In countries such as the US and Australia methods of medical
treatment are patentable subject matter. However, in many countries
including New Zealand, methods of medical treatment of humans do
not constitute patentable subject matter. Enter the Swiss-type
In this situation Swiss-type claims can be used not only to
protect the manufacture of a known medicament for a novel
pharmaceutical use; but also as substitute claims in place of
claims for methods of human medical treatment.
A Swiss-type claim is generally worded as follows:
"The use, in the manufacture
of a medicament, of [the active compound] for [the new
On 19 February 2010 the European Patent Office's (EPO's)
Board of Appeal ruled that Swiss-type claims will no longer be
considered patentable subject matter, and a new claim type will
take its place. The EPO's newly proposed claim structure, which
we have coined a Euro-type claim, will read:
"A [known substance or composition] for use in [new
Thus, an exemplary fictional claim could be:
"A salicylic acid composition for use in the treatment
of foot ache."
This change at the EPO is likely to occur in the next 6-12
As changes at the EPO are often followed by the New Zealand
Patent Office, it would be no surprise if New Zealand follows the
EPO's lead at some point in the near future.
So if you are considering patent protection in Europe, what are
the implications for patent protection in this jurisdiction?
On the one hand, it appears that the Euro-type claim is geared
at the manufacture and sale of the composition for
the intended new use - so, this is similar to a Swiss style claim.
However, upon closer inspection the wording of the Euro-type claim
also suggests that the scope may offer broader protection. This is
because the words "for use in the treatment of" may be
interpreted to mean the actual use of the composition, not just
manufacture/sale of the composition for a particular use.
Any difference in claim interpretation will likely be left to
the Courts to clarify. It is interesting to note, however, that the
EPO does not intend the new claims to alter the scope of the
Numerous other questions remain to be answered.
For instance, if the scope of protection extends to the actual
use, will this constitute protection for methods of medical
treatment? In both Europe and New Zealand, methods of medical
treatment are strictly not patentable subject matter as they are
considered contrary to public good. This could result is greater
confusion surrounding what is patentable in certain
Furthermore, will the new claim structure, if introduced into
New Zealand, support novel dosage regimes, as previously provided
by Swiss-type claims? The EPO has just recently signalled that
dosage regimes will remain patentable subject matter, despite
Swiss-type claims being banned. In Europe, this is excellent news
for pharmaceutical companies looking for additional patent
protection to replace their initial patent upon its expiry.
In the event a practice note issues from the New Zealand Patent
Office, we will report again. We will outline the Patent
Office's views on this matter and how this may affect
protection of 2nd use pharmaceutical claims in New Zealand.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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