Swiss Patent Attorney common mistakes
Swiss Patent Attorney · Understand the traps and how to avoid them.
Answering Swiss national novelty and the EPC/PCT prior-art tests as if they were identical, e.g. treating a Swiss national application's prior art as strictly 'everything made available to the public' without checking the specific wording and any applicable reservations or transitional rules that govern the file in question.
Candidates learn the EPC framework first and then assume the national Swiss procedure is a carbon copy, so they stop reading the actual statutory basis and the IPI's published practice for the case at hand.
What to do instead
For every question, first identify which legal basis governs (national Swiss law, the EPC as applied by the IPI, or a PCT route) and write one sentence naming that basis before analysing novelty or inventive step. Build a one-page comparison table of prior-art definitions and effective dates per route and rehearse it until you can reproduce it from memory.
Miscalculating the priority year and the resulting critical date, for example counting 12 months from the filing date instead of the priority date, or overlooking that a later national filing can still validly claim priority when the formal requirements are met.
Deadline arithmetic is done quickly under time pressure, and candidates conflate 'filing date', 'priority date' and 'date of the earliest priority' without anchoring each to a concrete calendar date.
What to do instead
Adopt a fixed routine: write the earliest priority date, add 12 months, state the resulting last day, then check whether it falls on a weekend or public holiday and apply the relevant extension rule. Do this in writing on every priority-related question, even when it seems trivial, and practise with ten date pairs until the routine is automatic.
Treating the PCT timeline as one deadline rather than a chain: confusing the 12-month priority period, the 16-month transmittal of the international search report, the 18-month publication, the 19-month option under Chapter II, the 22-month Chapter II deadline, and the 30/31-month national phase entry.
The PCT stages are learned as a list of numbers without a mental model of which actor does what and when, so under exam pressure the numbers collapse into each other.
What to do instead
Draw the PCT timeline from memory as a single horizontal axis with the applicant, ISA, IB and designated offices as separate lanes, marking each deadline on the correct lane. Redo the drawing before each study session and explain aloud what happens at each point; only then attempt timeline questions.
Applying EPC problem-and-solution reasoning by naming the closest prior art from the applicant's own field and then asserting 'no inventive step' or 'inventive step' without identifying the distinguishing features, the objective technical problem, and whether the claimed solution would have been obvious to the skilled person.
Candidates memorise the three-step structure but skip the middle step because formulating the objective technical problem requires genuine technical judgement, and it is easier to jump from feature comparison to a conclusion.
What to do instead
Always write the three steps out explicitly as labelled paragraphs: (1) closest prior art and why it is closest, (2) distinguishing features and the technical effect they produce, (3) the objective technical problem derived from that effect, then the obviousness assessment. Never write a conclusion sentence that is not preceded by all three labelled steps.
Confusing clarity, support and sufficiency objections and answering the wrong one, for example defending a claim against an Article 84 clarity objection by arguing that the description provides support, or rebutting a sufficiency attack with claim interpretation arguments.
The three requirements are taught together and share the same vocabulary of 'the skilled person' and 'the disclosure', so candidates pattern-match on keywords rather than on the legal test being applied.
What to do instead
For each objection type, memorise the single diagnostic question: clarity asks whether the claim itself is unambiguous to the skilled person; support asks whether the claimed scope is justified by the disclosure across its breadth; sufficiency asks whether the skilled person can carry out the invention over the whole claimed range without undue burden. Label the objection type in the margin before writing any answer.
Drafting claims that recite a desired result, a commercial advantage or an abstract function instead of the technical features that achieve it, then defending the claim on the ground that the result is new.
Candidates draft from the invention disclosure narrative, which is written in terms of goals and benefits, and they carry that language straight into the claim without translating it into structural or process features.
What to do instead
After drafting each independent claim, underline every feature and ask 'is this something the skilled person can measure, build or perform?'. Rewrite any underlined phrase that is a result, advantage or intention as the concrete means producing it. Keep a personal list of banned claim words (for example 'improved', 'efficient', 'suitable for') and search the final draft for them.
Amending claims during prosecution by adding matter from the description or drawings that is only implicitly derivable, or by generalising an embodiment, and then arguing that the skilled person would read the addition into the original disclosure.
Candidates want to secure the broadest defensible scope and treat the description as a reservoir of support rather than as a strict disclosure limit, underestimating how narrowly the added-matter test is applied.
What to do instead
Apply the gold-standard test explicitly in writing: state what the original application, as a whole, directly and unambiguously discloses to the skilled person, and identify the exact passage relied on. If the amendment requires an intermediate generalisation, list every feature removed from the embodiment and justify why each removal does not change the technical function. If you cannot, do not make the amendment.
Missing or mishandling procedural acts in examination: not requesting examination in time, ignoring a communication deadline, or failing to distinguish an extendable time limit from a non-extendable one, and not considering further processing or re-establishment as remedies.
Candidates focus on substantive patentability and treat procedural law as background reading, so they cannot recall which remedy applies to which missed act under time pressure.
What to do instead
Build a two-column table: left column lists procedural acts (request for examination, response to an office action, payment of fees, appeal), right column lists the available remedy and its deadline and fee. Memorise the table, then practise ten short scenarios where you must name the remedy within thirty seconds of reading the facts.
Answering employee-invention and entitlement questions by assuming the employer automatically owns the invention, without analysing who made the invention, the notification and claim duties, and the consequences of the employer's failure to respond in time.
Candidates import a general assumption from employment practice and skip the statutory sequence, which is short but has sharp consequences at each step.
What to do instead
Write the statutory sequence as a numbered flow: invention made, employee notifies employer in writing, employer acknowledges, employer either claims the invention or releases it, and the timing and effect of each step. For each scenario question, walk the flow and state at which step the facts place the parties before answering who holds the rights.
Treating the Swiss and European routes as interchangeable for strategic advice, for example recommending a national Swiss filing when the client's commercial goal requires a European patent, or ignoring the interaction between a Swiss national right and a parallel European patent.
Candidates separate legal knowledge from advisory technique and answer the legal question correctly while giving advice that does not match the client's actual markets, budget and enforcement plans.
What to do instead
Before any strategic question, write three lines: the client's commercial territories, the time horizon, and the enforcement budget. Then map each available route onto those three lines and state the trade-off explicitly. Practise by writing short advisory memos of five sentences for five different hypothetical clients until the structure becomes habitual.