Swiss patent applications

Swiss patent: patentability search

When an invention is submitted to us, we first start by checking whether it complies with the requirement of novelty by means of a patentability search. The aim of this search is to determine precisely the prior art that is closest to the invention. The conclusions of this search are summarized in a report that contains a list of patents and articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.

The costs of the patentability search are invoiced according to a flat fee agreed in advance, often CHF 3’500 + VAT for an invention of average complexity. About half of inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.

Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics – in a project that contains several innovations – can be effectively protected and to optimize the possible drafting of a later application to highlight clearly the differences between the new invention and the documents uncovered by the search.

The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention, the uncovered prior art and the applicant’s budget.

Swiss patent: filing

The application must be filed with the Federal Institute for Intellectual Property (Institute) in Berne and must contain the following elements:

• A request for grant of the patent for Switzerland
• A description of the invention
• One or several claims
• The drawings to which the description refers

A filing date and number will be allocated to the application upon filing of these papers. This filing date may if applicable be claimed as priority date for subsequent filings made in other Paris Convention member states during the priority year. The request is generally formulated by filing, via encrypted email, a specific form made available by the authorities. No additions to the patent application are allowed after filing. It is thus necessary to ensure that a text be filed that is as complete as possible, that meets all requirements for grant of a patent and that will guarantee the applicant the best obtainable protection.

Search and Examination of Swiss Patent Applications

Under the new law, effective January 1, 2027, a search for documents relevant to the novelty and inventive step of your invention—the report of which will be published—is mandatory.

Under the new law, effective since 01.01.2027, Swiss patent applications undergo a formal examination, and it is also possible to request a full substantive examination, which remains optional.

Advantages of Swiss patent applications

Swiss patent applications have the primary advantage of being relatively inexpensive, since the grant procedure does not require a mandatory substantive examination. However, annual maintenance fees must be paid starting in the third year after filing to keep the patent in force. The grant procedure is not particularly expeditious, and it is not uncommon to have to wait four or five years before the patent is finally granted. Since applications are not examined on their merits at the outset, a Swiss patent does not enjoy as strong a presumption of validity as a patent granted following an examination procedure and may be more difficult to commercialize.

Swiss patent: search report

Under the new law, which came into force on 1 January 2027, all applications for Swiss patents must be subject to a search carried out by the IPI.

The search report contains a list of documents uncovered by the search examiner and deemed relevant for assessing the novelty and inventiveness of the invention. The documents are attached to the report. A letter next to each document indicates its relevance. The main codes are “X”, used to designate a document which on its own is considered to call into question the novelty or the inventiveness of a claim of the application, and “Y”, which designates the combinations of documents which, together, allow the inventiveness of a claim to be challenged. The letter “A” designates the documents cited as technological background.

The aim of the search report is merely to establish the patentability of the claimed invention but not to assess whether it can be used freely without infringing existing patent rights. An older patent, containing claims sufficiently broad to be infringed by the invention but not describing the new characteristic claimed, will not necessarily be cited despite the applicant obviously having an interest in become aware of this patent.

The search report furthermore does not indicate whether the cited patents are still in force.

Swiss patent: publication

Swiss patent applications are published about 18 months after the filing date, or if a priority is claimed, after the date of the oldest priority.

Beware of approaches and requests for payment

It has come to the attention of P&TS that more and more clients are receiving invitations to pay fees that do not come from P&TS or WIPO/EPO and are unrelated to the processing of European or international applications under the EPC or PCT. Whatever registration services might be offered in such invitations, they are not issued by P&TS and bear no connection to WIPO/EPO or to any of their official publications.

It is highly recommended not to pay them.

You may find some examples on the WIPO website: http://www.wipo.int/pct/en/warning/pct_warning.html

Swiss patent: office actions

Under the new law, which came into force on 1 January 2027, the Institute carries out a formal examination of the application. Where the application contains irregularities, such as a lack of clarity, the examiner sends a written notification to the applicant or their representative, setting a time limit for them to rectify these deficiencies or to contest the examiner’s objections. The time limit is usually four months and may be extended upon simple written request.

The Institute does not have the power to reject the patent application without giving the applicant the opportunity to respond to the objections raised. If the applicant’s response gives rise to further objections, a new notification must be issued. The procedure may therefore, in theory, involve a varying number of exchanges of notifications and responses between the Institute and the applicant.

Under the new law in force since 1 January 2027, a full substantive examination may also be requested.