Swiss patent applications

Swiss patent: patentability search

When an invention is submitted to us, we first start by checking whether it complies with the requirement of novelty by means of a patentability search. The aim of this search is to determine precisely the prior art that is closest to the invention. The conclusions of this search are summarized in a report that contains a list of patents and articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.

The costs of the patentability search are invoiced according to a flat fee agreed in advance, often CHF 3’500 + VAT for an invention of average complexity. About half of inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.

Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics – in a project that contains several innovations – can be effectively protected and to optimize the possible drafting of a later application to highlight clearly the differences between the new invention and the documents uncovered by the search.

The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention, the uncovered prior art and the applicant’s budget.

Swiss patent: filing

The application must be filed with the Federal Institute for Intellectual Property (Institute) in Berne and must contain the following elements:

• A request for grant of the patent for Switzerland
• A description of the invention
• One or several claims
• The drawings to which the description refers

A filing date and number will be allocated to the application upon filing of these papers. This filing date may if applicable be claimed as priority date for subsequent filings made in other Paris Convention member states during the priority year. The request is generally formulated by filing, via encrypted email, a specific form made available by the authorities. No additions to the patent application are allowed after filing. It is thus necessary to ensure that a text be filed that is as complete as possible, that meets all requirements for grant of a patent and that will guarantee the applicant the best obtainable protection.

Examination of Swiss patent applications

Swiss patent applications are subjected only to a formal but not to a substantial examination. Even applications that are devoid of novelty can thus be accepted. The validity of a patent arising from such an application can however be contested by other parties by means of a legal action in cancellation. It is thus in the applicant’s interest to limit the sought protection so as to obtain a patent unlikely to be cancelled by the courts.

Advantages of Swiss patent applications

Swiss patent applications have first and foremost the advantage of being relatively inexpensive since the grant procedure is simplified to the maximum. Annual maintenance fees are due only from the 4th year onwards as counted from the filing date to keep the patent in force. The grant procedure is not particularly fast and it is quite common to have to wait 4 or 5 years before the patent is finally granted. As the applications are not subjected to a substantial examination, a Swiss application does not enjoy a presumption of validity as high as that of a patent granted after an examination procedure and may be more difficult in the end to commercialize.

Swiss patent: search report

It is possible to request an international type search on the basis of a Swiss patent application. The search is performed by the European Patent Office (EPO).

This search is optional but will be necessary in case the protection is extended in Europe or via the PCT. It is thus often recommended to request it early so as to obtain an opinion from the EPO before incurring costs for such an extension of the geographical coverage. It also enables the text filed in Europe or as an international patent application under the PCT to be adapted in order to take into account potential objections.

The European Patent Office generally strives to prepare this report within a nine months’ deadline after the filing date if the application does not claim any priority. The search report contains a list of documents uncovered by the search examiner and deemed relevant for assessing the novelty and inventiveness of the invention. The documents are attached to the report. A letter next to each document indicates its relevance. The main codes are “X”, used to designate a document which on its own is considered to call into question the novelty or the inventiveness of a claim of the application, and “Y”, which designates the combinations of documents which, together, allow the inventiveness of a claim to be challenged. The letter “A” designates the documents cited as technological background.

The aim of the search report is merely to establish the patentability of the claimed invention but not to assess whether it can be used freely without infringing existing patent rights. An older patent, containing claims sufficiently broad to be infringed by the invention but not describing the new characteristic claimed, will not necessarily be cited despite the applicant obviously having an interest in become aware of this patent.

The search report furthermore does not indicate whether the cited patents are still in force.