On February 19, 2010, the European Patent Office Enlarged Board of Appeals issued its decision in In re Abbott Respiratory, G 0002/08 (EPO Enlarged Board of Appeal 2010). In this decision, three questions were considered by the Enlarged Board, but only the third question will be considered here:
(3) Are any special considerations applicable when interpreting and applying Articles 53(c) and 54(5) EPC 2000?
While the exact meaning of this question is not immediately evident to U.S. practitioners, the Board was being asked to consider the need for Swiss-style claims in light of EPC 2000 coming into force on December 13, 2007.
Before discussing the Board's decision, it may be useful
to review the two types of "use" claims that existed in Europe before
the passage of EPC 2000 and up to the issuance of this opinion .
.The first and broadest type of use claim is the first medical use claim, which may be written as:
Compound X for use as a medicament.
The second and more narrow type of use claim is the Swiss-style claim, which may be written as:
The use of compound X for the manufacture of a medicament for treating of disease Y.
After considering the changes made by EPC 2000, the Board answered the question as follows:
Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.
Thus, the use of Swiss-style claims is to be forbidden in the future. Elsewhere in the opinion, the Board states that applicants must stop using Swiss-style claims no later than three months after the opinion is officially published in the Journal of the EPO, which has not happened yet.
The Board also noted that this new rule has "no retroactive effect." Consequently, patents that issued with Swiss-style claims will not be impacted.
If Swiss-style claims cannot be used, then what format can be used? Rather than using Swiss-style claims in the future, applicants should use second medical use claims, which may be written as:
Substance X for the treatment of disease.