Revised Swiss patent law (SPL) and Ordinance will enter into force on 1 January 2019 simultaneously with modified Therapeutics Products Act (cf. protection of admission documentation). Important modifications are:

• Freedom of therapeutic measures is safeguarded for medical personnel (doctors) and pharmacists, in particular in case of preparation of individual compositions. (A. 9(1)a(bis)-a(10), f(bis), h-k SPL
• Promotion of development of pediatric pharmaceuticals by an extension of SPC or patent term by 6 months (A. 140a(1); A. 140n-y SPL). In contrast to the provision in the European Union (EU), the patent term may be extended without requesting an SPC. As well, analogous to the practice in the EU, an SPC having a negative term may be obtained. For a request for a pediatric extension being validly filed, admission of the respective pharmaceutical has to be requested in Switzerland including required documentation regarding pediatric use, and a corresponding first request has to be filed in the EEE not earlier than 6 months before. Secondly, the request has to be filed two years before expiry of the patent (pediatric certificate) or two years before expiry of the SPC (extension of an SPC). In the latter case, it need to be filed wiht the request of the SPC, yet not earlier. It is to be noted, that a SPC and pediatric SPC are mutually exclusive, i.e. an SPC is no more available if a pediatric SPC is obtained. (A. 140a SPL)

Official Collection

Retroactively to 10 June 2018, the Institute applies the changed rule of validity of an SPC according to the decision 4a_576/2017 of the Federal High Court: Examination practice is essentially adapted to that within the European Union in the aftermath of Medeva and EliLily (cf below, 4a_576_2017)

Website of the Institute of Intellectual Property

By decision 4a_576/2017, the Federal High Court followed the decision of the ECJ (European Court of Justice) in cases "Medeva" (C-322/10 of 24 November 2011 Medeva BV, Slg. 2011 I-12051) and "Eli Lily" (C-493/12 of 12 December 2013): The product (or the agent in combination products) has to be explicitly or implicitly mentioned in the claims. Decision BGE 124 III 375 "Fosinopril" is abolished thereby.

However, the Court held that this change is not applicable to a granted SPC. Hence, the respective appeal has been refused, the attacked SPC being correctly granted: At the time of the respective application having been filed and granted, the former case law applied. An overwhelming (public) interest in a retroactive application has not been denied.

In decision B-1156/2016, Federal Administrative Court has held that errors of auxiliary persons are the responsibility ofthe patent owner. They can not be used as an excuse for havving omitted a duty, in the present case the duty to pay an annuity.

In the present case, information that an annuity has not been paid and finally the information that the patent has been annulled because an annuity has not been paid - which still provides the option to restore the patent by a request of further processing - have been disregarded. This bevaviour is deemed not to comply with the standard of due diligence - absent, of course, extraordinary circumstances causing such a negligence.

As of 5 November 2018, no hint that an appeal has been filed, is perceivable, and the decision has been cited in ulterior decisions.

Website Federal Adminstrative Court

Starting with 1 June 2018, decisions in Summary Proceedings will be issued non-anonymized (except for special reasons).

Website of the Federal Patent Court

The Institute will accept the Service "client specific production" in class 40 according the new 10th issue of the Nice classification. The explanation of this issue specifically mentions this service as comprised in class 40. The change of practice of the Institute is applied to all Swiss trade/service mark application which are pending on and after 1 january 2016.

Sic! 2016/1 (2016) 30

The Federal Administrative Court increases the fees:

• Appeals, one preceding instance, ex parte: Advance of CHF 3'000.00 (previously: 2'500.00)
• Appeal, one preceding instance, inter partes: Advance of CHF 4'500.00 (previously: 4'000.00)

In line thereto, the court fee will be increased. The modification of the fees levied follows the decision of the Federal Court (BGE 122 III 490), wherein the manner of determining the litigation value has been fixed.

