Switzerland Passes Law to Improve the Quality of Swiss Patents

A. The Making of

1. Aim to Strengthen the Swiss National Patent

Today, Parliament unanimously passed the revision of the Swiss Patent Act («Motion Hefti»). Certain stakeholders criticized that, under the current law, Swiss national patents are granted by the Swiss Federal Institute of Intellectual Property (IPI) without an examination of novelty and inventive step, forcing inventors seeking a fully examined patent to apply for a European patent. This situation was considered unsatisfactory, especially for small and medium-sized companies interested in reliable local patent protection. A need was identified for a national property right comparable in quality to the European patent.

2. Relevance of Swiss National Patent

Looking at the actual number of Swiss national patents in force, one might question the need for this revision. At first glance, Swiss national patents seem to be of limited relevance compared to European patents. In 2023, 5,934 national patents were in force, compared to 145,627 European patents with effect in Switzerland. National patents thus only account for about 4% to 5%.

However, it would be wrong to conclude that national patents are insignificant and the efforts to strengthen the patent unnecessary, therefore. For certain users and generally local industries, the national patent fulfills a considerable function in protecting innovation. A look at the statistics of the Federal Patent Court shows that national patents were involved in 36% of all ordinary proceedings in 2023. This compares to 55% of cases involving European patents with effect in Switzerland. Similarly, in summary proceedings, the ratio is 25% national patents against 67% European patents.

Although these statistics should be viewed with caution, as all supplementary protection certificates are counted as Swiss patents even if their respective basic patent is an European patent, they tend to confirm that national patents play more than just an insignificant role in Switzerland. Swiss national patents are disproportionately important for the enforcement of innovation protection.

3. Consultation and Legislative Proposal

The first legislative draft proposed (i) to subject Swiss national patents to a mandatory full patent examination, including novelty and inventive step, (ii) to extend the grounds for opposition to lack of novelty and lack of inventive step, and (iii) to provide for an appeal procedure before the Federal Administrative Court. In addition, the introduction of a Swiss utility model was proposed as a cost-effective replacement for the current national patent, which is not fully examined.

The consultation showed that stakeholders supported the general thrust of improving the quality of the Swiss national patent, but there was also a widespread desire to simplify the initial legislative proposal and its proposed innovations.

The modified draft presented on November 16, 2022, took into account the criticisms expressed in the consultation. The idea of introducing a utility model was dropped. However, the objective of strengthening the Swiss national patent remained. The modified draft included the possibility to request a full examination, including novelty and inventive step. In addition, the goal of increasing legal certainty was taken into account with the proposal to introduce a mandatory and publishable prior art search by the IPI for all patent applications. The modified draft also proposed to abolish the opposition procedure and to provide for a direct appeal to a court, namely the Federal Patent Court instead of the Federal Administrative Court as originally envisaged.

Another widely recognized wish of users of the Swiss patent system, the possibility of obtaining a Swiss national patent in English instead of in a national language, also found its way into the draft bill. Finally, the opportunity of an ongoing revision of the law was used to harmonize the language of the patent law and to make largely uncontroversial amendments.

The most important changes introduced by the new law are briefly described below. Some of these changes still have to be specified by the Federal Council in an ordinance. It is currently expected that the new law will enter into force in mid-2026.

B. Amendments to the PatA

1. New Ground for Invalidity

The current list of grounds for invalidity does not include the extension of the scope of protection. Even under current law, patents can only be limited, not extended. However, violations of this principle did not lead to the invalidity of the patent.

This will change with the addition of a new ground for invalidity corresponding to Article 138(d) EPC. The new ground is introduced in Article 26(1) PatA as letter c^bis. Like all grounds for invalidity under Swiss patent law, this ground applies equally to Swiss patents and Swiss designations of European patents.

2. Mandatory Prior Art Search

Under the new Patent Act, the IPI must prepare a prior art report for each patent application (new Article 57a PatA). As a rule, the prior art report will be published together with the patent application (new Article 58a(2) PatA) and filed in the patent file. It is the intention of the legislator that the applicant and third parties should be able to assess on the basis of this report whether they wish to request a full examination of a patent application. With this amendment, the legislator also intends to provide more legal certainty for patents for which a full examination is not requested and which are therefore granted without an assessment of novelty and inventive step. The prior art search report provides valuable information to parties confronted with the patent as to whether the invention may meet the requirements of novelty and inventiveness.

