News Item

EPO Enlarged Board of Appeal announces the end of Swiss form claims

19 February 2010

In Decision G02/08 issued today, the Enlarged Board of Appeal of the European Patent Office (EPO) has decided that Swiss-form claims will in future no longer be permitted. Specifically, they have said: “Therefore, 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”.

Importantly, this change has not been made retrospective. It will apply only to applications having a priority date after a date three months after the Decision is published in the Official Journal of the European Patent Office (which will itself take some months).

Instead, in the case of the first or further medical use of a known compound, the form of claim now allowed under the EPC 2000 (previously known as the “first medical use” form of claim) must now be used, namely:

[Known substance or composition] for use in [new therapeutic use].

This “product for use” form of claim is simpler than the Swiss-form claim, which is a process claim having the form:

Use of [known substance or composition] in the preparation of a medicament for use in [new therapeutic use].

This announcement ends twenty five years of use of these claims at the EPO.

The EPO generally considers that the Swiss-form claim, and the form of claim that must now be used, have the same scope. In Decision G02/08, it is suggested that the new form of claim might be broader in scope. However, the precise scope of both types of claim has not really been determined by European courts. But with granted patents having Swiss-form claims still having many years to run, it is possible that the question of comparative scope will come up for review in national courts in due course.

This change in practice does not affect the substantive issue of what medical inventions are patentable, but only the form of claim that can be used. It will be possible to amend applications with claims in a form not accepted by the EPO to comply with EPO practice.

For more information, contact your usual Marks & Clerk attorney or Darren Smyth at dsmyth@marks-clerk.com.