SWITZERLAND Patent Regulations

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PART III EXAMINATION OF THE PATENT APPLICATION

Chapter I Examination on Filing and Examination as to Form

SECTION 1 EXAMINATION ON FILING

46. Assignment of Filing Date

(1) The filing date shall be assigned to the patent application filed in an official language which contains:

(a) a request for the grant of the patent;
(b) a description of the invention;
(c) one or more claims;
(d) the drawings to which the descriptions or claims refer;
(e) indications whereby the applicant may be identified.

(2) The filing date shall also be assigned when the documents listed in subsection (1)(a) to (d) do not fully comply with the Law and the Ordinance.

(3) When the conditions laid down in subsection (1) are not met, the Institute shall regard the application as not having been filed. It shall return the documents filed to the applicant, if he is identified, or shall give him the opportunity of meeting the conditions still required for the assignment of the filing date.

(4) If a drawing is missing, the Institute shall invite the applicant to supply it or to request, for the purpose of ensuring the maintenance of the filing date, that the reference to the drawing concerned be regarded as not having been made.

(5) Once the filing date has been established, the Institute shall issue a certificate of filing to the applicant.

(6) Where a divisional application is in conformity with Article 57(1)(a) and (b) of the Law, the Institute shall allow the filing date claimed to stand as of right, as long as examination as to substance does not produce another conclusion.

SECTION 2 EXAMINATION AS TO FORM

47. Subject Matter of the Examination

Once the filing date has been established as a result of the examination on filing, the Institute shall examine:

(a) whether there is cause for an agent to be appointed (Article 48);
(b) whether the filing fee and the claim fees, if any, have been paid (Articles 49 and 51(4));
(c) whether the technical documents are in conformity with the requirements that do not concern their contents (Articles 50 and 51);
(d) whether the other documents relating to the application have been filed in time and are in conformity with the requirements (Article 52).

48. Appointment of an Agent in the Case of Residence Abroad

If an applicant not resident in Switzerland does not designate an agent at the time of filing the patent application, the Institute shall invite him to state within the time limit laid down the name, domicile or headquarters and address of his agent.

49. Filing Fee and Claim Fee

(1) The Institute shall invite the applicant to pay the filing fee within the time limit laid down.

(2) Each patent application may contain ten claims exempt from payment of a fee; a claim fee shall be due for each additional claim.

(3) If the technical documents originally filed contain more than 10 claims, the Institute shall invite the applicant to pay within the time limit laid down a claim fee for each additional claim. In the event of failure to pay or of partial payment, the supernumerary claims shall be deleted, starting from the last.

50. Formal Defects in the Technical Documents

(1) Examination of the technical documents as to form shall relate only to:

(a) [repealed];
(b) the choice of the appropriate language (Article 4(3) and (7));
(c) the prescribed number of copies (Articles 25(2) and 51(3));
(d) the required presentation (Article 25(1) and (3) to (7) and Article 28(1) and (2));

(2) If the Institute discovers a formal defect, it shall invite the applicant to remedy it.

51. Amendments to the Technical Documents

(1) Amendments to the technical documents shall be allowed only if an indication is given of the patent application to which they relate.

(2) The letter accompanying the submission of the amendments shall be signed by the applicant or his agent.

(3) Amendments shall be submitted in duplicate.

(4) If the amended technical documents contain more claims subject to payment of a fee than they did prior to amendment, or more than 10 claims for the first time, the Institute shall invite the applicant to pay the missing claim fees within the period of time laid down. In the event of failure to pay or partial payment, the supernumerary claims shall be deleted, starting from the last. Claim fees due and paid shall not be refunded.

52. Other Submissions Relating to the Application

(1) If the request for the grant of the patent has not been submitted on the prescribed form (Article 23), the Institute shall invite the applicant to do so.

(2) Where the applicant has appointed an agent, the Institute shall ascertain whether a power of attorney in favor of that agent has been filed. If the power of attorney is missing, the Institute shall invite the applicant to file one.

(3) If the designation of the inventor, submitted in good time, contains defects, the Institute shall invite the applicant to remedy those defects.

(4) The Institute shall invite the applicant to correct those of the defects in the priority declarations or priority documents, submitted in good time, that are susceptible of correction, and, if necessary, to produce the translation of the priority document (Article 40(2)) and of the documents relating to a prior application (Article 41). If the applicant does not comply with this request, the right of priority shall lapse.

