The end of the « Swiss-type » claims: G 2/08 decision


The “Swiss-type” claims relate to “the use of a substance or composition X for the manufacture of a medicament for therapeutic application Z”. This particular redaction form originates from the absence, in the first version of the European Patent convention (EPC 1973), of dispositions relating to the patentability of a known medicament for a second therapeutic application (or for subsequent therapeutic applications).

It was furthermore impossible to patent directly the second therapeutic application of a known medicament as a method of therapeutic treatment, because such a method for therapeutic treatment is excluded from patentability by Article 53c EPC. “Swiss-type” claims, imposed by decision G6/83, have bypassed this interdiction by enunciating a claim relating to the use of the substance, not in a method for therapeutic treatment, but in a method of manufacturing of a medicament. However, the insertion of <link http: patents law legal-texts html epc e ar54.html external-link-new-window>Article 54(5) EPC, at the moment of the revision of the EPC in 2000, has allowed the patentability of a medicament for a second therapeutic application, thereby limiting the interest of “Swiss-type” claims. Indeed, a medicament can now be protected for its second therapeutic application, by a claim such as “substance or composition X for treating a disease Y”, on the proviso, of course, of novelty and inventive step. Rendering a decision on the relevance of “Swiss-type” claims, given the existence of Article 54(5) EPC, the Enlarged board of Appeal of the EPO, has, in its decision <link http: dg3 pdf g080002eu1.pdf external-link-new-window>G2/08, decided that these claims were not conform anymore to the EPC, and has given 3 months to the applicants for conforming to the decision, starting from its publication on October 29, 2010. Hence, European patent applications with an oldest priority date subsequent to January 29, 2011 shall not contain any “Swiss-type Claim”, under penalty of being requested an amendment of the claims during the Examination.