After
several years of preparatory work to modernize the Swiss patent system, on 15
March 2024 the National Council and the Council of States adopted the
long-awaited amendments to the Federal Patent Act. A modernized Swiss patent
system shall in particular increase the quality of Swiss patents, which is
desirable for both the patent holders themselves and the public due to improved
legal certainty.
Once the
referendum period has expired, the Federal Council can bring the amendments to
the Patent Act into force, which will probably be the case in 2025 at the
earliest. Furthermore, analogous amendments to the implementing Patent
Ordinance are still necessary, for which there will be a public consultation.
Some of the
most important changes in practice are listed here:
- The
previously voluntary official search by the Institute of Intellectual
Property (IPI) will now be mandatory for all Swiss patent applications.
This is intended to increase legal certainty for third parties. As before, the
official search report will be published, usually together with the patent
application.
- In
future, within six months of publication of the official search report, the patent
applicant or a third party can request an official full examination
of the patent application, i.e. an examination for novelty and inventive
step, as is already mandatory in most countries. Such a substantive
examination was previously not possible in Switzerland. However, a third party
requesting a full examination does not become a party to the examination proceedings.
Furthermore, a request for full examination only becomes effective if the
patent applicant has also filed a request for normal partial examination, i.e.
if a grant of the application is actually intended by the applicant.
- In
addition to the official languages German, French and Italian, Swiss patent
applications can now also be examined and granted in English. This
measure can save translation costs, for example if an applicant requires an
English version of the application for further patent applications abroad
anyway. It also eliminates the risk of translation errors.
- In
future, affected third parties will be able to lodge an administrative
appeal against the grant of a Swiss patent with the Federal
Patent Court within a period of four months after publication of the
grant of the patent. By default, such an appeal by third parties will have no
suspensive effect, i.e. the patent concerned remains legally valid and
enforceable in court during the appeal proceedings. Although an administrative
appeal was already possible in the past, it was limited to formal and
procedural violations of the law during the examination procedure. For fully
examined Swiss patents, the new appeal procedure will in practice have a
similar function as the opposition procedure before the European Patent Office has
for European patents, although there will be differences in detail.
- The
extension of the scope of protection after the grant of a Swiss patent
or the Swiss part of a European patent will in future constitute a ground
for nullity. If, for example, the patent claims are amended after the grant
of a patent in administrative proceedings (e.g. in European opposition
proceedings or in the new appeal proceedings before the Federal Patent Court),
it will in future be possible to bring an action for revocation of the patent
if these new patent claims cover a subject matter that was not covered by the
patent as originally granted.
The
additional workload for the IPI is expected to have an impact on patent fees.
In particular, the amount of the official fee for full examination will be
decisive in determining how many patent applicants will make use of the new
option of full examination. According to the Federal Council, however, a
relevant part of the additional costs will probably be covered by a slight
increase in the annual maintenance fees.