(5) Subsection (4) shall apply mutatis mutandis to the declaration and other documents relating to the immunity derived from an exhibition (Articles 44 and 45).

Chapter 2 Decision on the Procedure for Examination as to Substance

53. Sorting

(1) When, as a result of the examination on filing, the filing date has been established, the Institute shall notify the applicant:

(a) either that the application will not be submitted to the examiner (Article 89 of the Law) because it is clearly not subject to preliminary examination (Article 87(2) of the Law);
(b) or that his application will be submitted to the examiner for a decision on whether or not it is subject to examination.

(2) At the request of the applicant who has received a notification under subsection (1)(a), the patent application shall be submitted to the examiner for a decision on whether or not it is subject to examination.

54. Decision Regarding Examination

(1) Where the patent application has been submitted to the examiner (Article 53(1)(b) or (2)), the examiner shall make a ruling on the subject of examination.

(2) Where the technical documents do not allow a decision to be taken according to subsection (1), the examiner shall invite the applicant to remedy this defect.

(3) Any opposition to the examiner's decision (Article 87(5) of the Law) shall be made in writing, with a statement of reasons, within one month from the notification of the decision.

(4) If the opposition is clearly unfounded, the examiner shall, in his decision on the opposition, charge the cost of the procedure to the applicant.

(5) The patent application finally declared subject to preliminary examination shall remain so, even if the technical documents are subsequently amended.

Chapter 3 Search of the State of the Art in the Preliminary Examination Procedure

55. Payment of the Search Fee

(1) At the same time as the decision is taken to submit the patent application to preliminary examination, the applicant shall be invited to pay the search fee within two months.

(2) If this decision is subject to opposition and subsequently confirmed, a new two-month time limit for payment shall be afforded to the applicant.

(3) Where, at the time of the decision, a request for postponement of the substantive examination (Articles 62 and 62a) has been submitted or where such a request was submitted during the period for payment, the latter period shall be extended up to the expiry of the postponement. The Institute shall inform the applicant accordingly, but shall not send him any subsequent reminder.

56. Preliminary Examination

Once the search fee has been paid, the examiner shall ascertain whether the patent application is such that a meaningful search of the state of the art may be made. If such is not the case, it shall invite the applicant to remedy the defects.

57. Report on the State of the Art

(1) The examiner shall carry out the search of the state of the art on the basis of the documents at his disposal at that time.

(2) In order to carry out the search of the state of the art, the Institute shall be authorized to enter into cooperation agreements with other authorities or organizations.

(3) The report on the state of the art shall list those of the documents to be taken into consideration for the assessment of patentability that were available to the department responsible for the search (Article 1 of the Law).

(4) The report, together with copies of the documents mentioned in it, shall be sent to the applicant.

58. Exemption from the Search Fee

(1) Exemption from the search fee shall be granted only if, before the applicant is invited to pay (Article 55(1)) or, if postponement of the examination as to substance has been requested, one month before the expiration of the extended period for payment (Article 55(3)), the examiner already has a report on the state of the art in his possession which:

(a) comes from the search service for Swiss patent applications; and
(b) on the basis of the same filing date or the same priority date, deals exhaustively with the subject matter of the patent application.

(2) Such a report may, in particular, relate:

(a) to the original patent application, in the case of a divisional application (Article 57 of the Law);
(b) to the first application the priority of which is claimed;
(c) to another application, where the patent application is the first application the priority of which is claimed for such other application.

59. Repayment of the Search Fee

(1) The search fee shall be repaid in full:

(a) when the applicant supplies a report meeting the requirements set forth in Article 58(1) before the search of the state of the art is carried out (Article 57(1)); or
(b) when, for another reason, it is not necessary to determine the state of the art.

(2) If the report referred to in subsection (1)(a) meets the requirements set forth in Article 58(1) only in part, the amount saved by the Institute on account of that report shall be repaid.

60. Additional Search Fee

(1) Where the state of the art has not been determined for all the claims owing to a lack of unity in the patent application (Articles 52 and 55 of the Law), the examiner shall invite the applicant to pay the additional search fees within two months; where the applicant is able to show that the application does not lack unity within the time limit for payment, the additional search fees shall be refunded to him.

