Modernising the patent examination procedure
Bern, 18.08.2021 - The Federal Council acknowledged the results of the consultation on the partial revision of the Patents Act at its meeting of 18 August 2021 and decided on the further course of action. Modernising the patent examination procedure was, in principle, welcomed in the consultation. The Federal Council has decided to take into account the criticism voiced in individual areas by making adjustments to the contents of the draft bill. It has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022.
The partial revision of the Patents Act, which the Federal Council submitted for consultation on 14 October 2020, was aimed primarily at fulfilling the parliamentary mandate to introduce a fully examined Swiss patent together with a utility model as an unexamined IP right (19.3228 Hefti Motion). The consultation, however, revealed that an either-or solution - either a fully examined patent or a utility model - is too rigid, while a flexible patent examination is what is wanted.
The tried and tested 'unexamined' Swiss patent is staying
In view of the results of the consultation, the Federal Council continues to support the introduction of a fully examined patent. It decided, however, that a utility model will not be introduced and that it would like to keep the current patent system, to the extent that - according to feedback from the consultation - it has proved its worth. In general, a patent application will therefore still not be examined for novelty and inventive step by the Swiss Federal Institute of Intellectual Property (IPI). As a result, an 'unexamined' - but less expensive - IP right will continue to be available to inventors as called for by the motion.
Flexible patent examination - fully examined Swiss patent on request
In future, inventors should also be able to request that all patentability requirements are examined (in particular novelty and inventive step) by the IPI. Such a fully examined Swiss patent is, in particular, for SMEs a valuable alternative to a fully examined European patent granted by the European Patent Office (EPO) with protection extended to Switzerland - a path that is often laborious and expensive for an SME.
More legal certainty with obligatory searches
The Federal Council would also like to create more legal certainty for the 'unexamined' IP right, as was called for in both the motion and consultation. As a result, 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 to better evaluate whether the invention can really be protected by a patent.
Streamlined appeal procedure with a court specialised in patent matters
The Federal Council wants to make the Swiss patent system as lean as possible in order to offer an attractive alternative to the European patent. IPI decisions must be reviewable by a court on appeal. This review is to happen in future directly through the Federal Patent Court, which has the necessary high level of technical expertise. The opposition procedure introduced in 2008 is to be dispensed with altogether. It has never been resorted to since it was introduced.
Address for enquiries
Alexander Pfister, Head of Legal Services – Industrial Property Rights
Swiss Federal Institute of Intellectual Property IPI
Direct line: T +41 31 377 74 88
Esther Marchetti-Baumgartner, Legal Services – Industrial Property Rights
Swiss Federal Institute of Intellectual Property IPI
Direct line: T +41 31 377 72 64
Publisher
The Federal Council
https://www.admin.ch/gov/en/start.html
Swiss Federal Institute of Intellectual Property
http://www.ige.ch
Federal Department of Justice and Police
http://www.ejpd.admin.ch
