubts about what I’m asserting.
What would be nice for those competing with a patent holder is a country in which courts explore the obviousness issue (which is usually the key issue in patent validity) with the same approach and rigour as the Patent Office, no more, no less. But that places on the Patent Office a huge burden to “do” the obviousness enquiry as exhaustively as it would be done in litigation. In such a country, business decisions about patent validity can be made with greater degree of confidence. Parties will settle rather than litigate.
Fortunately, there is such an Approach, such a Patent Office: the Problem/Solution Approach at the EPO. The only thing stopping the courts adopting it Lock, Stock and Barrel is patent litigator complacency and patent judge professional jealousy suffered by patent judges labouring under the well-known NIH syndrome.
In my experience to applicants getting a proper search result is often more important than being granted a patent – if there is critical state of the art they want to know.
Also, in my experience (no proof, just gut feeling) the quality of search results at the EPO has declined – the examiners there are no longer able or willing to find the right state of the art (or they simply don’t care anymore?). With the reduced training and the top-down pressure I would not blame them (find the right document and you can’t grant a patent…). I have seen EPO searches, where they imply left out the best documents that an earlier search at a national office found.
So maybe Swiss industry would just like to get better search results?
@MaxDrei: Is the PSA really the best approach? After all, long before the presidents started ignoring the EPC, the EPC was ignored when the PSA was implemented. Where in the EPC does it say there is something like the closest prior art and you can ignore everything else? The courts don’t read this from the EPC either. As far as I can see, the judiciary in Europe follows the rest of the PSA more or less closely, but often with improvements where the PSA is too formalistic and gives – IMO rightly so – more room to what the person skilled in the art can do.
That the quality of EPO searches has degraded can be verified by checking when in opposition the patent is revoked or severely limited in view of prior art which should have been, but was not found during the original search.
Another source of problems is an early stop of the search because allegedly highly relevant documents are found, but it turns out that the applicant can show that those documents are not relevant at all. Carrying out a further search: no as it costs time and I risk not to reach my target.
For a long time it was therefore considered that a good search was a search which has revealed lots of highly relevant documents. That explains lots of searches with a large number of pseudo X documents.
In some areas of the EPO, examination was considered a useless exercise of playing with words, and only the search mattered.
If the claims are amended for instance by bringing into them features from the description, then you simply skip a further search or say that the new features are not unitary and you even try not to admit the claim. If you cannot squeeze it out for this reason, you simply grant without a further search.
There is also the super BEST effect you mention: if you close both eyes and do not find relevant documents, then a direct grant is so easy to achieve.
Limiting the training time is certainly a factor which has contributed to lowering the quality of searches, but also of examination. For a long time training was distributed over three years. But now with five year contracts, it was not possible to sell the change to the AC with a three year training period. It was thus necessary to limit training to two years.
As far as the PSA is concerned, it should be looked at as a tool and not the saviour we needed, but overall it works quite well and avoids to a large extent ex-post facto argumentation. Although there is not trace in the EPC of the PSA, you will nowadays barely any decision of the BA not using the PSA.
Well thanks for those comments, Wondering. I could well imagine that the employment conditions at the EPO are having a deleterious effect on search quality but I cannot say that I personally have noticed it yet. What I can say is that the EPO puts out its EESR’s now much earlier, and that this has a very important consequence. Until recently, we used to get for prosecution at the EPO the amended claims settled at the USPTO, with unhappy consequences for the Applicant (in, say, Japan) the EPO representative and the EPO ED. But now, thanks to the “early certainty” initiative, and delays at the USPTO, it is the other way round. The US attorney gets the settled EPO claims, as their starting point for prosecution amendment at the USPTO. Good, eh?
You doubt that EPO-PSA is the best way to debate the obviousness issue but your reasons don’t even begin to convince me. It is news to me that under EPO-PSA the obviousness enquiry “can “ignore” everything else in the prior art universe except the CPA. And anyway, by now, in pharma patent litigation round the world, regardless whether they use PSA, Pozzoli or Graham factors, is it not usual for the PHOSITA to start from a “lead compound” in the prior art?
As to EPO-PSA imposing restrictions on “what the person skilled in the art can do” this is again news to me. Tell me more of what you have in mind, please.