(2) If the applicant does not comply with this invitation, the examiner shall reject the patent application insofar as the state of the art has not been established. The part concerned may, up to the entry into force of the rejection, be made the subject of a divisional application (Article 57 of the Law).

(3) If the filing date is postponed following the state-of-the-art search, the applicant shall be invited to pay an additional search fee within two months. Article 59(2) shall apply mutatis mutandis.

61. Preliminary Examination Fee

(1) When the search of the state of the art has been completed, the applicant shall be invited to pay the preliminary examination fee within three months. Examination shall be resumed after payment of the fee.

(2) The preliminary examination fee shall be refunded if the patent application is withdrawn or rejected before a notification under Article 68 or a communication under Article 69(1) has been made.

(3) If the preliminary examination fee is not paid, the patent application shall be rejected.

61a. Examination Fee

Before the commencement of the substantive examination, the applicant shall be required, at the request of the Institute, to pay the examination fee within the time limit laid down.

Chapter 4 Examination as to Substance

SECTION 1 GENERAL PROVISIONS

62. Postponement of Examination

(1) The applicant may request that the substantive examination be postponed for a maximum of 18 months as from the filing date or from the filing date if the examination procedure has not yet completed.

(1bis) The applicant may request that the substantive examination be postponed until the date referred to in Article 125 of the Law, if the examination procedure has not been completed, if he establishes:

(a) that he has submitted for the same invention, in addition to his Swiss patent application, a European patent application designating Switzerland and
(b) that the two applications enjoy the same filing date or priority date.

(1ter) If, in the case referred to in subsection (1bis), the European patent application is definitively refused or withdrawn, or if the European patent is revoked, the substantive examination shall be resumed.

(2) The requests under subsections (1) and (1bis) shall be submitted in writing; they shall only be deemed submitted when the postponement fee invoiced by the Institute has been paid.

(3) These requests shall not stay any time limit already set, except where they have been extended under Articles 55(3) and 62(1bis).

62a. Postponement of Examination Where Domestic Priority is Claimed

(1) Where an application is the basis for a claim to domestic priority and if the examination procedure has not been completed, the applicant may request that the substantive examination be postponed up to the date of grant of a patent as a result of the subsequent application.

(2) The request for postponement shall be submitted in writing; it shall not be deemed submitted until the postponement fee invoiced by the Institute has been paid.

(3) If the subsequent application is definitively rejected or withdrawn, the substantive examination shall be resumed.

(4) Requests under subsection (1) shall not have suspensive effect on time limits already set, except where the latter have been extended under Articles 55(3) and 62(1bis).

63. Rapid Procedure

(1) The applicant may request that the examination as to substance be carried out according to a rapid procedure.

(2) The request shall be submitted in writing; it shall not be deemed submitted until the fee invoiced to that end by the institute has been paid.

64. Amended Technical Documents

(1) Where the content of a claim has been amended or the claim is a new one, the applicant shall state, at the request of the Institute, the part of the patent application documentation in which the newly-defined subject matter was described for the first time.

(2) If it transpires, as a result of Article 52(2) that the filing date should be postponed to the date of submission of the amended documents, the applicant shall be allowed a period during which he may:

(a) either renounce the amendment that caused the date to be postponed, insofar as the description of the invention is not thereby affected;
(b) or provide proof that the invention is already described in the documents of the patent application file that were submitted earlier.

(3) If the applicant does not renounce the amendment or if he fails to dispose of the objections, the postponement of the filing date shall be pronounced, as well as the loss of the right of priority when the priority period is thereby exceeded.

(4) Once this decision has come into force, renunciation of the amendment shall not have the effect of restoring an earlier filing date.

(5) The repeated filing of amendments shall not hinder the normal course of the procedure. Applications for amendments that are not in conformity with this rule shall not be taken into consideration.

65. Filing Date of Divisional Applications

(1) At the request of the Institute, the applicant shall state the part of the documentation for the previous application in which the subject matter defined in the divisional application was described for the first time.

(2) If it becomes apparent that the filing date provisionally assigned to a divisional application at the time of the examination carried out on filing (Article 46(6)) has been wrongly claimed, Article 64(2) to (4) shall apply mutatis mutandis.

