Information for Review of Art. 27.3(b) (Patentable Subject Matter) - View

Switzerland

I. INTRODUCTION At its meeting of 1-2 December 1998, the Council agreed to invite those Members who were already under an obligation to apply Article 27.3(b) of the TRIPS Agreement to provide information on how the subject matter addressed in that provision was presently treated in their national law. It was agreed that it would be left to members to provide information as they saw fit. It appears that there is no mandatory format. The Swiss delegation has noted that many countries have provided information under various formats, including those proposed by the Secretariat as an “illustrative” list of questions, a Member’s additional list of questions, a group of Members’ list and other Members’ contributions which may be considered as position papers. Article 27.3(b), with its clear and simple wording and structure, in fact provides for a very simple structure of information: 1) Are plants and animals patentable in a Member’s system? If yes, under which conditions? 2) Does a Member provide for an effective sui generis system of protection for plant varieties? If yes, what is it? After due consideration of the various contributions, the Swiss delegation holds the view that the one proposed by the European Communities, the United States, Japan and Canada is a reasonable basis for replies, mainly due to its simplicity and briefness. In our view, this would facilitate the collecting of information and understanding of an issue which is presently still too new and complex to be appropriately presented within such a short time limit. The Swiss delegation considers this fact-finding exercise to be a continuing one and expresses its willingness to cooperate in providing information as developments at the national and international levels require or allow to do so (including the works carried out at a technical level by fora such as OECD or WIPO, as the case may be). The following information basically follows the structure used in document IP/C/W/126 (communication from Canada, the European Communities, Japan and the United States), dated 5 February 1999. Detailed information on the Swiss system was also provided in May 1997 at the occasion of the examination of national legislation on patents (document IP/Q3/CHE/1 of 9 December 1997). Preliminary Remarks Attention is called to the following points as far as the Swiss replies are concerned: 1. In the field of patent protection, Switzerland and Liechtenstein are bound by the Treaty of 22 December 1978 on the Protection Conferred by Patents for Inventions.1 Under this treaty, both countries form a unitary territory of protection. In other words, patents granted by the Swiss Federal Institute of Intellectual Property and the Swiss patent legislation also apply to the territory of Liechtenstein. This bilateral treaty only covers patents for inventions. 2. Both Switzerland and Liechtenstein are parties to the Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973. Further, both countries are parties to the Patent Cooperation Treaty of 1970 and to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure of 1977 (conventions administered by WIPO). 3. In the field of biotechnology, most of the patent applications (with effect for Switzerland and Liechtenstein) are made via the "EPO’s route". Statistically speaking, the number of applications via the "national route" alone is decreasing. 4. The authorities responsible for the grant of titles of protection in the field of biotechnology are as follows: • for patents (Switzerland and Liechtenstein): the Federal Institute of Intellectual Property, Ministry of Justice and Police. When it receives national patent applications, the Institute does not examine whether they are new and have an inventive step. It only examines if the inventions are capable of industrial application. Novelty and inventive step are left to the court, in case of litigation. • for plant varieties (Switzerland only): the Bureau for Plant Varieties, from the Federal Office of Agriculture, Ministry of Economy. The Bureau does not proceed to an examination as to substance. It is empowered to refer to examinations and field tests made by the authorities of States that are Contracting Parties of the UPOV Convention. 5. In the field of biotechnological inventions, criteria for protection are the same as those applied in other technological fields. Court decisions relating to patentability are also applicable to such inventions. 6. Switzerland is party to the UPOV Convention (1978 Act). The Swiss Plant Variety Protection Law is currently being revised in view of ratification of the 1991 Act of the UPOV Convention. Revision of the Swiss Patent Law is under consideration as well. It should be noted that revision of both laws is also aimed at obtaining a higher degree of convergence with the European Community law. 2

List of Questions

Illustrative List of Questions Prepared by the Secretariat.

N.B. Please ensure that your responses to the questions above cover each category of subject matter specified in Article 27.3(b), namely micro-organisms, essentially biological processes for the production of plants or animals, microbiological processes, non-biological processes, plant varieties and other inventions concerning plants or animals.

Representative Questions for TRIPS 27.3(b) Review Submitted by the Delegations of Canada, the European Union (formerly European Communities), Japan and the United States

Yes. According to Article 1.1 of the Swiss Federal Law on Patents for Inventions (LPI)3 "[p]atents for inventions shall be granted for new inventions applicable in industry." In other words, they must be new, involve an inventive step and be capable of industrial application. The three conditions must be met. Discoveries cannot be patented. Article 1a specifies that "patents shall not be granted for new varieties of plants or animal breeds . . . " Article 2 of the LPI, which enumerates inventions that are excluded from patentability, does not mention plants or animals. Thus, all inventions concerning entire plants and animals, and parts thereof, are patentable under Swiss law, provided they meet the legal requirements. It should be noted that inventions the implementation of which would be contrary to public order and morality cannot be patented (Article 2.a LPI), although they fulfill all other requirements for protection (novelty, inventive step and industrial applicability, disclosure, etc.) Those requirements are not limited to inventions relating to living material; they apply to all fields of technology.

See replies to question 1 above.

