Date: 3 March 2010
In a recently issued decision of the Enlarged Board of Appeal, the EPO's highest judicial authority, the practice of drafting second medical use claims in what has come to be known as the Swiss-type claim format has been disallowed for new applications.
The Swiss-type claim format was devised to enable applicants to claim a second or further medical use of a known therapeutic substance. The format utilised the expression, " use of X for the manufacture of a medicament for use in treatment of Y", where X was a known therapeutic substance and Y was a new disease condition. European patent law was changed recently with the introduction of the so-called EPC 2000 amendments. Since the introduction of EPC 2000 it has been possible to claim second or further medical uses in a less convoluted manner, with expressions such as " substance X for use in treatment of Y". There has been uncertainty over whether or not the old "Swiss-type" format could still be used, and in some cases we have been advised by Examiners to retain it in addition to the new form of claim.
This uncertainty has now been removed by Decision G 2/08, which makes it clear that for existing applications, claims in the "Swiss-type" format may remain, but for new applications (i.e. those with a filing or priority date three months later than a date in the near future but as yet unset), claims must be in the new, EPC 2000, format.
Wednesday, March 3, 2010