This post was first published on February 24, 2010.
If the 19th February decision (G02/08) from the Enlarged Board of Appeal (EBA) at the EPO is to be simplistically interpreted, “Swiss” Type claims are indeed history.
As most of our readers must be aware of the nature of a “Swiss” type of claim language. A “Swiss” type claim is essentially used to cover the so called Second, Third and Subsequent uses/medical indications of a known substance or composition. Taking our readers a bit more than a decade back the EBA in its decision (G05/83) had allowed the use of Swiss type claims.
The most important aspect of the (G05/83) decision is summarized in one the headnotes accompanying the decision;
A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.
Consequent to this decision “Swiss” type claims for subsequent medical use of known substances and compositions were allowed
Coming back to the decision at hand (G02/08), the claim under discussion is related to a ‘dosage regime’. Detailing particulars related to decision, three questions were referred and answered by the EBA:
Question 1: Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament by patented for use in a different treatment by therapy of the same illness.
Question 2: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.
Question 3: Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision (G05/83).
An interesting reasoning behind the scrapping of “Swiss” type of claims has been provided in the decision which can be summarized as follows
As per the provision of the “old law” i.e EPC 1973, the EBA adopted the (G05/83) decision to fill a gap in the legal provisions and allowed claims related to second therapeutic indication without specifying whether such a second use could be something else than the treatment of another disease.
However, the “new law” i.e EPC 2000 through its Art 54(5) has been drafted to fill in the gap as mentioned. Art 54 (5) expressly provides patent protection of a known substance or composition for “any specific use” of the product as long as the use is not known in the state of the art and is inventive.
Another interesting argument raised is that Swiss-type claims may be objectionable as to their compliance with patentability requirements, due to absence of functional relationship of the feature conferring novelty and inventive-step and the claimed manufacturing process. Thus Swiss-type claims are not necessary and hence unallowable.
Thus in short claims which are ‘Purpose-related product claims’ will henceforth suffice to protect second and subsequent medical indications. Further, as it seems the words ‘any specific use’ would a decisive factor with respect what kind of applications of a known substance or composition will be considered as ‘any specific use’. As in this case ‘dosage regime’ is considered as any specific use.
Only subsequent decisions will enlighten us as to what else would be covered under the ‘any specific use’ criterion. That’s some food for thought!