Medical Use Claims – The More the Better after all?
4 January 2016
It has been common drafting practice to include both pre-EPC 2000 Swiss-type claims and post-EPC 2000 purpose-limited second medical use claims in the same patent application. Once again, whether this is allowable or not, has been considered by the EPO Boards of Appeal.
At the start of last year we reported to you that the Board of Appeal of the European Patent Office (EPO) held that, where a set of patent claims included a purpose-limited claim for a second therapeutic use of a known product, permissible under the European Patent Convention (EPC) 2000, the applicant could not also have a Swiss-type claim for the same product and use. The full report of our decision can be found here.
However, in an apparent U-turn, a conflicting decision has been issued by a different Board (T1021/11). In the case in question, the patent was pending when the EPC 2000 came into force. The Applicant then amended the application to additionally include the new type of purpose-limited claims and this was done within the transitional period allowed by the Enlarged Board of Appeal in Decision G 2/08. The option to include each type of claim was therefore available at the time of the amendment.
The Board of Appeal held that there would be no issue of double-patenting, as the formats differ in their subject matter: the Swiss-type claim is a purpose-limited process claim featuring a manufacturing step, whereas the EPC 2000 style claim is a product claim. The Board therefore considered that having both claims in a single set of claims would not be problematic.
In practice, it still seems prudent to prioritise purpose-limited claims. Swiss-type claims could also be included in a “belt and braces” approach, and, it would appear that for the time being, it may be possible to maintain both types of claim, should you choose to do so.
Life Sciences & Chemistry Group
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This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, January 2016