[Guest post] Expected introduction of a full patent examination in Switzerland: Opportunity or burden?

The IPKat has received and is pleased to host a guest contribution by Daria Bohatchuk (University of Basel) on the upcoming Swiss patent reform. Here’s what Daria writes:

Expected introduction of a full patent examination in Switzerland: Opportunity or burden?

by Daria Bohatchuk

The patent law revision is currently underway in Switzerland. On 16 November 2022, the Federal Council of Switzerland proposed a partial revision of the Federal Act on Patents for Inventions (Patents Act). On 30 January 2023, the Science, Education and Culture Committee of the Swiss Parliament (Committee) started deliberation on the relevant bill. During this first session, the Committee consulted experts from the technology transfer offices of ETH Zurich and EPFL Lausanne as well as representatives of the Swiss Union of Crafts and Small and Medium-sized Enterprises, scienceindustries and economiesuisse. For further consideration, the Committee has requested additional information and will continue deliberations on the bill at its next meeting, which will take place probably after the summer break.

Examination procedure

One of the main aspects of the revision touches upon the Swiss patent examination procedure and gives the possibility to request that Swiss Federal Institute of Intellectual Property (IPI) conducts a full examination of an individual patent application and thus obtain a fully examined Swiss patent.

Kat examining (Swiss) cheese

According to the existing Swiss patent examination procedure, the IPI conducts only a partial examination
limited to the grounds for exclusion (Art. 1, 1a, 1b and 2 of the Patents Act), industrial applicability and sufficient disclosure of the invention, but does not examine novelty and inventive step (Art. 59 (4) of the Patents Act, Botschaft, 11, 12). Such examination procedure is fast and inexpensive, but it results in the grant of a partially examined patent, which has legal effect in Switzerland but entails high uncertainty in case of its post-grant challenging (Botschaft, 2, 8). At the same time, the European Patent Office (EPO), granting European patents (EP) extended to have effect in Switzerland, examines all requirements for patentability, including novelty and inventive step (full examination). Against this background, in order to obtain a fully examined patent in Switzerland, companies can choose the patent procedure at the EPO in Munich (Botschaft, 2). As a result, there is an apparent loss of importance of the Swiss patent which is reflected in the statistics: about 750 national patents granted in Switzerland each year, compared to 12 000 patents examined by the EPO and validated in Switzerland per year (Botschaft, 2).

The proposed amendments to the Patents Act retain the existing system of partial examination, when the IPI does not examine the patent applications for novelty and inventive step. As an addition, under the bill, patent applicants and third parties are given an option to request a full examination of the patent application by the IPI, including the examination for novelty and inventive step.

The discussed bill also envisages other amendments to the Patents Act, which include the introduction of mandatory search supplementing every patent application, the abandonment of the opposition procedure before the IPI and the empowerment of the Federal Patent Court to review the IPI’s decisions in patent matters as an appeal authority, the establishment of a four-month deadline for appeals against the IPI’s decisions for entitled third parties and the right to submit non-commercial association appeals under specified conditions for certain organizations, the introduction of the possibility to use English in the procedures before the IPI (Botschaft, 3, 15, 16, 25 – 27). The above novelties, if implemented, will certainly affect the Swiss patent law landscape, but are beyond the scope of this brief review.

Full patent examination in Switzerland: quo vadis?

The revision of the Patents Act, especially the introduction of a full patent examination as a supplement to the existing patent procedure, raises a number of issues.

The proposed amendments could make the patent granted by the IPI more reliable, less susceptible to invalidation, and thus strengthen legal certainty in this regard. The implementation of the amendments will increase the capacities and enrich the corresponding expertise within the Swiss national patent system. Hence, Switzerland could become a more attractive location to file a patent application. As a result, Switzerland could increase its influence at the international and European level, retain its position as one of the world’s leading innovative countries, and become more independent in the patent field. It should be also noted that the proposed full patent examination leads to alignment with the EPC 2000 and the systems of most EPC member states as well as many countries worldwide (Botschaft, 22). Fully examined national patents are granted, for example, in Germany, Austria, Spain, the United Kingdom, Japan, South Korea, Singapore, and the United States of America (Botschaft, 8).

It should be taken into account that the revision of the Patents Act only affects the patents obtained through the Swiss national patent procedure and makes a difference mainly to individual inventors and small and medium-sized enterprises (SMEs), whose main market is in Switzerland and who are therefore interested in reliable local patent protection (Botschaft, 2). The amendments, if implemented, will allow to obtain a legally secure, fully examined Swiss patent. At the same time, the above stated statistics shows that patents granted by the IPI under the Swiss national patent procedure constitute a very small share (about 6%) in the total number of patents with protective effect for Switzerland. Given this, and the existing possibility of obtaining the EP that is fully examined and valid in Switzerland, the proportionality of the costs incurred by the proposed amendments must be well considered and balanced with the expected benefits.

The introduction of the fully examined Swiss patent will entail additional costs, in particular, for the salaries to the new patent examiners dealing with additional workload on the IPI, for the adaptation of internal processes and examination guidelines, etc. (Botschaft, 72). Taking into consideration that the IPI is independent of the federal budget (Art. 1 of the Federal Law on the Statute and Responsibilities of the Swiss Federal Institute of Intellectual Property) and is mainly financed by fees, such costs will have no direct impact on the Swiss budget (Botschaft, 72). At the same time, it can be foreseen that the patent law revision will result in a new fee structure and an increase in some of the fee rates imposed on applicants and patent holders. At this point, for the calculation of the fees and the IPI’s additional revenues, only assumptions can be made. As required by Law, the Institute Council of the IPI that regularly reviews the financial situation of the IPI and the Federal Council will determine the definitive fees in due course.

The ongoing revision of the Swiss Patents Act seems to be an equation with many unknowns. The actual effects of such revision will depend, in particular, on the following factors: the impact of the new patent procedure on the number of national Swiss patent applications (possibly both an increase of the number of applications due to the higher reliability of the national patent and a decrease due to the higher initial costs), the quality of the extended patent procedures within the IPI, the general economic environment, and others (Botschaft, 71).

As with everything in life, “only time will tell”. In the meantime, careful consideration of the proposed amendments should contribute to keeping the costs and benefits well-balanced and proportionate.