UK: Board Of Appeal Finds Swiss-Type Claims Have Different Scope To EPC 2000 Second Medical Use Claims

Last Updated: 5 June 2014
Article by Frederick Nicolle and Matthew Georgiou

A decision (T1780/12) from the EPO technical boards of appeal indicates that Swiss-type claims of the form "Use of [product X] in the manufacture of a medicament for the treatment of [disease Y]" provide a different scope of protection than EPC 2000 second medical use claims of the form "[product X] for use in the treatment of [disease Y]". Swiss-type claims are widely used in European patents directed to new medical indications of known compounds, so this decision could have important implications for the enforcement of many patents in the national courts across Europe.

For policy reasons, European patent law has long prohibited the patenting of methods of medical treatment on the human or animal body. By way of compensation, the law allows for the patenting of known substances or compositions by reference to their first use in any method of medical treatment. This is an exception to the normal principle of European patent law that the intended use of a product does not usually confer novelty to that product. However, the old EPC 1973 made no specific reference to further medical uses of existing compounds already known for a medical use. Instead, it had become established practice to claim further medical indications using the Swiss-type claim format set out above.

On the 13th December 2007, the EPC 2000 rectified this situation by introducing specific protection for further medical uses of known products, under new Article 54(5) EPC, via claims drafted in the form "[product X] for use in the treatment of [disease Y]". It was the intention of the legislator that this new form of claim would afford equivalent protection to that of the previous Swiss-type claim. However, doubts remained on a national level about whether or not the intention of the legislator had been fulfilled and this has now been explicitly challenged by the EPO technical boards of appeal in the decision T1780/12.

T1780/12 concerned a case of double patenting. The applicant already owned a granted patent (EP1) containing a Swiss-type claim. They also applied for a divisional application (EP2) containing an EPC 2000 second medical use claim for the same substance and medical indication.

The Examining Division refused EP2 for double patenting, because it considered that an EPC 2000 second medical use claim is directed to the same subject matter as a corresponding Swiss-type claim. They stated that the intention of the EPC legislator was that the two claim formats were equivalent and dismissed the applicant's arguments that the differing scope of the respective claims was relevant.

The Board of Appeal in question disagreed with the Examining Division, reasoning that the subject matter of a claim is determined by its technical features and its category (i.e. whether it is a claim to a product, process, apparatus or use). Considering the categories of the respective claims, the Board held that claim 1 of EP1 (a Swiss-type claim) was a purpose-limited process claim, whereas claim 1 of EP2 (an EPC 2000 second medical use claim) was a purpose-limited product claim. It followed directly from this that the subject matter of the two claims was different and so the grant of EP2 could not be prevented for double patenting vis-à-vis EP1.

The Board went further and concluded that the difference in subject matter led to a variance in the protection afforded by both formats of claim. According to the Board, since a claim to a particular physical activity (e.g. a method, process or use) confers less protection than a claim to the physical entity per se, it followed that a purpose-limited process claim (i.e. a Swiss-type claim) confers less protection than a purpose-limited product claim (i.e. an EPC 2000 second medical use claim).

It is interesting to see an EPO Board of Appeal reach this conclusion, because it goes against the intention of the legislator that EPC 2000 second-medical use claims should afford equivalent protection to that of Swiss-type claims. The Board made a point to highlight that it was only the intention of the legislator that the scope of the claims should be the same and it clearly thought that the intention had not been achieved in practice.

From an enforcement perspective, the scope of protection of these claims may not be the only difference. The UK Patents Act defines the meaning of infringement differently where the invention is a product compared to a process. Given that the EPO boards of appeal have explicitly classified Swiss-type claims as process claims and EPC 2000 second medical use claims as product claims, this could lead to a divergence in the enforcement of EPC 2000 second medical use claims and Swiss-type claims under the UK Patents Act and potentially the national law of other European states.

Following the Board's logic, an EPC 2000 second medical use product claim would be directly infringed by dealings in the product itself (though it would also be necessary to show that the product was intended for use in the specified medical treatment). However, by the same logic, a Swiss-type process claim would only be directly infringed by manufacturing the claimed medicament in the UK, or in dealing with the medicament obtained directly by means of the claimed process. Quite how this distinction will manifest itself in practice will be a matter of great interest to those in the pharmaceutical sector.

As such, we continue to recommend that EPC 2000 second medical use claims are included in pending applications wherever possible, alongside Swiss-type claims. For granted patents, it is unlikely that Swiss-type claims can be converted into EPC 2000 second medical use claims, because, according to the Board, this would lead to an impermissible extension of the scope of protection afforded by the patent. However, where a pending divisional application exists, T1780/12 provides comfort that EPC 2000 second medical use claims pursued in the divisional would not conflict for double patenting with a corresponding Swiss-type claim in a granted parent patent.

Need advice?

For more information, please contact email@carpmaels.com.

Carpmaels & Ransford LLP is a leading firm of European patent and trade mark attorneys based in London. For more information about our firm and our practice, please visit our website at www.carpmaels.com.

This Briefing Note was first published in the IAM IP Newsletter.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.