In brief: patent prosecution in Switzerland

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to article 1 of the Swiss Federal Act on Patents for Inventions (PatA), to obtain a patent, a technical invention must be novel, capable of industrial application, inventive and involve an inventive step. Inventions that are generally not of a technical nature are not patentable, for example scientific theories and discoveries, mathematical methods and rules of games, rules and methods to perform mental acts, organisational procedures and aesthetic creations or designs.

Software and computer programs are protected under Swiss copyright law. They are considered a set of instructions to perform orders (ie, programming code). This does not qualify as technical invention in the sense of the PatA. However, if software is used to solve a technical problem, (eg, a technical invention involving the use of a computer or where a computer program realises one or more features) it may be patentable as a ‘computer-implemented invention’.

Business methods are concepts facilitating or improving business procedures, namely organisational procedures. To the extent that they are only computer-based (ie, software), they are only protected under copyright and do not qualify as technical inventions in the sense of the PatA. To the extent that they are not computer-based, such methods may be protected as trade secrets (if they bear valuable commercial know-how adequately kept secret), but they are not considered patentable. Nevertheless, business methods may be patentable under Swiss patent law if they – as a whole – provide for a technical feature in the sense of the PatA.

If medical procedures qualify as technical inventions in the sense of the PatA, a patent can be obtained to cover them. However, inventions whose exploitation is contrary to human dignity, disregard the integrity of living organisms, or are in any other way contrary to public policy or morality (eg, procedures for cloning human beings) are not patentable under article 2, paragraph 1 PatA. Furthermore, methods for treatment by surgery or therapy and diagnostic methods practised on the human or animal body are excluded from patentability under Swiss law (article 2 paragraph 2 letter a PatA).

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

An invention generally belongs to the inventor (article 3 PatA: principle of the inventor). Inventors are always what is known as ‘natural persons’ (ie, individuals) who created an invention. Where several inventors have made an invention jointly, they are jointly entitled to the patent. All inventors have the right to be named inventor in the patent application. This applies irrespective of who owns the patent (ie, if another person acquires patent ownership, inventors remain named).

Under employment law, the employer is entitled to the work result produced by the employee (article 321b CC). This principle takes precedence over the default principle under patent law. However, a distinction is made between job-related inventions, occasional inventions and inventions not related to work.

Job-related inventions are inventions that the employee has created during the employment relationship in the course of his or her official duties and in fulfilment of his or her contractual obligations. According to the principle of article 321b CC, job-related inventions originally belong to the employer. Divergent contractual agreements are possible.

An occasional invention is considered to be made when an employee makes an invention while performing his or her official duties but not in fulfilment of his or her contractual obligations. In principle, the employee is originally entitled to the invention. The employer can only acquire an occasional invention by derivative means, but may contractually secure the possibility of acquisition for all occasional inventions.

Inventions not related to work are made neither in the performance of official duties nor in fulfilment of contractual obligations and thus have no objective connection with the employee’s contractual field of work. According to the patent law principle of the inventor, the employee is entitled to those inventions.

It is always the owner of the patent who derives the benefit from the patent  ̶ he or she decides how to exploit it. The right to the patent as property right is unrestrictedly transferable and inheritable, even to legal entities (private and public) (article 33, paragraph 1 PatA). The transfer of the patent must be made in writing (article 33, paragraph 2 PatA). The contract of transfer must therefore bear the signatures of all persons who are bound by it. A registration in the Swiss Federal Institute of Intellectual Property is not mandatory, but only of a declaratory nature.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

Swiss national patents are usually granted within three to five years from filing. However, applicants may request an expedited examination procedure (article 63 of the Swiss Federal Patent Ordinance (FPO)). The Patent Office does not examine novelty or non-obviousness (article 59 of the Swiss Federal Act on Patents for Inventions (PatA)).

The official fees for filing a patent are 200 Swiss francs comprising 10 patent claims. The Patent Office’s general examination fee is 500 Swiss francs. The fee for an expedited examination procedure is 200 Swiss francs. Annual renewal fees are beginning to be due four years after the filing of a patent. This fee amounts to 100 Swiss francs and then increases by 50 Swiss francs for each subsequent year.

Generally, additional, internal fees apply for the involvement of patent attorneys (to draft patent claims). Typically, the costs for preparing and filing a Swiss national patent may range from 5,000 to 12,000 Swiss francs, depending on the complexity of the patent and the patent attorney involved.

Finally, European patent applications designating Switzerland may usually take longer to be granted since – unlike Swiss national patents – novelty and obviousness is examined. Additional costs are likely involved for translations of a patent application into the national languages of the designated countries.

Are there any procedures to expedite patent prosecution?

With regard to the obtaining of a patent, applicants may request an expedited examination procedure (article 63 FPO).

