What can be patented?

For an idea to be patentable, it has to fullfil various critera, in particular:

• An invention has to be new. In order to be new, it has to differ from everything known to the public. Note: It is often the inventor herself/himself who destroys the novelty of his idea by disclosing his ideas to a third party without secrecy agreement.
• An invention must not be obvious in regard to the state of the art. "Obviousness" has to be judged from the point of view of an expert skilled in the relevant technical field. It must be determined what problem the putative invention solves in comparison to known solutions in the field. If the state of the art encourages or leads the expert to choose a certain solution to this problem, this solution is considered to be obvious -- if not, the solution is considered to be inventive.
• An invention must have technical character. A method for doing business is, in many countries, not patentable. However, as soon as e.g. a technical problem is solved or technical considerations are required, it may be patented.

In addition to this, further criteria apply, such as "industrial applicability", which play a minor role in most cases.

The question of patentability should be discussed with a patent attorney who is familiar with the requirements of the major patent offices world wide and who will be able to advise you on the possibilities to protect an idea by patents or other tools of intellectual property law.

I want to patent an idea -- how do I proceed?

If an idea is to be patented, a large number of questions must be discussed and decisions must be taken. A meeting with the patent lawyer is generally the most expedient way to do this. Such a meeting should take place before the invention is disclosed to anyone not bound by a secrecy agreement.
In the meeting, the invention to be protected should usually be discussed and analysed in detail. In addition, it should be discussed whether the invention is patentable, whether a search is to be carried out, where protection is to be sought, what costs are to be expected, and what procedures should be chosen.

Where should an invention be patented?

There are several ways to obtain a patent for an invention. For example, a national patent application can be filed with one or more national patent offices. In addition to this, a number of international treaties have established types of patent applications that are valid in several countries at the same time, such as "European patent applications" and "international patent applications".

In many cases, a first patent application will be filed at a single patent office. If protection is to be sought through further patent offices, further applications are filed within one year from the first application. These further applications can claim the "priority" of the first application. This procedure has the advantage of keeping the initial costs low.

The best procedure in a given situation must be assessed on a case-by-case basis because it depends on a plurality of issues that should be discussed with a patent attorney.

Who makes a search for assessing the patentability of my invention?

In order to decide if an idea can be patented, the "state of the art" must be known, i.e. everything that has been published prior to the first filing of a patent application. The state of the art is determined in a search.

Various types of searches are possible, with substantial differences in scope and price. For example, there are some publicly accessible databases where a search may be free (see "Links"), while a professional search combining database queries and manual review of paper documents may cost thousands of Swiss Francs.

A search can be carried out before or after a patent is filed. Searches after filing of the patent are mandatory in most countries and are carried out by the patent offices. Searches prior to filing have the advantage that they allow the costs of filing to be saved if the search shows that the invention is already known. However, a professional search usually requires weeks or months to be carried out, which may be an unacceptable delay before filing an application. Furthermore, most of the searches carried out prior to filing an application are not honoured by the patent office, i.e. the patent office will in any case carry out its own search when the application is filed.

A first search is often carried out by the inventor herself/himself using public databases. Although this cannot replace an official search it may provide valuable information that allows a better understanding of what can be patented.

The decision as to whether a professional search should be carried out before filing an application depends to a great extent on the time that is available and on the amount of money set aside for this purpose. It also depends on the country or countries where protection is to be sought. Hence it is impossible to lay down a general rule as to how and when a search should be carried out and this is rather a question which must be discussed for each case individually.

What are the costs for obtaining a patent?

The costs for filing an application and having a patent granted depend to a great extent on the patent office(s) where the application is filed, on the complexity of preparing the application, on the results of searches that are carried out, and on the expediency of the examination. In the following, we give some typical figures, but it must be borne in mind that some of them have a substantial range of variation.

• Preparing and Filing a patent application costs typically between CHF 5'000 and CHF 10'000, depending on country, patent office and complexity of the case,. In complex cases, these costs can, however, reach or even exceed CHF 15'000. A more accurate estimate can generally be given after a preliminary discussion of the case.
• The costs until the patent is granted depend substantially on the patent office. Swiss patent applications are, for example, only submitted to a formal examination, such that the costs until grant low. For European applications, which undergo a multi-step search and examination procedure, total costs of CHF 10'000 to CHF 15'000 will typically accrue over a period of approximately four years, and the filing of translations after grant will require further investments of, typically, CHF 2'000 per country (depending on the size of the text to be translated).
• In order to keep a patent alive, renewal fees (annuity fees) have to be paid, which usually vary according to the age of the patent, and which differ from country to country. Typically, they are of the order of CHF 500 and CHF 2'000 per year.
• Upon request, a more accurate estimate can be provided for individual cases.

It should be noted that a patent application can usually be withdrawn at any time if an applicant has lost interest in a protection, thereby avoiding any follow-up costs.

Who does an invention belong to?

Primarily, an invention belongs to the inventor. However, most countries (such as Switzerland) have regulations that list cases when the right to an invention is automatically transferred to a third party, in particular if the invention is made by an employee.

How do I protect myself against my competitors' patents?

The question as to whether a product infringes the patent of a third party can be of major importance to a company. Depending on specific circumstances, various steps can be taken to protect a company at least partially from such threats.

For example, an "infringement search" may be carried out before releasing a new product. Such an infringement search can be fairly expensive. If the new product is, for example, an electric razor, some of its components may infringe other patents: the motor driving the razor, the electronic circuitry charging its battery, the design of the blades, the metal alloy used as a protection layer of the blades, etc. Hence, in order to carry out a comprehensive infringement search, a large number of patents from a vast number of technical fields may have to be searched. For each patent that might, at first sight, be infringed, the scope of the claims must be analysed to determine how they affect the use of the new razor, which usually requires an in-depth study of the patent.

In order to keep costs at an acceptable level, a comprehensive infringement search is the exception rather than the rule. In most cases, a partial search is carried out, concentrating on one or a few aspects of the new device where an infringement appears most probable, or concentrating on the patents of one or a few competitors. Such a restriction affects the reliability of the search, but may reduce the costs considerably.

Apart from an infringement search, other measures may help to reduce the risk of infringement. For example, a producer can request his suppliers to certify that components supplied by them do not infringe patents of third parties, and that any damages resulting from one or more of their components infringing such patents will be covered by the supplier. Our legal experts will be happy to draft a suitable contract for you.

It might also be advisable to establish an ongoing surveillance of the patent activities of the most important competitors. Many patent lawyers, patent offices and other providers offer monitoring services designed to retrieve copies of any patent applications or patents published in a certain technical field or by a certain source on a regular basis, for example monthly or quarterly. This type of monitoring service should be carefully planned, and the rules defining the search reviewed regularly in order that effective coverage is ensured without the number of documents which need to be reviewed becoming too large.