Patent examination practice and IPI guidelines
This domain examines how the Swiss Federal Institute of Intellectual Property (IPI/IGE) actually handles an application: what it examines, what it deliberately leaves alone, which periods and fees it enforces, and how refusals are reviewed. Most marks here are lost on procedure, not on doctrine.
What the IPI examines
- Formal requirements: request for grant, description, claims, drawings, abstract; an official language (German, French, Italian) or a translation; applicant and representative details; payment of fees.
- The exclusion grounds: the IPI objects where the claimed subject-matter is excluded as such - a pure business method, a presentation of information, a therapeutic method practised on the body.
- Unity of invention, deposits of biological material and sequence listings.
- A search report may be requested; it is prepared by the EPO and binds neither the IPI nor a court.
- Not examined: novelty, inventive step, clarity, support and sufficiency.
Procedure and remedies
- Deficiencies are notified with a compliance period; if it is not met, the application is refused or treated as withdrawn.
- Re-establishment (Wiedereinsetzung) is available where the applicant was without fault; the request and the omitted act must be completed within the prescribed period after the obstacle ceases.
- Publication follows 18 months after filing or priority; grant is published. There is no opposition: revocation is by the IPI for unpaid fees, otherwise by the Federal Patent Court.
- An appeal against an IPI decision goes to the Federal Administrative Court within 30 days, then to the Federal Supreme Court on legal grounds.
The IPI Guidelines
The Richtlinien fix the order of examination and the technical-character test: a claim mixing technical and non-technical features is not excluded 'as such' as long as technical means are used. The IPI then stops - it does not ask whether those technical means are inventive.
Worked example
Claim: 'Method of calculating a pension premium, comprising storing contribution data in a database, computing the premium by formula X and outputting it on a screen.' No exclusion objection: the database and screen are technical means, so this is not a business method as such, and the patent is granted after formal examination. The weakness surfaces later: in nullity proceedings the Federal Patent Court asks whether the technical means were novel and inventive over the closest prior art, and a general-purpose computer running a known actuarial formula will not survive. A robust filing would have claimed the specific data-processing improvement and obtained a search report before grant.
Traps
Expecting the IPI to object to lack of novelty. Missing the 30-day appeal period. Trying to answer an exclusion objection with argument instead of amending into technical subject-matter. Treating the search report as binding. Assuming a compliance period can be extended at will.