Politics / Law

Swiss-type medical use claims: The search for harmony

22.08.2011

A Our recent contribution in this column (No. 1-2, Vol. 10, 2011) focused on the end of Swiss-type medical use claims in the EPO. According to the EPO decision G2/08, the traditional Swiss-type medical use claim (“Use of substance X in the preparation of a medicament for the treatment of disease Y”), will no longer be allowed in applications filed on or after January 29, 2011. Claims filed today in the EPO, and directed to further medical uses, must thus be drafted in the new form provided by Art. 54(5) EPC: “Substance X for use in a method of treating disease Y.”
The ultimate value of a claim granted in the EPO is often first determined when this claim is enforced in national courts of EPC contracting states. It therefore remains to be seen how these courts will interpret the new claim form allowed in the EPO. Will national courts interpret the new purpose-limited product claim in the same way as the previous Swiss-type form (this was the EPO’s intention)? Or will they interpret it differently? Or will the new form be admissible at all?
At least in Switzerland, it is questionable whether the new form of the claim in the EPO complies with Swiss patent law. Like Art. 54(5) EPC, Art. 7d of the Swiss Patent Act (SPA) relates to the novelty of second/further medical uses. Both the EPC and SPA provide for the patentability of a substance for which a first medical use is known, for any specific (further) use in a surgical, therapeutic or diagnostics method otherwise excluded from patentability. But where the EPC stops there, the SPA continues on to specify that such purpose-limited substance protection is allowable “... provided they [i.e. substances or mixtures thereof] are only intended for the use in the manufacture of a medicament for the purposes [of the excluded methods].” For second medical use protection, the SPA thus requires an element of intention for the manufacture of a medicament which is lacking in the EPC.
The danger of course is that claims are allowed in the EPO which do not fulfill national (e.g. Swiss) requirements, potentially jeopardizing the enforceability of such claims in the EPC contracting state (Switzerland). To minimise this danger, we recommend pursuing both kinds of medical use claims in parallel for as long as possible: traditional Swiss-type and the newer purpose-restricted product format. This will still be possible for a while, since the traditional Swiss-type claim will still be allowed for EP patents granted and EP applications pending before January 29, 2011.
We are indebted to Dr. André Escher of the IGE in Bern for his informative commentary on this topic, published in sic!, 7-8, 2010, 548 (www.sic-online.ch).

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