[Answer A.1: Yes. According to Article 1.1 of the Swiss Federal Law on Patents for Inventions (LPI)3 "[p]atents for inventions shall be granted for new inventions applicable in industry." In other words, they must be new, involve an inventive step and be capable of industrial application. The three conditions must be met. Discoveries cannot be patented. Article 1a specifies that "patents shall not be granted for new varieties of plants or animal breeds . . . " Article 2 of the LPI, which enumerates inventions that are excluded from patentability, does not mention plants or animals. Thus, all inventions concerning entire plants and animals, and parts thereof, are patentable under Swiss law, provided they meet the legal requirements. It should be noted that inventions the implementation of which would be contrary to public order and morality cannot be patented (Article 2.a LPI), although they fulfill all other requirements for protection (novelty, inventive step and industrial applicability, disclosure, etc.) Those requirements are not limited to inventions relating to living material; they apply to all fields of technology.]

Article 1a of the LPI specifies that "patents shall not be granted for new varieties of plants or animal breeds . . . ." See also replies to question 1.

[Answer A.1: Yes. According to Article 1.1 of the Swiss Federal Law on Patents for Inventions (LPI)3 "[p]atents for inventions shall be granted for new inventions applicable in industry." In other words, they must be new, involve an inventive step and be capable of industrial application. The three conditions must be met. Discoveries cannot be patented. Article 1a specifies that "patents shall not be granted for new varieties of plants or animal breeds . . . " Article 2 of the LPI, which enumerates inventions that are excluded from patentability, does not mention plants or animals. Thus, all inventions concerning entire plants and animals, and parts thereof, are patentable under Swiss law, provided they meet the legal requirements. It should be noted that inventions the implementation of which would be contrary to public order and morality cannot be patented (Article 2.a LPI), although they fulfill all other requirements for protection (novelty, inventive step and industrial applicability, disclosure, etc.) Those requirements are not limited to inventions relating to living material; they apply to all fields of technology.]

As indicated above (question 1), inventions the implementation of which would be contrary to public order and morality cannot be patented (Article 2.a LPI). "Morality" is construed as including human and animal dignity.

[Answer A.1: Yes. According to Article 1.1 of the Swiss Federal Law on Patents for Inventions (LPI)3 "[p]atents for inventions shall be granted for new inventions applicable in industry." In other words, they must be new, involve an inventive step and be capable of industrial application. The three conditions must be met. Discoveries cannot be patented. Article 1a specifies that "patents shall not be granted for new varieties of plants or animal breeds . . . " Article 2 of the LPI, which enumerates inventions that are excluded from patentability, does not mention plants or animals. Thus, all inventions concerning entire plants and animals, and parts thereof, are patentable under Swiss law, provided they meet the legal requirements. It should be noted that inventions the implementation of which would be contrary to public order and morality cannot be patented (Article 2.a LPI), although they fulfill all other requirements for protection (novelty, inventive step and industrial applicability, disclosure, etc.) Those requirements are not limited to inventions relating to living material; they apply to all fields of technology.]

Yes.

No.

Yes.

There is no definition of a "plant variety" or an "animal variety" in the patent law. As indicated above in the preliminary remarks, the present Federal Law on New Plant Varieties of 20 March 1975 (LPV)4 is being revised. The definitions contained in this law will be adjusted to the ones contained in the 1991 Act of the UPOV Convention. Under the present LPV, the term " variety" means "any cultivar, clone, line, stock or hybrid, whatever the origin, artificial or natural, of the initial variation which gave rise to it." (Article 1(2) LPV). The new protected variety is defined by its official description or by the specimen cultivated in the reference collection of the authority responsible for carrying out the examination (Article 1(3) LPV). There is no other IP law dealing with the definition of animal variety.

Yes.

No. The denial of a patent on such a process is based on Article 1a of the LPI.

Subject matter that is identical to that found in nature is patentable, if 1) such subject matter is not known at the moment of patent application, and 2) the process used for its isolation or identification is new. All subject matter that is identical to that found in nature not meeting these two conditions is considered to be a discovery, and is therefore not patentable under Swiss law.

Yes. New plant varieties are protected by a sui generis form of protection, i.e. by the present Federal Law on New Plant Varieties of 20 March 1975 (LPV)5, and the Ordinance on the Protection of Plant Varieties of 11 May 1977 (OPV)6, which are based on the UPOV Convention.

Yes.

The present LPV is based upon the 1978 Act. It is currently being revised in view of ratification of the 1991 Act.

No. According to Article 12(3) of the LPV, the authorization of the right holder is not necessary when using the propagating material of protected varieties to breed or market new varieties (“breeder’s exemption”). The authorization of the right holder, however, is necessary if the protected varieties have to be used repeatedly to produce the new varieties. Furthermore, Article 12(1) of the LPV only prohibits acts performed on a professional (commercial) level; therefore, all acts performed for research or experimental purposes or to develop new varieties of plants, on a non-professional level, are not prohibited by this provision.

The present LPV does not address the issue of essentially derived plant varieties. Thus, acts performed to commercially exploit varieties that are distinct form protected varieties but share their essential characteristics do not require the prior authorization of the right holder. The current revision of the LPV will take into account the "essentially derived and certain other varieties", as well as other situations prescribed by the 1991 Act of the UPOV Convention.

No. Under the present law, farmers have the right to use the harvesting of (protected) seed in view of another use for further replantings in their own holdings (farmer's privilege). It is expected that the revised LPV will provide the possibility to grant the farmer’s privilege through an ordinance. The farmer’s privilege is likely to be restricted to certain agricultural crops enumerated in a list.

No.

According to Article 5(3) of the LPV, “[t]he fact that a variety is itself generally known shall in no way detract from its character of novelty unless, at the time the application was filed, the variety had already been offered for sale or marketed in Switzerland or – for more than four years – abroad, with the consent of the breeder or his successor in title.” The current revision of the LPV will take into account the features of the 1991 Act of the UPOV Convention.

No.

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