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FAQ Patents |
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1) Are there other possibilities to protect a
product besides having to file a patent application?
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Yes. A product may be covered with respect to
its technical or functional aspect by one or more patents.
Similarly, the aesthetic form may be protected in parallel by a
design-registration or a design patent (in the United States).
Moreover, the product may be identified and marked by a trademark
to differentiate it over other products and create the connection
between the product, the trademark and the manufacturer and/or
distributor. The proper selection and combination of industrial
property rights under marketing aspects and strategic considerations
is the main goal of creating IP for a company.
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2) Do I need a representative for filing a patent application with the European Patent Office (EPO) or with the Swiss Federal Institute for Intellectual Property (IGE)?
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No, anybody can file a patent application before the EPO or the IGE. However, applicants without a residence or a principal place of business in a member state of the European Patent Convention (for EP applications) or in Switzerland (for national Swiss applications) have to appoint a representative after filing. Nevertheless, it is highly recommended to immediately appoint a representative from the beginning given the rather complicated procedure especially before the EPO. |
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3) Is a European Patent valid for all Europe?
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No. Generally, a European Patent can only be obtained for the member states of the European Patent Convention (EPC). Currently, 26 countries (including Turkey, but except Norway and Iceland) belong to the EPC. Most of the Eastern European Countries have recently become members of the EPC. Moreover, a European Patent has to be validated for each desired country. This has to be done by designating the respective country, paying certain fees and file a translation in the Official language of the respective country, if required. |
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4) I know that Switzerland is not a
member of the European Union. Are European Patents valid
in Switzerland?
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Yes. The member states of the European Patent Convention
(EPC), for which a European patent can be obtained, are
not identical with the member states of the EU.
Switzerland is not a member of the EU, but is a member
of the EPC.
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5) What is an "opposition" against a
European Patent? Is there a term for filing opposition?
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Once the European Patent Office (EPO) has granted and published a patent,
it is open to attack by any party for a period of 9 months. The reason
behind this is that the EPO may not be aware of all the information
which is relevant for the validity of a patent. For example, the
EPO does usually not know anything about a prior use of a patented
subject-matter by a competitor. During the opposition period, the competitor
has the possibility to present arguments for invalidity. If the EPO
follows these arguments or finds other grounds for invalidity,
the patent will be revoked for all member states of the European
Patent Convention (EPC). This is a major advantage from cost
and administration perspectives over national revocation actions.
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6) Is there also an "opposition
procedure" in Switzerland?
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No. Swiss Patent law does not provide this possibility. If
a third party wants to attack a national Swiss patent or the
Swiss part of a European patent, it has to do so by filing a
revocation action before a civil court. This is more
expensive than the opposition procedure before the European
Patent Office (EPO). Furthermore, only the Swiss part of a
European patent can be revoked by this procedure, i.e. the
European Patent will remain effective for the other
designated states.
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7) What is the effect of the publication
of a European Patent application? Can I sue someone on the basis of
my pending European Patent application?
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The publication of the European Patent (EP) application confers a provisional protection to the Applicant. Therefore, the Applicant can sue somebody on the basis of a published EP application. However, many countries provide restrictions as to the rights conferred by the published EP application. In many countries, the Applicant can only claim a reasonable compensation for the unauthorized use of his invention (e.g. in Germany). In Switzerland, the Applicant can also claim damages on the basis of a published (EP) application. However, he can only start the infringement suit after the EP patent has been granted. |
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8) Are Swiss patent applications published?
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No. National Swiss patent applications are not published.
The Swiss Patent Office (IGE) only publishes the granted
national Swiss patents.
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9) Are Swiss patent applications
examined as to novelty and inventive step?
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No. Unlike European Patent applications national Swiss applications are not examined with respect to novelty and inventive step. The Swiss Patent Office (IGE) only examines patent applications for formal requirements and whether the claimed subject-matter is not excluded from patentability, e.g. for ethic reasons. |
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10) What is the so called "right of prior use"?
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If somebody acting in good faith uses, or seriously intends to use, an invention which is afterwards made the subject-matter of a patent application of another party, he can continue his use of this invention, regardless whether the other party obtains a patent for the same invention. However, the prior use right is limited in its scope and the prior use has to be proven. This makes it rather problematic to rely on a right of prior use. Therefore, it is recommendable to seek protection by Industrial Property Rights in any case. |
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11) Is there a grace period for filing a
patent application in Europe after the inventor has publicly
disclosed an invention?
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No. There is a discussion going on, whether to introduce the concept of a
"Grace Period" in the future. However, in Germany a
grace period of 6 months exists for utility-model applications.
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12) I am the owner of a granted Patent.
Does this mean, that I am allowed to commercially use my
invention?
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Not in any case! It has to be clearly stated that patents confer the right to prevent somebody from using the patented invention. However, when using the patented invention, the owner of the Patent has to respect other laws or other patents. For example, if a party, in order to make use of his patented invention, has to infringe a patent owned by another party, the first party is not allowed to use the patented invention without the consent of the second party. |
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13) Can I apply for a supplementary
protection certificate (SPC) in Switzerland?
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Switzerland is not a member of the European Union (EU).
Therefore, the directive implementing the SPC is not
valid for Switzerland. However, Swiss Patent Law
provides for an identical extension of the term of
protection of patents related to compounds, useful as
pharmaceutical or plant protective substances. The only
difference is that for calculating the term of extension,
the first date of permission for bringing the pharmaceutical or
plant protective agent into the Swiss market is considered (and not the
first permission in any EU member state).
Liechtenstein is a member of the EEA
(European Economic Area), which means that the first
permission in a member state of the EEA has to be
considered for the term of extension.
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14) How long does it take to obtain a
European/Swiss Patent? Is there a possibility to accelerate
the proceedings?
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Unfortunately, due to a heavy work load, proceedings before the
European Patent Office (EPO) are currently rather slow.
Depending on the technical field, it is not unusual that a EP
patent will only be granted after around 4 years after its
filing date. Also, the Swiss Patent Office (IGE) takes about
3 years after filing to grant a patent. The EPO provides
the possibility to request for accelerated proceedings (PACE
proceedings) without payment of any fee. Depending on the
cooperation of the applicant, this can lead to a significantly
earlier grant of the patent. The IGE also provides a possibility
to accelerate proceedings, although for a certain fee.
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