66. Classification

(1) Every patent application shall be classified according to the International Patent Classification established by the Strasbourg Agreement of March 24, 1971. The applicant shall provide the necessary information to this end.

(2) The Institute may amend the classification until the time of recording in the Patent Register.

SECTION 2 PURPOSE AND COMPLETION OF EXAMINATION

67. Procedure without Prior Examination

(1) In the procedure without prior examination, the Institute shall ascertain first whether the patent application should be the subject of a notification under Article 59(1) of the Law. If such is the case, it shall reject the patent application when the applicant is not capable of disposing of the objections raised by amending the technical documents or in another way.

(2) If the Institute considers that the patent application does not comply with the provisions of Articles 50, 51, 52, 55 and 57 of the Law or with those of the Ordinance, it shall allow the applicant a period for the correction of this defect. If the defect is corrected only in part, the Institute may, when it sees fit, make other notifications.

68. Prior Examination Procedure

(1) Once the examination fee has been paid, the examiner (Article 89 of the Law) shall ascertain first whether the patent application should be the subject of a notification under Article 96(2) of the Law. If such is the case, he shall reject the patent application when the applicant fails to dispose of the objections raised by amending the technical documents or in another way.

(2) If the examiner considers that the patent application does not comply with the provisions of Articles 50, 51, 52, 55 and 57 of the Law or with those of this Ordinance, he shall allow the applicant a period in which to correct this defect. If the defect is corrected only in part, the examiner may, if he sees fit, make other notifications.

69. End of Examination

(1) If the conditions to which publication of the patent application is subject, in the prior examination procedure, or to which the grant of the patent is subject, in the procedure without prior examination, are met, the scheduled date for the completion of the examination procedure shall be communicated to the applicant at least one month in advance; at the same time, the applicant shall be advised of the annual fee to be paid prior to completion of examination. At the same time, there shall also be communicated to him any amendments to the abstract or corrections within the meaning of Article 22(2) and also the amount of the publication fee (Article 71) and the expiry of the time limit for payment.

(2) Where the publication fee and the annual fee due prior to the date of completion of examination have been paid, the probable date of publication of the application or of issue of the patent shall be communicated to the applicant.

(3) If the technical documents comply with the provisions of the Law and this Ordinance at the outset or after notification, the applicant shall be deemed to have approved the version in which the patent application, in the prior examination procedure, is to be published or in which the patent, in the procedure without prior examination, is to be granted.

(4) If the amendments to the technical documents after the end of the examination procedure (Article 105 of the Law) require a renewed publication, those amendments shall only be accepted if the applicant has paid any applicable printing fee.

(5) [Repealed]

Chapter 5 Preparation of Publication of the Application or Grant of the Patent

70. Postponement of Publication or Grant

(1) An applicant wishing to postpone publication of a patent application, in the prior examination procedure, or the grant of a patent in the procedure without prior examination, shall apply to the Institute within two months following the communication of the completion of examination.

(2) Where the requested postponement does not exceed six months as from the communication of completion of the examination, it shall not be necessary to give reasons for the request.

(3) When it is established that the applicant consents thereto, postponement for more than six months may also be requested of the federal authority which, depending on the subject matter of the invention, has an interest in the maintenance of secrecy. Such request shall be accompanied by a statement of reasons. The Federal Department of Justice and Police shall rule on a proposal by the Institute, after the Institute has consulted the authority that is qualified in the field concerned. The Institute shall determine every year whether there is still an interest in the maintenance of the secrecy of the invention.

71. Calculation of the Printing Fee

(1) The printing fee shall be calculated on the basis of the technical documents produced by the applicant.

(2) The version of the documents mentioned in the communication of the completion of examination shall be decisive.

(3) The printing of the first 10 pages of the manuscript of the patent specification shall be exempt from fees.

72. Delaying Period

Requests for the provisional or final recording of amendments in the Register, as well as the withdrawal of the patent application, that reach the Institute less than one month before the date set for the publication of the application or grant of the patent, as communicated to the applicant, shall be deemed not to have been filed until after the publication of the application or grant of the patent.