The expedition of the judicial process in Switzerland is, however, not possible.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

In order to secure a filing date, only the description of the invention and the name of the applicant must be submitted. According to the PatA, the description must present the invention in such a way that a person skilled in the art can understand it and carry it out. The description must demonstrate at least one way in which the invention can be carried out. The problem being solved by the invention (the purpose of the invention) must be clearly defined and the solution presented in a way that it can be understood. All of the features necessary for the invention must be disclosed. If special embodiments of the invention or additional applications are also to be protected, the corresponding additional features must be presented in the technical documents. This is usually done through examples that are illustrated with technical drawings. Patent applications for chemical substances must describe at least one example of manufacturing. In addition, the substance must be identifiable by means of physical data. After the filing date, no new information may be added to the description of the invention. It is, therefore, important, that all necessary features are sufficiently described in the application from the outset, as the original technical documents determine what is protected. A precise and detailed description thus forms the basis for the legal interpretation of patent claims.

Within three months after the filing date, the following should be submitted to the IPI:

• at least one patent claim defining the invention;
• technical drawings of reproducible quality;
• an abstract; and
• a translation of the technical documents in one of the official Swiss languages if the documents are not being submitted in one of the official languages or in English.

Concise and clear patent claims are the most reliable way to avoid misunderstandings about the subject matter and scope of protection claimed.

Within 16 months after the priority date additional documents must be submitted to the IPI:

• a declaration of any international priority rights being claims as well as the priority documents;
• the names and addresses of all inventors involved;
• any waivers by individual inventors to being named; and
• a translation of the technical documents in one of the official Swiss languages if the documents have been submitted in English.

Must an inventor disclose prior art to the patent office examiner?

The description in the application usually includes a description of the state of the art known to the applicant to the extent necessary for understanding the invention.

However, as there is no examination for the requirements of novelty and inventive step in the Swiss granting procedure, the state of the art must not be formally disclosed and proven to the patent office examiner. Nonetheless, it is strongly recommended to check the requirements of novelty and inventive step before applying for a patent, since in Switzerland a patent is granted without guarantee and can, therefore, subsequently be declared invalid if a third party appeals against it.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

The technical documents (including the patent claims) may be amended under certain circumstances. The patent office accepts amendments only if:

• the redefined subject matter was already included in the original documents; or
• the supplemented elements were already known at the time of the application, namely they belonged to the state of the art.

However, as mentioned before, after the filing date, no new information may be added to the description of the invention.

Is it possible to appeal an adverse decision by the patent office in a court of law?

Yes.

Does the patent office provide any mechanism for opposing the grant of a patent?

Within nine months of the publication of the entry in the patent register, any person may give notice of opposition to the IPI to a patent that has been granted. Opposition may only be filed on the grounds that the subject matter of the patent is not patentable. If the IPI finds in favour of the opposition, it may revoke the patent or maintain it as amended.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The party claiming nullity or the defendant in the infringement proceedings who raises the plea of nullity bears the burden of proof that the state of the art is contrary to the patent within the meaning of article 1, paragraph 2 PatA (inventive step) or article 7 PatA (novelty). In addition, this party in principle also bears the burden of proof in cases where the (in)validity of the priority is decisive that the priority is not validly claimed. However, article 20 PatA partially changes this allocation of the burden of proof.

Since neither the legitimacy nor the substantive validity of the priority is verified in the national examination procedure, article 20, paragraph 1 PatA provides that if priority is claimed and the validity of the priority is contested, the patentee shall bear the burden of proof of the existence of the right of priority. In order for the reversal of the burden of proof under article 20 paragraph 1 PatA to be effective, the opposing party, usually the party claiming nullity, must make sufficient allegations and prove an interest in the validity of the priority.

If the validity of the priority is disputed with the argument that the earliest priority application claimed is not the first application within the meaning of article 17, paragraph 1 (Union priority) or paragraph 1-bis (internal priority) PatA, the patentee benefits from the legal presumption that the application whose priority is claimed is a first application. This presumption is rebuttable. If the opposing party finds an earlier application of the applicant of the first claimed priority that discloses the same subject matter, this presumption can be overturned by the proof of the contrary. This exception from the reversal of the burden of proof is useful, since otherwise an unspecified negative fact would have to be proved, namely that there is no other earlier application with the same subject matter.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Yes. The proprietor of the patent may partially surrender the patent by requesting the IPI to revoke a patent claim or limit an independent claim by combining one or more patent claims, which are dependent on it or limit an independent claim in some other way (article 25, paragraph 1 PatA).

Furthermore, where a ground for nullity applies to only a part of the patented invention, the court can limit the patent accordingly (article 27, paragraph 1 PatA).

The effects of the granted patent are deemed not to have occurred from the outset insofar as the proprietor of the patent surrenders the patent or the court declares the nullity of the patent based on a nullity action (article 28a PatA).

How is the duration of patent protection determined?

The maximum term of the patent is 20 years from the filing date of the application (article 14 PatA).

The IPI may grant on application a supplementary protection certificate for the active ingredients or combination of active ingredients of medicinal products (article 140a paragraph 1 PatA). The certificate takes effect on expiry of the maximum term of the patent for a period equal to the period that elapses between the date of filing under article 56 PatA and the date of the first authorisation of the medicinal product containing the product in Switzerland, minus five years (article 140e paragraph 1 PatA). However, the maximum duration may not exceed five years (article 140e paragraph 2 PatA).

Law stated date

Give the date on which the information above is accurate.

22 March 2021.