Priority, co-applicant, and an intervening trade-fair disclosure
Alpina Sensors GmbH files a Swiss national application on 12 May 2025 for a pressure sensor, claiming priority from US provisional 63/xxx filed 3 June 2024. The provisional names A. Keller and B. Roth as inventors and applicants. The Swiss application names only Alpina Sensors as applicant; the file contains no assignment from Roth. On 10 October 2024 Keller displayed a prototype and distributed a datasheet at a Swiss trade fair; the datasheet states a membrane thickness of 1.5 µm. Claim 1 as filed includes feature X ('membrane thickness < 2 µm'), which is not mentioned in the provisional; X was added by the in-house attorney after the fair. The IPI issues a formal notice: priority document missing, applicant not identical, two-month response. Alpina's product launch is scheduled for September 2025. Roth demands CHF 20,000 to sign an assignment; Alpina's CEO wants to ignore him because 'the IPI does not examine novelty.'
1. Does claim 1 enjoy the 3 June 2024 priority date? Address both the applicant mismatch and feature X.
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Priority is not a reward for filing early; it is a procedural right that must be perfected. Under the Paris Convention, the later applicant must be the same person as the earlier applicant or its successor in title. The provisional names Keller and Roth; the Swiss application names only Alpina. Without assignments from both provisional applicants, the IPI can refuse the priority claim. Roth's refusal is therefore not a commercial nuisance but a chain-of-title defect.
Feature X creates a second, independent problem. Priority is assessed per claimed subject-matter, not claim-wide. Claim 1 includes 'membrane thickness < 2 µm'. If that feature is not disclosed in the provisional, either expressly or implicitly, claim 1 cannot obtain the 3 June 2024 date for that subject-matter. The effective date for X is 12 May 2025. The 10 October 2024 datasheet disclosed 1.5 µm, so X was made public before that date. Even if a six-month grace period were available, it has expired. Claim 1 therefore lacks novelty over Alpina's own datasheet unless X is removed or the priority defect is cured in a way that also captures X, which the provisional does not permit.
Conclusion: claim 1 does not validly enjoy priority as filed. Alpina can negotiate an assignment from Roth, but that only fixes the applicant mismatch. To keep a priority date, Alpina must amend claim 1 to subject-matter actually disclosed in the provisional, for example by deleting X. That may preserve priority but gives up protection for the 1.5 µm embodiment.
2. How should Alpina respond to the IPI notice, and what are the consequences if it simply accepts grant without substantive examination?
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The response should be split into formal and substantive steps. Formally, within the two-month period Alpina should file the certified priority document, an assignment from Keller and Roth to Alpina, or a withdrawal of the priority claim. If Roth will not assign, Alpina must decide whether to drop the priority claim. Dropping it does not solve the X problem: the trade-fair datasheet remains prior art, and the effective date becomes 12 May 2025. The better formal response is therefore to supply whatever assignments can be obtained and simultaneously amend claim 1 to remove X or restrict it to a thickness range actually disclosed in the provisional, if one exists.
Substantively, Alpina should not rely on the IPI's lack of novelty examination. The IPI examines formal requirements and will grant a Swiss patent without deciding novelty or inventive step. Grant is not a validity certificate. A competitor can attack the patent before the Federal Patent Court, and the trade-fair datasheet is an obvious exhibit. The CEO's statement is therefore backwards: the absence of examination increases, rather than reduces, the need to clean up priority and prior-art issues before launch.
A practical response is: (i) obtain assignments from Keller and Roth or withdraw priority; (ii) amend claim 1 to subject-matter supported by the provisional; (iii) consider a separate application for the 1.5 µm embodiment only if there is some other priority or non-public basis, which on these facts is unlikely; and (iv) document the file for any later validity challenge.
3. Roth offers to assign his rights for CHF 20,000, but only after Alpina agrees not to challenge the validity of the provisional. Is that a good settlement, and what should Alpina do about the September launch?
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The assignment is necessary but not sufficient. Paying Roth fixes the applicant mismatch only if Keller also assigns and the assignment expressly covers the priority right, not merely the provisional application. The condition that Alpina not challenge the provisional is largely meaningless: validity of a US provisional is not the issue; the issue is whether the Swiss claim is supported by it. Alpina should not pay for a false sense of security.
Before launch, Alpina should obtain a written opinion on claim 1 as amended. If X is deleted, the claim may be supported by the provisional and may keep the 3 June 2024 date; the 10 October 2024 datasheet would then post-date priority and not be prior art. But the product may still use X. Alpina must decide whether to launch with a patent that does not cover the actual 1.5 µm product, or to launch unpatented and rely on trade secrets. Paying CHF 20,000 may be rational to preserve priority for the broader claim, but only if the assignment is unconditional and the claim is amended. The September launch should not proceed on the assumption that grant equals enforceability.