The new law provides that the IPI may, in exceptional cases and under conditions to be determined by the Federal Council by ordinance, dispense with the preparation of a prior art report (new Article 57a(3) and (4) PatA). The Dispatch on the amendment already outlined what such exceptional cases might be. In particular, it should be possible to dispense with a prior art report if sufficient documentation on the prior art is already available, e.g. EPO reports on a priority application with identical or sufficiently similar patent claims.

3. Optional Full Examination

In the future, the applicant or any other person may request a full examination of the patent application for novelty and inventive step (new Article 58b(2) PatA). The request for examination must be filed within six months of the publication of the prior art report (new Article 58b(3) PatA). Once filed, a request for a full examination cannot be withdrawn (new Article 58b(4) PatA).

Third-party requests for full examination will only be considered if the applicant has first requested substantive examination. This prevents third parties from forcing the full examination of a patent application that the applicant does not wish to pursue. By filing a request for a full examination, third parties do not become parties to the proceedings (new Article 58b(5) PatA).

4. No Intra-Administrative Opposition, but Possibility of Direct Appeal

The new legislation abolishes the possibility of filing an internal administrative opposition against decisions of the IPI (old Article 59c PatA). The procedure has never been used since its existence. Instead, under the new law, appeals against decisions of the IPI may be filed directly with the Federal Patent Court (new Article 59c PatA). This applies to both formal examination and full examination decisions.

Under the new law, third parties may appeal decisions without having to demonstrate a special interest if they claim that the subject matter of the patent is excluded from patentability under Articles 1a, 1b and 2. These articles exclude from patentability the human body, gene sequences and inventions the exploitation of which would offend human dignity or otherwise be contrary to public policy or morality. Third-party appeals based on other grounds of invalidity require the appellant to show that he or she is significantly affected by the decision and has a vested interest worthy of protection.

Third-party appeals do not have a suspensive effect in general, while the appeal initiated by the applicant has. Upon request, third-party appeals can also be granted a suspensive effect.

The time limit for filing an appeal is four months from the publication of the grant of the patent. This differs both from the nine-month time limit known for oppositions at the EPO and from the usual 30-day time limit in administrative proceedings.

5. Swiss Patent in English

The new law provides for the possibility of applying for and obtaining Swiss national patents in English (new Article 58a(4) PatA). This should enable applicants to save on translation costs and to avoid translation errors which could have a negative impact on the scope of protection or the validity of the patent. Only the title of the invention and the abstract still need to be translated into an official Swiss language (new Article 60(4) PatA).

6. Fees

The amendments, namely the full examination and the mandatory prior art search report, will have an impact on the costs for applicants and third parties.

At this time, it is envisaged that the fee for the full examination will have to be borne by the party requesting the examination, and it is anticipated that the new mandatory search will require an adjustment to the existing fee regulation. However, these adjustments will not be implemented in the Patent Act. Rather, the IPI is responsible for setting the fees (Article 41 PatA) and the necessary changes will be reflected in the relevant ordinances. It is therefore not yet clear to what extent the changes will affect search and examination fees.

The IPI expects to incur additional costs of between 0.6 and 2.1 million Swiss francs. This estimate assumes that the filing fee of currently CHF 200 for a patent with ten claims and the search and examination fee of currently CHF 500 will not increase significantly after the new law enters into force. In its Dispatch, the Federal Council emphasizes that an increase in fees to compensate for these one-time costs would contradict the principle that one-time patent fees should be kept to a minimum and should not necessarily cover costs. Instead, the Federal Council considers it more pragmatic to use the annual maintenance fees as a means to cover the additional financial burden resulting from the legislative changes.

The maintenance fees, which currently start at CHF 100 in year 4 and rise to CHF 960 in year 20, would need to be increased by between 2% and 8% to adequately cover the expected increase in costs. The projections indicate a return to the level of fees before 2020, when the fees were reduced.