NEWS - JULY 2008

SWISS PATENT LAW UPDATE:
The amendment of the Swiss Patent Act entered into force on 1 July 2008, bringing a number of modifications in substantive law, particularly in the field of biotechnology, and introducing a number of important procedural changes.

For inventions in the field of biotechnology some substantial modifications were introduced by this amendment:
For example, the human body and its parts in their natural surroundings, as well as natural gene sequences, are now explicitly excluded. The exclusion from patentability under grounds of public order or morality has been further defined under Art.2, and a number of specific exclusions to patentability have been introduced, for example concerning the use of human embryos for non-medical purposes. Further the obligation to indicate the source of genetic resources and traditional knowledge belonging to indigenous peoples has been introduced. Specific provisions for the patentability of first and subsequent medical use of a known substance have been introduced.

A compulsory non-exclusive license right for research tools has been introduced for anybody intending to use a patented biotechnological invention as a research tool or instrument.

Under the provisions of the amended Patent Act research and experimental activities aimed at gaining knowledge about the subject matter of a patented invention, including on its potential uses, are exempted from patent infringement. Similarly, the activities necessary to obtain a market authorization of a patented pharmaceutical product in Switzerland or in a country having a similar regulatory system are also not considered as being infringing by the amended Swiss law.

Further important changes in the procedure for granting Swiss patents are present in this amendment:
All Swiss patent applications filed after 01 July 2008 will be published 18 months after the date of filing or date of priority (up until now, pending Swiss patent applications were not made public until they were granted, which could take several years).

For applications filed from 01 July 2008, the applicant can request a prior art search within 14 months from the date of filing or priority. The resulting search report will be published with the patent application. Alternatively, the applicant can, as previously, request an international-type search within six months from the date of filing. Under the amended law a third party may also request a prior art search on a published application or granted patent. In this case the resulting search report is not published.

A further important change is that third parties can now oppose a granted Swiss patent at the Swiss Federal Institute of Intellectual Property within a period of nine months from date of grant. The grounds for opposition are limited to the grounds that the patent claims an invention which is excluded from patentability (i.e. an opposition cannot be made on the grounds on lack of novelty and/or inventive activity; grounds which are not examined by the Swiss Patent Office prior to grant of a patent). The procedure can result in the patent being upheld, modified, or cancelled.

More information may be found at:
http://www.ige.ch/e/news/2008/documents/n101e.pdf
http://www.ige.ch/f/jurinfo/documents/j10010f.pdf