FAQ
Patents
Clients frequently ask us the following questions on the subject of patents:
1.
Is a European patent valid only in the EU, or in Switzerland too?
It is not only EU Member States that can be covered by a European patent, but rather all Member States of the European Patent Convention. Switzerland has also ratified the European Patent Convention. If, after a European patent has been granted, the annual fees are paid in respect of Switzerland, then a European patent is also effective in Switzerland.
As the result of a treaty, Switzerland and the Principality of Liechtenstein form one single territory for protection purposes.
2.
Is a European patent application worthwhile for me, or should I undertake individual national applications?
That depends on how many and which Member States of the European Patent Convention are of interest to you. Although only one single grant procedure has to be carried out for a European patent application (for that reason a European patent is often also referred to as a bundle patent), the Office fees are nevertheless somewhat higher than for a single national procedure. However, the higher the number of countries that are to be covered, the greater the advantage in terms of costs of a European patent application. Typically, a European patent application is preferable where three or more countries are concerned.
Further advantages of a European application are the uniform scope of protection and the high quality of examination, and as a consequence also the legal certainty.
3.
Someone is infringing my patent application / my patent.
What should I do?
Most importantly: don’t do anything that hasn’t been thought through!
Has the patent already been granted, or is it still at the stage of the application / examination procedure?
In most countries, it is only possible to prohibit third parties from using the protected invention on the basis of a granted patent.
Is the patent legally valid?
Not all countries carry out substantive examinations of patent applications before a patent is granted. Swiss patents are among those which are not substantively examined. Legal validity is then often a subject of argument in the infringement proceedings (defence of nullity of the patent) or in a nullity counterclaim.
Is the patent actually being infringed?
The patent claims are of decisive importance for making this assessment. In particular, it is the independent patent claims that are relevant in this context. These are the patent claims which do not make any reference back to any other patent claim. Only the realization of all of the features of at least one independent patent claim constitutes an infringement. An abstract, general inventive concept is therefore not protected. Only a detailed comparison of the features of the infringing subject of the proceedings with the independent claims allows a clear answer to be arrived at.
Finally, the way in which contact is made with the presumed infringer must also be chosen with care: It is possible (merely) to bring the patent to the attention of the presumed infringer, to send it a so-called request to show authorization, or immediately to serve a warning letter including a draft cease-and desist undertaking. Which approach has the best prospects of success depends on the individual case. We are happy to advise you in this regard.
4.
This patent should not have been granted.
What should I do?
Firstly, it is necessary to examine precisely what the difference is between the granted patent claims and the previously known prior art. Often, when things are looked at for a second time, it becomes evident that the patent was granted on the basis of a feature which was overlooked in the initial excitement and which has no relevance to one’s own product / process. In that case, it may be that no further steps are necessary.
If, however, the concern should prove to be justified:
In many countries it is possible, within a very short period of time from the grant of the patent, to challenge a patent by means of an opposition which, if successful, can lead to the revocation of the patent. The opposition period is, for example for a European patent and a national patent in Switzerland, 9 months from the grant of the patent, but is only 3 months from the grant of the patent for a national patent in Germany (it is currently being sought, by way of an amendment to German patent law, to extend this period to 9 months). Because of their administrative-law nature, these opposition proceedings are very inexpensive; we can represent you directly in European and Swiss opposition proceedings.
An opposition against a European patent or a national patent in Germany can also be based on a lack of novelty or a lack of inventive step (these being, in practice, the most relevant bases for a lack of legal validity). However, this is not possible for a national patent in Switzerland: an examination is only made for specific exclusions from patentability (exclusion from patentability of the human body and of embryos; gene sequences per se; breaches of human dignity, public order and morality).
If an opposition is not possible (e.g. because lack of novelty and of inventive step do not constitute grounds of opposition against a Swiss patent) or if the opposition period for these purposes has already run out, then in many countries the patent can only be challenged by way of a nullity action. This is a civil-law procedure in which we can represent you in Switzerland before the Federal Patent Court in St. Gallen. Nullity can, however, also be relied upon as a defence in any infringement proceedings.
5.
I intend to file a patent application. From what point in time can I present my invention in public?
You should keep your invention confidential until the patent application has been filed. In most countries there is now a requirement for absolute novelty: thus, the invention must not have been known to the public orally, in writing, visually, representationally, or in any other way, before the application date. A member of the public is any person who is not subject to a confidentiality obligation. Even if you yourself make your invention public, the novelty is destroyed (the USA represents a prominent exception to this rule: there, there is a one-year grace period for publications of the invention which can be attributed to the inventor himself or herself).
If you nevertheless wish to, or have to, communicate with third parties about your invention before the patent application is filed, we strongly recommend that you enter into a confidentiality agreement. Although it is possible for such a confidentiality agreement to be broken and for your invention to be made public as a result, in many countries there exist time-limited opportunities nonetheless to file a patent application in such cases if the publication was an abuse and occurred to your disadvantage.
We would be happy to assist you and to draw up for you a confidentiality agreement which is tailored to your specific requirements.
Do you have any more questions?
Please get in touch with us:
|
Telephone: |
+41 (0)71 913 95 55 |
|
|
Fax: |
+41 (0)71 913 95 56 |
|
|
E-mail: |