Swiss government approves radical revisions to patent examination procedure

The Council of States in Switzerland comprises the upper house of the Federal Assembly, and the lower house of the National Council. Earlier this week, the legislative body waved through radical changes to how the IPI, based in Bern, will examine novelty and inventive step when granting patents in the future.

Observers expect the Swiss Parliament to approve the measures during the course of 2024, with a new Swiss Patent Act giving parties the option of a ‘full granting’, rather than ‘partial granting’, of their patents. The Swiss government, as supported by various bodies such as the Association of the Swiss Patent and Trademark Attorneys (VSP – ASCPI – ASPTA), proposed the changes to ascertain a more thorough and transparent examination and appeal procedure.

Swiss Patent Act developments

Since it was founded in 1888, the IPI has examined thousands of patent applications: perhaps its most famous former employee is Albert Einstein, who worked there as a patent examiner from 1903 to 1914. A draft of the proposed amendments was first published in 2019, after practitioners voiced concerns that the popularity of a Unified Patent Court might discourage patent applicants from filing in non-EU countries such as Switzerland.

In 2021, the Federal Council published a notice acknowledging that the council mostly welcomed proposed amendments put forward in 2020, which had focused on introducing a “fully examined Swiss patent together with a utility model as an unexamined IP right”.

However, the consultation found that passing both amendments was too rigid. The council desired Switzerland to retain a flexible patent system, leading to a decision not to introduce the utility model right. It did, however, support the motion to introduce a fully examined Swiss patent upon request of the party, but the measures remain optional. Parties can still request that the office confirms their patent as partially examined, which will incur a lower cost.

Examining the prior art

However, updating the Swiss Patent Act to ensure examination of novelty and inventive step is only the beginning. In the future, the IPI will produce a mandatory search report to establish the prior art in the field of the invention. Each patent will have this attached. The report, like those which the European Patent Office produces, will indicate patentable subject matter. Currently, a patent application in Switzerland must merely hit the necessary formalities, for example typography, in order for an examiner to certify a patent as partially granted. Examiners do not scrutinise the prior art.

The changes mean that, like at the EPO, an opponent can challenge a granted patent application on the merits – i.e. novelty or inventive step. The council has also clarified the appeal procedure, with the Federal Patent Court now reviewing IPI decisions. The council has abolished the use of the IPI’s internal appeal procedure.

Fluent in three languages

While observers assume the changes will be a boon for Switzerland, some have raised concerns regarding the impact of quality on the country’s IP. For example, no national quality benchmark regarding novelty and inventive step currently exists for the examiners.

Concerns were also raised regarding the capacity of the IPI staff to shoulder another stage amid an already lengthy patent granting procedure. Furthermore, examiners must also now scrutinise patent applications which cover a variety of technical fields in German, French and Italian, which are the three official Swiss languages. It is currently unclear what the cost burden will be for applicants, as compared to the EPO.

Furthermore, companies wishing to obtain ‘full grant’ protection in Switzerland can currently still obtain a valid European patent via the standard EPO procedure. This has led some commentators to question the necessity of adding another stage to the national Swiss patent process.

On the other hand, supporters say the development will encourage Swiss-based SMEs to file their patents in the country. They hope this will foster innovation in Switzerland, which while small is home to some of the world’s leading technology and telecommunication companies, as well as pharmaceutical giants. The council also cites the measures as helping increase transparency and legal certainty for parties.

A language of choice

Aside from updates to the Swiss Patent Act, the country’s practitioners are amplifying wishes of their clients to hear more proceedings in English. Recently, the Swiss Federal Patent Court confirmed that parties can file, and have their patent examined on the merits, in the language. Furthermore, as long as the party ensures the headline and abstract is in German, French or Italian, then the remaining documentation can be in English.

Clearly, current language debates among European patent practitioners are not confined only to the UPC. In Switzerland, the change is the result of a push by practitioners for the Swiss IP courts to use English more. This is influenced by the high number of international clients who communicate in English. However, the court does not yet allow its judges to write formal decision in English. Perhaps this is yet another language debate for the future.