PatA revision: The dust is settling (slowly)

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The envisaged changes to the Swiss PatA have caused a very intense discussion amongst stakeholders. Opinions could hardly have been more different, ranging from outright damnation of examination on the merits («bureaucratic monster») to wholehearted welcome («overdue»).

See this Blog here for some background information about how it all started; the draft bill is commented on this Blog here.

There had been a public consultation of the draft bill, with a lot of individual contributions. An official summary of the contributions is available here.

Now, the dust begins to settle. The Federal Council has informed the public on 18 August 2021 that some (major) adjustments will be made to the draft bill, as follows.

The tried and tested ‘unexamined’ Swiss patent is staying

In general, a patent application will not be examined on the merits, i.e. for novelty and inventive step. As a result, an ‘unexamined’ — but less expensive — IP right will continue to be available to inventors, as called for by the motion.

In turn, the unexamined utility model (with reduced term) that was foreseen in the draft bill is off the table.

fully examined Swiss patent on request

It shall be possible to request examination on the merits.

What is not fully clear to me, though, is whether only the applicant may request examination, or whether any third party can also do so (like, e.g., in Germany; §44(2) PatA). I have much sympathy for the latter. It is an element to improve legal certainty, which is an explicit aim of the motion.

Compulsory search reports

To improve legal certainty also for the ‘unexamined’ patent, every patent application shall be supplemented with a compulsory search report. The Federal Council holds that it will therefore be possible to better evaluate whether the invention is patentable.

I doubt that this will really improve legal certainty. A negative search report is mostly not the end but rather the beginning, i.e. the beginning of a thought process on the applicant’s side of how to proceed to grant. In most cases, there is patentable subject-matter. A negative search report might provoke a counter-productive ‘no risk’ illusion for the public.

Further, I wonder how tax authorities might react on a ‘negative’ search report in the context of the patent box. It would be a pity if this creates a ‘presumption of invalidity’ and applicants then have to go the long way through examination on the merits in order to benefit from the patent box.

Streamlined appeal procedure at the FPC

The opposition procedure introduced in 2008 shall be dispensed with altogether. It had never been used anyway.

Instead, the Federal Council intends that IPI decisions be reviewed in appeal proceedings directly through the FPC. I understand that this shall also apply to the decision to grant a patent, i.e. that third parties will be able to challenge the grant directly at the FPC, as foreshadowed by the opinion of Prof. Rainer SCHWEIZER:

It remains to be seen how this will actually be put in place, but with a (very) low threshold for the necessary legal interest of a third party and competitive fees of the FPC for these proceedings, I have no doubt that this will work smoothly.

The Federal Council has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022.

Reported by Martin WILMING

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9 Replies to “PatA revision: The dust is settling (slowly)”

  1. In view of the consultation, only applicants will be in a position to opt for substantive examination if the applicants so wish. Imposing a substantive examination on applicants was the main criticism against the draft. It will not come back via the back door of a third party examination request.

    1. I’m not so sure (yet). Improving legal certainty is a major aim of the motion, and it is also mentioned by the Federal Council again. Since the search report is mandatory in any event, I don’t believe that there will be many cases where a third party would indeed pay the examination fee. But if that happened in some occasions, then why not? One might say that this even serves the interest of the patentee because it avoids more costly nullity proceedings later on.
      Interestingly, I had asked on LinkedIn a while ago whether a third party should be able to trigger examination on the merits. 76% were in favor of this. See https://www.linkedin.com/posts/mwilming_examination-on-the-merits-for-swiss-patents-activity-6834371410241036288-Vw3x

  2. The issue is not so much the low interest of the third party appellant. The issue is the object of the appeal: what are you going to challenge in relation with the (appealed) decision? If the decision is not supposed to extend to anticipation (substantive examination opted out), then the fact that there is anticipating prior art against a granted patent is not a flaw in the decision to grant the patent. let’s see how many patents will undergo full examination at the IGE.

    1. That’s an interesting point. Personally, I would be in favour of something similar to the ‘Gebrauchsmusterlöschungsverfahren’ in Germany. The utility model has not been examined on the merits, but can still be revoked on the merits. In my perception, it would be a pity if examined patents could be challenged in opposition also on substantive grounds, while unexamined patents could only be challenged in costly nullity proceedings on substantive grounds. This doesn’t feel right to me. Food for further thought, anyway.

  3. This is precisely the difference between an appeal and an opposition/cancellation procedure. We know now that the government has decided, also to limit the burden on SME/startup applicants, to not just renounce to extend the scope of oppositions but to get rid of them entirely. An appeal (review instance) is not an opposition (1st instance). The desired legal certainty you are mentioning higher up has been addressed to a certain extent by the mandatory search. Your criticism is certainly valid but has not convinced industry (especially SMEs) to somehow mimic EPO proceedings. This is why substantive examination has become optional (really optional) compared to the draft. The IGE has now a big job to almost entirely redraft the bill and the IGE is fully aware of this.

    1. I agree, redrafting the bill will be a huge exercise. In doing so, what if the PatA expressly codified that unexamined patents could also be challenged on substantive grounds in appeal proceedings? It´s not my home turf, but since the PatA codifies also for unexamined patents that they are granted for new and non-obvious inventions only (Art. 1(1)-(2) PatA) this might be okay(?). Even if the IPI had not examined novelty and inventive step, the grant occured in violation of Art. 1 PatA.

  4. “In my perception, it would be a pity if examined patents could be challenged in opposition also on substantive grounds, while unexamined patents could only be challenged in costly nullity proceedings on substantive grounds.”

    The cost differences between opposition and nullity proceedings are, potentially, the court fee (which have not even been set in the draft bill). The attorney’s hourly rate and work is the same. In CH it is even worse than at the EPO since, in practice, you need a patent attorney and a bar attorney to go to the courts. In addition, we have 2 of them: FPC + FC. Are you going to recommend your clients to get fully examined patents at the IGE, for CH only, or at the EPO, for the continent?

  5. What you suggest is to have the FPC as first instance opposition authority. It could be surely done but it is not what has been communicated by the government. The government wants to get rid of oppositions entirely.

    1. I’m not sure whether this really was the Federal Council’s intention. They said that “[t]he opposition procedure introduced in 2008 is to be dispensed with altogether. It has never been resorted to since it was introduced.” The explicit reference to what has been introduced in 2008 might mean that the Federal Council wants to abolish the proceedings at the IPI, as this is what had been introduced back in 2008. It still held that “IPI decisions must be reviewable by a court on appeal.” When the IPI has granted an unexamined patent in violation of Art. 1 PatA, this might well be called a “review”, i.e. be subject to appeal proceedings(?).

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