Chapter 6 Opposition During the Prior Examination Procedure

73. Form and Content

(1) Opposition shall be filed in duplicate within three months following publication, and shall contain:

(a) the surname and given name or corporate name or business style, the domicile or headquarters and the address of the opposing party;
(b) the designation of the patent application opposed;
(c) the declaration stating the extent to which the grant of the patent is opposed;
(d) the grounds for opposition (Articles 1, 1a and 2 of the Law);
(e) the statement of the reasons, giving all the facts and proofs invoked.

(2) When the second copy of the opposition document is lacking, the opposing party may produce it within 14 days after having been invited to do so.

(3) When written matter is invoked as proof, the date of its appearance and the relevant passages in it shall be indicated. If, even after having been invited to do so, the opposing party does not provide these indications, the opposition division shall not be bound to take the proof into consideration.

(4) Article 5 shall apply mutatis mutandis.

74. Competence of the Chairman of the Division

(1) The chairman of the opposition division shall designate, from among the officials and employees of the Institute who have technical or legal training, the members necessary to deal with a case.

(2) He shall conduct the procedure; he shall, in particular, be competent to order such measures as are likely to clarify the facts, and to set and extend time limits in the opposition procedure.

75. Language

(1) Subject to Article 37 of the Federal Law on Administrative Procedure, the opposition procedure shall take place in the language in which the application opposed is written.

(2) If the opposition or another document submitted by the opposing party is produced in another official language, the opposing party shall, on request, submit a translation in the language adopted for the procedure.

(3) When a document invoked as proof is written neither in an official language nor in English, a translation in one of those languages may be demanded. If such a translation is not produced, the opposition division shall not be bound to take this proof into consideration.

76. Representation of the Opposing Party

(1) The opposing party who has to appoint an agent established in Switzerland (Article 13 of the Law) shall be obliged to indicate, within the opposition period, the name, domicile, or headquarters and address of that agent.

(2) The agent shall produce a power of attorney within the period allowed him.

(3) In all other respects, Articles 8 and 9 shall apply mutatis mutandis.

77. Opposing Party Excluded from Procedure

(1) If the opposition is not in conformity with Articles 73(1) and 76, or if the time limit provided for in Article 73(2) has not been observed, the opposition division shall exclude the opposing party from the procedure.

(2) If, after expiration of the opposition period, new grounds, facts or proof (Article 73(1)(d) and (e)) are invoked without appearing to be justified, notably by amendment of the technical documents subsequent to publication, the opposition division may exclude the opposing party from the procedure with respect to that extension.

78. Rebuttal of the Opposition

(1) The opposition shall be notified to the applicant, who shall be invited to make a rebuttal and, where applicable, to produce the amended documents (Article 105 of the Law).

(2) The rebuttal and the amended documents shall be submitted in as many copies as there are oppositions; to these should be added one copy of the rebuttal and two copies of the amended documents.

79. Amendment of the Claims

When the claims are modified by the introduction of characteristics that are not contained in the application specification or cause a date to be postponed, publication shall be repeated.

80. Exchange of Statements. Debates

(1) The opposition division shall communicate to all the opposing parties the reply of the applicant and the amendments to the technical documents, and shall at the same time bring the other oppositions to their notice.

(2) If the applicant has amended the technical documents, or if the opposition division considers this necessary for other reasons, it shall invite the opposing parties to state their views.

(3) The opposition division may invite the parties to a further exchange of statements or to take part in the debates. The debates may also take place at the request of one party, if it appears that they are likely to clarify the facts.

(4) When the opposition division decides to initiate debates, it shall communicate the place and date to the parties.

(5) The debates shall not be public. The persons appearing shall justify their right to take part. Summary minutes shall be taken of the debates.

(6) The deliberations shall take place in camera.

81. Final Decision of the Opposition Division

(1) When the documents are in order, the opposition division shall decide:

(a) that the patent application is entirely or partly rejected and that, to that extent, the opposition is allowed; or
(b) that the patent may be granted on the basis of the documents presented or the documents amended in the course of the opposition procedure, and that the opposition is rejected with respect to any other matter.

(2) When a patent application is partly rejected, the opposition division shall invite the applicant, once the decision has come into force, to adapt the technical documents to the amended claims. If the applicant does not comply with this request, the remaining part shall be rejected.

(3) Article 69(3) shall apply mutatis mutandis to the grant of the patent on the basis of amended documents.

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