Claims to methods of medical treatment are not allowable under European patent law (see Article 52(4) of the European Patent Convention (EPC)). Accordingly, claims to second medical uses of known substances have traditionally been drafted in the somewhat cumbersome format "Use of substance X for the manufacture of a medicament for the treatment of disease Y". These claims are known as Swiss-type claims.
Amendments to the EPC (EPC 2000) allowed second medical use claims without the convoluted wording of Swiss-type claims. These purpose-limited product claims have the format "Substance X for use in the treatment of disease Y". The EPC 2000 amendments entered into force on 13 December 2007. As it was arguable that Swiss-type and purpose-limited product claims were of different scope, both claim types have been allowed by the European Patent Office (EPO). However, in its G2/08 decision of 19 February 2010, the Enlarged Board of Appeal at the EPO held that, in light of the EPC 2000 amendments, the Swiss-type claim format should no longer be used for second medical use claims. The Enlarged Board added that the decision should not be retroactive and, instead, set a timeframe of three (3) months from publication of its decision in the EPO Official Journal for compliance by future applications. Publication took place on 28 October 2010 and, therefore, only currently pending patent applications and those filed before 28 January 2011 can still employ the Swiss-type claim format.
Accordingly, for patent applications filed after 28 January 2011 the Swiss style format will no longer be acceptable in Europe. Notwithstanding, we recommend including both Swiss-type and purpose-limited product claims in Patent Cooperation Treaty (PCT) applications as Swiss-type claims are still allowable in certain jurisdictions including, notably, Australia, New Zealand and China.
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