PatA revision: The dust is settling (slowly)

Reading time: 3 minutes

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

SUMMARY OF PUBLIC CONSULTATION

INDIVIDUAL SUBMISSIONS

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The (more) competent court shall decide examination and opposition appeals

Reading time: 2 minutes

A major revision of the Swiss PatA is currently in the making; see this Blog here, here and here. Inter alia, examination on the merits (novelty and inventive step) as well as a full-fledged opposition proceeding is proposed.

According to the draft bill, the Federal Administrative Court should have handled appeals against decisions of the IPI in examination and opposition. This has been criticized by many because the FPC would appear to be the more intuitive choice. The submissions during the public consultation almost unanimously reflect this.

The Supreme Court recommends that the FPC should handle such appeals:

The FPC is apparently willing to do so and proposes itself:

The Federal Administrative Court abstains from taking a position on whether or not it should be the responsible authority (obviously already in knowledge of the Supreme Court’s take on this), but reminds that independence of justice needs to be maintained if the FPC would be responsible for both administrative and civil proceedings:

But this can surely be resolved. INGRES, AIPPI, VESPA, VIPS and VSP have jointly commissioned an expert opinion of Prof. Dr. Rainer J. Schweizer who proposes to install a second administrative department (‘zweite verwaltungsgerichtliche Abteilung’).

In my perception, this addresses — and resolves — the reservations of the Federal Administrative Court. Some amendments to the PatCA will be necessary, but this appears doable. Accordingly, I would be surprised if the FPC would not turn out to be the appeal authority in the final bill.

Reported by Martin WILMING

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Proposed amendment of the PatA: Do you like it?

As mentioned earlier on this Blog here, the draft bill of the new PatA has been published recently, in accordance with the ‘motion Hefti’.

Clearly, the interested circles had been involved early on in the discussion, see e.g. the Polynomics report of 2015 that recommended the introduction of examination on the merits for patents, alongside with a utility model. But participation in the underlying survey had been low at that time (3.8% return rate), and there have also been critical voices (see e.g. here, fulltext available here).

I’d really like to know, in the face of the draft bill with examination on the merits for patents, alongside with a utility model:

Do you support the gist of the draft bill, i.e. the 'motion Hefti'?

  • No (64%, 25 Votes)
  • Yes (36%, 14 Votes)

Total Voters: 39

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The poll has been open 14-22 November 2020.

Thank you very much for taking the time to respond.

/MW

POLYNOMICS REPORT (2015)

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