Sic! 2015/7/8 (2015) 497

In the aftermath of the decision of the European Court of Justice of 8 December 2011 (C-125/10: Merck Sharp & Dohme Corp vs German Patent and Trademark Office), the Swiss Institute of Intellectual Property will issue SPCs with a zero term or even a negative term. Such an SPC will, though, may allow the owner to profit from an additional term of protection for pediatric pharmaceuticals of 6 months which will provisionally be provided by the current revision of the Swiss law of medicals but only for an SPC.

This change of the examination practice takes effect immediately.

Sic! 2012/6 (2012) 419

The Swiss Patent Attorney Law will enter into force on 1 July 2011. Some important points:

• Once the transitional period of 2 years has expired, only persons entered in the official registry have the right to use the titel Patent Attorney, consulente in brevetti, Conseil en brevet, or Patentanwalt.
• Only registered patent attorneys if appointed as independent representatives may act before the Federal Patent Court, be it as the only representative in nullity matters, be it in collaboration with a lawyer for technical aspects.
• Patent attorneys are obliged to keep confidential any secrets known to them during professional activity. (Art. 10 PAnwG)

The list of registered Swiss patent attorneys is available on the website of the Institute. All patent attorneys of our firm are entered.

Revision of the patent law of 22 June 2007 and the federal decree of 22 June 2007 setting the PLT into force: Besides merely formal modifications, they contain:

• Required adaptations to the PLT
• Publication: Patent applications will be published 18 months after the filing or priority date, whichever is earlier. The report of the International-Type Search (PCT Art. 15(c)) or the Report of the State of the Art (cf. below) will be published together with the patent application, unless the Search or Report is established at a later date.
• Search: The "Report of the State of the Art" is a less expensive alternative to the International-Type Search. This search is conducted by the IIP . The rules for conducting the search are similar to those of a European Search. The Report may be requested within 14 months after the priority date, and unlike the International-Type Search, it is available for a patent application claiming the priority of an earlier filing. Summing up, the Report is a cost-effective option to obtain an official search report. Finally, anybody who has the right to request an inspection of the file may also request that a Report of the State of the Art be established.
• Secrecy: No information is available to third parties up to the publication of the patent application any more.
• Genetic Resources / Traditional Knowledge: The applicant has to disclose the origin of such information if the invention is directly based thereon. Intentional false information may be punished by a fine up to CHF 100,000.
• Biotechnological Inventions: Patentability of inventions in relation to the human body is limited. In general, neither any product or method resulting from using human stem cells or germ material, nor any result therefrom are patentable, and of course neither the human being himself nor the embryo. The patentability of the use of embryos, however, is only excluded for non-medical purposes.
• First and Second Medical Indication: As in the EPC 2000, a substance or blend is patentable if not known to be applicable in a surgical, therapeutical or diagnostical method. The same applies to the use of a substance or blend for producing a composition which serves a surgical, therapeutical or diagnostic purpose. This corresponds to the well-known "Swiss-type claim".
• Effect of a Patent: The patent grants the right to prohibit any third party to use the invention for commercial purposes . If the subject of a patent is a product based on or comprising genetic information, the patent protection extends to any material which comprises the product and in which the genetic information is effective. In case of a patent on a method where the product of the method is a biological material, the protection extends to any material obtained by reproduction of the biological material as far as the reproduced material shows the same properties.
• Privileged Uses: Exempt from the effect of a patent, i.e. considered non-commercial, are the following:
  • Private activities without commercial purpose.
  • Research and trials for obtaining knowledge on the invention and its use.
  • Activities required for the admission of pharmaceuticals in Switzerland and other countries with comparable admission control of pharmaceuticals.
  • Use of the invention for education (schools etc.).
  • Use of biological material for breeding or for the discovering and developing of a plant variety.
  • Obtaining a biological material, where the material is produced by accident or by a technically unavoidable process in agriculture.
  • Furthermore, any arrangement restricting these exemptions is null and void.
• Immunity to Patent Rights: The permission of the patent owner for rendering a product publicly accessible (importing etc.) in Switzerland is not required if other intellectual property rights in this product exist and if the patent protection is of minor importance for the function of the product.
• Opposition may be filed against a patent which allegedly violates certain absolute requirements of patentability, namely those of Art. 1a, 1b and 2 Swiss patent law. These articles essentially stipulate the non-patentability of the human being, naturally existing genetic sequences and inventions contradicting the ordre public, morality, or the dignity of man or any creature./li>
• Additional possibilities of license by law for pharmaceuticals in line with WTO regulations have been provided.
• The Assistance of the customs is available for the temporary seizing of imported goods. The customs may not only act on a preliminary request by the patent owner, but also on its own initiative.

