On October 14, 2020, the Federal Council opened a consultation procedure for the partial revision of the Swiss Federal Act on Patents for Inventions (FPA). According to the new draft revision, the Swiss Federal Institute for Intellectual Property (FIIP) will be tasked with examining whether an invention submitted for a patent application is new and inventive. This substantial examination is not required under the current Swiss patent system.
The idea behind the current patent system is that it is less costly and bureaucratic when granting patents while leaving it up to courts to decide in the event of a dispute whether a patent meets its substantial requirements.
By virtue of this system, the party causing an invalid patent will be required to bear the costs instead of generating huge administrative costs in advance for the granting of a patent. Consequently, in this system, only a dispute will reveal whether a patent is permanently valid or not. This is different than the EU patent system where the European Patent Office (EPO) examines the requirements of novelty and inventive steps in the application phase. As a result of these differences, European patents have been given greater weight than Swiss patents.
Swiss inventors, however, have the option to apply directly for a European patent instead of a Swiss patent and then choose the designated countries that the European patent will extend to.
Under the proposed partial revision of the FPA, the Federal Council would like to introduce a comprehensive substantial examination process for patent applications to the FIIP, which should create more legal certainty on the patent's status, and make Swiss patents easier to enforce and resistant against nullity attacks in court.
Since these requirements will increase the hurdles for examining and granting patents, the Federal Council also wants to introduce a utility model (i.e. a 'small patent') as a further protective instrument. The utility model would be granted without examining the substantial content of the invention submitted and would be faster and cheaper to obtain than a patent, but would offer a maximum protection term of only ten years (i.e. half of the 20-year protection term granted to full patents). Such utility models (Gebrauchsmuster, in German) have long been known in the EU.
The purpose of the partial revision of the FPA is to provide inventors with more opportunities to protect innovations. Furthermore, the utility model can also be used in a patent box, which creates tax advantages almost identical to a normal fully-fledged patent.
The consultation for this revision will last until 1 February 2021 with interest building as to what stakeholder opinions will be, particularly since the revision has raised some controversy, such as the view that the introduction of a full-patent concept would create burdensome financial hurdles for small and medium-sized businesses. These critics suggest that the current Swiss patent system be maintained, but include opposition proceedings in the application stage where a third-opposing party could launch a validity examination (i.e. a full-patent examination) to have it rejected. In this way, the majority of patents could be filed in a straight-forward manner (without substantial examination) while only opposed patents would be subject to substantial examination upon request.
CMS Switzerland is closely following the FPA legislative revision process and will provide updates on the consultation.
For more information on the Swiss patent process, contact your CMS partner or local CMS experts:
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