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March 22, 2007

Comments

Mr Crawford's assumption that claims drafted under the format:
"10. The use of a compound or pharmaceutically acceptable salt of claim 1 as a medicament.

11. The use according to claim 10, wherein the medicament is suitable for use in treating condition Y or is suitable for use in patients who are at risk of developing condition Y."

are allowable under Art. 54(4) and 54(5) EPC2000 is wrong.
First of all, first medical use claims were and still will be under the format:
"Product X for use as a medicament" or "Product X for use in medicine" or "Product X as an analgesic".
Further medical uses of known compounds used in medicine will have to be drafted under the format "Product X for use in the treatment of disease Y" to meet the requirements of Art. 54(5) and 53(c) EPC2000
He is nevertheless correct when writing that "Swiss type" claims of the type "Use of product X for the manufacture of a medicament for treating disease Y" will still be allowable.

Thank you for you comments regarding my post. I will address your comments in the order that they were presented.

First, you disagree with the proposed claim format I suggested. As a preliminary matter, this format was based on communications with one of our European associates. As I stated in my article, "One way to draft first and second medical use claims is:" This language clearly indicates that there are many possible ways to claim first and second medical uses.

Second, you say that my proposed format is "wrong" and not "allowable under Art. 54(4) and 54(5) EPC2000." After receiving your comments, I re-reviewed these articles, and I cannot find any support for such an assertion in these articles. For brevity's sake, I have not repproduced the articles here. However, I do not want to discount the possibility that you are aware of some case law that I am not. If so, I would appreciate hearing more about it.

Your third comment is directed towards the format of first medical use claims. I wrote that first medical use claims may be written as "The use of a compound or pharmaceutically acceptable salt thereof as a medicament." I also stated "Of course, other formats for first medical use claims are also perfectly acceptable." One of the formats that you seem to prefer is "Product X for use as a medicament." In the past, I have used this format as well. I have also seen or used the following, which (along with the format you suggest) may be found in the Examination Guidelines for Patent Applications relating to Medical Inventions in the UK Intellectual Property Office June 2007: i) (Substance X) for use in the treatment of (medical condition Y); ii) (Substance X) for use as a (Y-treating agent); and iii) As a (Y treating agent), the (substance X). As the old saying goes, there is more than one way to skin a cat.

After reviewing my post, I see that my suggested format for first medical use claims contains a typographical error, because I omitted the variable "X." Inserting the "X" into my first medical use claim affords the following "The use of a compound X or pharmaceutically acceptable salt thereof as a medicament." I do not see a big difference between your suggested format and my (revised) format. I note that mine also expressly covers a "pharmaceutically acceptable salt" of the compound.

In your fourth comment, you disagreed with the format I suggested for the second medical use claim. More specifically, you stated "Further medical uses of known compounds used in medicine will have to be drafted under the format "Product X for use in the treatment of disease Y" to meet the requirements of Art. 54(5) and 53(c) EPC2000." I believe that your suggested claim format would be accepted by the EPO but I think mine would be as well. Again, I do not understand Art. 54(5) or 53(c) EPC 2000 to require a particular claim format be used or the use of a particular wording, nor do I believe that there is only one way to draft a claim.

Finally, at least we agree that "Swiss" claims are not invalid.

Thank you for reading my article and for taking the time to submit a comment regarding it.

Brad

The comments to this entry are closed.

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