A recent EPO Board of Appeal decision (T1780/12) has highlighted a difference between the scope of protection provided by different types of second medical use claims, and clarified the circumstances under which the EPO will make a finding of double patenting.
Where a substance having a therapeutic application is itself known, in Europe claims directed to the use of that substance in a different new and inventive therapeutic method are still allowable.
Case T1780/12 concerned an appeal against the decision of an EPO Examination Division to refuse a divisional application (EP2) having second medical use claims, due to a double patenting objection in view of the claims of its granted parent (EP1).
The divisional application EP2 had claims in the form "Antibody X for use in the treatment of a disease Y", the second medical use form of wording legitimised by the EPC 2000 review of the European Patent Convention. The parent patent EP1 had older style Swiss-form second medical use claims previously allowed by the EPO, in the form "Use of Antibody X in the manufacture of a medicament for the treatment of a disease Y".
During prosecution the Examining Division concluded that since the inventions claimed were the same, the parent patent and divisional application must be claiming the same subject-matter.
The European Patent Convention does not explicitly prohibit double patenting. However, the established EPO practice is not to allow grant of two patents to the same applicant claiming the same subject-matter, including in the case of a patent and a divisional application.
The Examining Division did not consider the scope of the claims of EP1 and EP2 in detail when it made its finding of double patenting. Instead it asserted that, since the intention of the legislator when EPC 2000 was drafted was that Swiss-form claims and second medical use claims should have the same scope of protection, both claim sets must have the same scope.
The applicant appealed, arguing that the "same subject-matter" test for double patenting was not met. They submitted that a Swiss-form claim is a purpose-limited process claim; a second medical use claim is a purpose-limited product claim; and that a process claim and a product claim were in different categories so could not have identical scope. The applicant argued that, since the claim scopes were different, the claims could not relate to the same subject-matter.
The Board of Appeal agreed with the applicant, reasoning that although the claims of EP1 and EP2 related to the same invention, what had to be considered for double patenting was the subject-matter of the claims. They considered that it was well established that "subject-matter" constituted the category of a claim and its technical features (G2/88). The Board further commented that it is generally accepted under European practice that a claim to a particular physical activity (e.g. a process) confers less protection that a claim to the physical entity per se (e.g. a product). Therefore, it follows that a purpose-limited process claim confers less protection than a purpose-limited product claim, and so the scope of protection of the claims of EP1 and EP2 were notably different.
The Board also found the claim sets to contain different technical features. The Swiss-form claims of EP1 included the additional element of requiring "manufacture of a medicament", which the second medical use claims of EP2 did not. The Board held that that additional element could not be ignored.
In support of their finding that Swiss-form claims and second medical use claims have different scope, the Board referred to several earlier EPO cases, including T250/05. In that case, a request to amend a European Patent post-grant by changing a Swiss-form (process) claim to second medical use (product) claim was found unallowable, since it would have extended the protection conferred by the patent, in contravention of Article 123(3) EPC. That conclusion would not have been reached if the two claim types had provided the same protection.
As the EPO no longer allows Swiss-form claims for newly-filed application (following the decision of the Enlarged Board of Appeal in G2/08, applications having an earliest priority date on or after 29 January 2011 may only contain EPC 2000 second medical use claims), in some senses Swiss-form claims are now of historical interest. However, most currently pending European applications date from before 29 January 2011, and this case shows that there are legitimate reasons to retain both types of claims where possible, either together in one patent or in two separate patents. It is of course pleasing to see that EPC 2000 second medical use claims have been interpreted to provide broader protection. However, since there is a greater body of case law associated with Swiss-form claims, their inclusion may afford some additional legal certainty.
The full decision of T1780/12 can be found here:
http://www.epo.org/law-practice/case-law-appeals/recent/t121780eu1.html
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