I have reported several times about the substantial revision of the Swiss Patent Act that is currently in the making; see e.g. this Blog here.
Back in parliament, the Science, Education and Culture Committee (SECC) of the Council of States has now requested some changes; see the ‘Fahne’ below, p. 22-23 (available online here). The proposed changes are apparently meant to address two issues that have been raised earlier e.g. by Lara Dorigo, Alexandra Bühlmann and Thomas Legler; see here.
But, unfortunately, the issues are anything but fixed.
Suspensive effect of appeals
On a quick read, I was happy to see that the suspensive effect was essentially gone. The Council of States requests that an appeal against the grant of a patent shall not have suspensive effect. At least not as a rule: The IPI may exceptionally (“ausnahmsweise”) issue a grant with suspensive effect. Likewise, the FPC may order suspensive effect when an appeal has already been filed.
The closer I looked, the more grumpy I became.
The default of ‘no suspensive effect’ shall apply to appeals according to paragraph (2) only:
The issue is that this paragraph (2) pertains exclusively to appeals that raise objections with respect to certain exclusions from patentability (the human body, gene sequences, etc.):
In practical terms, this is a complete non-issue. Oppositions have been possible for the very same reasons since 2008 (Art. 59c PatA). Not a single opposition has been filed ever since. Zero. This speaks volumes. The requested change is devoid of any practical relevance.
What really matters for third parties are substantive issues like novelty, inventive step, allowability of amendments, etc. This is where the action is. However, all these grounds are only dealt with in paragraph (3):
Appeals raised on such grounds would still have a suspensive effect. Let’s face it: This will affect essentially all appeals!
I am not aware of any major IP jurisdiction where post-grant opposition/appeal proceedings would make a patent unenforceable by default during pendency of the opposition/appeal proceedings.
It must not be forgotten that the supposed-to-be revamped Swiss patent is not without alternative in order to get patent protection in Switzerland. A European patent validated in Switzerland gets you exactly there, too. Potential applicants will vote with their feet. Frankly, I simply cannot sell anyone a Swiss patent that is granted with suspensive effect, i.e. which is not immediately enforceable. The revamped Swiss patent won’t be substantially cheaper than a European patent validated in Switzerland, it won’t proceed to grant substantially quicker (if at all), the IPI will first have to earn a reputation for examination on the merits (the EPO is still a benchmark in this respect, despite some concerns) — and on top of all these challenges, Swiss patents shall be granted with leg irons?
This is a very, very bad idea.
I wonder why there should be any possibility for a suspensive effect at all, ever. If we don’t get rid of the suspensive effect, the whole reform might become non-starter. And I really mean this in the sense of ‘Rohrkrepierer’. The suspensive effect is a strong disincentive to choose a Swiss patent. It will end up as a shelf warmer.
I had the slight hope that the reference to paragraph (2) was only a typo. But, apparently, it is not. The press release of the SECC reads as follows:
Ein Verbandsbeschwerderecht, wie es die Revisionsvorlage vorsieht, lehnt die Kommission ab. Sie schlägt eine Regelung vor, welche Dritte berechtigt, mit einer Beschwerde die Patentauschlussgründe gemäss Artikel 1a, 1b und 2 des Patentgesetzes (PatG) geltend zu machen. Grundsätzlich hat eine solche Beschwerde keine aufschiebende Wirkung, wobei die Beschwerdeinstanz diese ausnahmsweise einräumen kann.
I take from this that the exclusive reference to paragraph (2) is intentional.
Further, what I dislike is that third parties have a right to appeal against the grant on substantive grounds such as e.g. novelty or inventive step only in accordance with Art. 48 APA.
Why does it have to be so complicated and restrictive?
A patent has erga omnes effect. Why should a third party need to demonstrate «interests worthy of protection» or to be «specifically affected» by the patent? In substance, the appeal against the grant will be opposition proceedings. Such proceedings are ‘Popularrechtsbehelfe’ all around: At the EPO (Art. 99 EPC, «any person»), in Germany (§ 59 PatA, «jedermann»), etc.
Right for organizations to appeal
The draft bill had included a specific provision for organizations’ right to appeal. The Council of States proposes to delete this.
This makes perfectly sense to me, for all the good reasons given e.g. by Lara, Alexandra and Thomas.
✍ MW
FAHNE 2023 IV S
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