Starting with 1 July 2008, the following fees will be reduced:

• Patents: The annuity for year 7 and 8 is reduced from CHF 310 to CHF 200.
• Trademarks: The prolongation fee is reduced from CHF 700 to CHF 550

EPC 2000 ratified by Switzerland on 12 June 2006.

Both chambers of the Swiss parliament have passed the first part of the amendments to the Swiss patent law. It comprises the necessary amendments in view of the revision of the EPC which will enter into force on 13 December 2007 the latest, and in view of the convention with respect to languages within the EPC. Regarding Switzerland, the entering into force of the convention (not the present amendment by itself) will cause European patents to be valid in Switzerland without the need of filing a translation into a Swiss official language.

The amendment is open to a voluntary referendum until 6 April 2006.

Sic! 2006/3 (2006) 214

International Trademark Registration – New Practice in Switzerland

(Trilingual (French/German/English) flier in PDF-format)

If in a notification ("avis de refus provisoire partiel") issued during the international procedure, the Institute was of the opinion that the list of goods/services was to be restricted for the above mentioned reason, the owner was so far not obliged to give his explicit approval. After expiry of the delay for responding without reaction of the owner, the Institute issued a "avis de refus définitif partiel", i.e. the trademark was accepted for protection in Switzerland with the mentioned restriction.

From now on, the Institute will systematically issue an "avis de refus provisoire total", if an international registration – the mark being a priori distinctive – contains an indication of origin. Then, the owner is obliged to give his explicit approval or to file counterarguments, in order to avoid rejection.

• Any design registration still valid on 1 July 2002 will automatically become a subject of the new design law. This engenders to furnish images for publication at the occasion for the 4th renewal.
• Any registered design will be published. Publication may be deferred up to 30 months on request and on payment of the respective fee.
• Term: maximally 25 years calculated from the filing date; renewal periods: 5 years.
• Images capable to be published have to filed in the request. The design itself is no more sufficient. Note: in case of a 2-dimensional design, a protoype of the design may be filed if and onyl if the publication is deferred. Before publication, images have though to be produced. Images may be filed on data carrier (CD-Rom, 3 1/2 floppy disk) in prescribed formats (PC compatible; JPEG, TIFF, GIF, PSD, PCD, BMP, EPS; proposed resolution 300 dpi) (Ammann's remark: the examples proposed by the Institute give reason to recommend a higher resolution - 300 dpi appears to be at lower edge of admissibility.)
• A statement of succession in right from the author to the applicant is no more required.

• A trademark comprising a cross shaped like the Swiss Cross or the Red Cross are accepted if it is renounced to the use of colour combination red/white and white/red (colour of cross/colour of background) and any other appearance leading to a confusion with these specially protected crosses. 
• A design will be accepted if the protection of the cross is waived.

• fee for a 2nd and each further of a set of identical priority documents is decreased to CHF 10.- 

• annuity fee for patents and patent applications decrease from CHF 530.- to CHF 420.-;
• fee for partial waiver is reduced by half; 
• no fees anymore for: printing of the patent; (1st as well as 2nd) extension of timelimits; late filing of priority declarations, interruption of procedure; 
• the reduction for paying 5 annuity in advance as a lump sum is discarded; 
• preliminary technical examination no more possible; 
• fee for excess claims (11th and each further) is due at closure of examination only; 

• fee for transfer of right and registering of licence is reduced from CHF 100.- to CHF 50.- for the second and each further trade/service mark of the same owner.