1. Background: Preliminary Draft Proposal for a Revision of the Swiss Patents Act

According to the European Innovation Scoreboard (published in June 2021 by the European Commission), Switzerland is the innovation leader in Europe. Novel and inventive technical inventions can be protected by obtaining patent protection. However, Swiss national patent applications are currently not examined for novelty or inventive step. Once a patent is granted, a third party (e.g. a competitor) may challenge the validity of a Swiss national patent in court proceedings. Until the subsequent court decision, the validity of such patent remains unclear. This legal uncertainty diminishes the commercial value of a Swiss national patent and makes it more difficult to enforce the patent against third parties.

This contrasts to European patents granted by the European Patent Office. European patents are fully examined and may also be subject to a post-grant opposition procedure initiated by a third party. Once granted, the protection of a European patent may be extended to Switzerland. However, obtaining a European patent may be a laborious and expensive process.

In an attempt to strengthen the Swiss patent system and to make it more attractive for SMEs and individual inventors, the Swiss Federal Council in October 2020 opened the public consultation procedure on a proposed partial revision of the Swiss Patents Act. Under the preliminary draft bill, the Swiss Federal Institute of Intellectual Property (IPI) would examine Swiss national patent applications for all patentability requirements in line with international standards. In addition, applicants would also have the new option to apply for a utility patent, which would be granted without substantive examination, but would only be valid for ten years (as opposed to the twenty years' patent term).

2. Results of the Public Consultation Process and Next Steps

The public consultation on these proposals showed that a modernization of the Swiss patent system is generally welcomed. However, various stakeholders expressed concerns as to the potential future strict division between a fully examined patent and a utility patent.

As a result, the Swiss Federal Council decided on 18 August 2021 to amend key aspects of the proposed revision. The option to apply for a utility patent will not be introduced. Rather, inventors will still be able to apply for an unexamined Swiss patent. But upon request the IPI may examine all patentability requirements (including novelty and inventive step). In addition, under the proposed revised law, every patent application will be supplemented by a compulsory search report on the state of the art. Even in case of an unexamined Swiss patent, such (publicly available) search report may provide the applicant and third parties at least with some information to assess whether the invention is indeed eligible for patent protection. Finally, the draft bill will likely allow for an extended use of the English language in the patent application process.

The Swiss Federal Council also decided that appeals against decisions of the IPI on patentability requirements should be heard by the Swiss Federal Patent Court (not the Federal Administrative Court) in order to ensure the required technical expertise.

The revised draft bill including the dispatch regarding the proposed revisions to the Swiss Patents Act is currently being prepared by the IPI and is expected by the end of 2022.

3. Outlook

The revision of the Swiss patent system is also intended to address developments at European level. While Switzerland is a member of the European Patent Convention, it is not a member of the European Union. As a result, Switzerland will not become part of the future EU unitary patent system, which will provide for a patent with unitary effect in all participating EU member states and for the establishment of a Unified Patent Court as a one-stop shop for litigating European patents. Against this backdrop, the modernization of the Swiss patent system offers applicants a fully examined Swiss national patent as an alternative to a European patent and allows more flexible patent strategies. We will provide a more in-depth assessment once the draft bill for the proposed revision is published.