The end of ‘Swiss’ claims

This article was taken from the Venner Shipley Newsletter edition 21

Changes to the European Patent Convention (EPC) that were agreed back in November 2000 will finally come into effect in December 2007. One important change affects how medical inventions may be claimed and it spells the end of the so-called ‘Swiss’ claim format.

At present, methods for the treatment of the human or animal body by therapy or surgery and diagnostic methods are excluded from patentability. However, it is currently possible to obtain protection for a medical use in the form of ‘purpose-related’ product claims. Such claims are referred to as ‘first medical use’ claims and they may be directed to a product for use in therapy in general or for use in treating or preventing a specific condition. Such claims are considered to recite novel subject matter provided that there is no prior disclosure of the product’s use in therapy. Even if the first medical use claims specify the treatment of a specific condition, the claim is currently anticipated by prior use of the product to treat any condition. Where a product has previously been used in therapy, protection may currently be available via so-called ‘second medical use’ claims, also known as ‘Swiss’ claims, which are directed to ‘use of compound X for the manufacture of a medicament to treat condition Y’.

EPC 2000 does not change the exclusion of methods of treatment from patentability. However, it does mean that applicants will no longer have to rely on the rather artificial ‘Swiss’ claim format. This is an important development because Swiss claims, whilst recognised by the European Patent Office, are interpreted differently in different jurisdictions and may not be recognised in some national courts. Under EPC 2000, a claim in the format ‘product X for use in treating condition Y’ will no longer be anticipated by any therapeutic use. Rather, for a disclosure to be novelty-destroying, it will have to disclose the use of the product for treating the claimed condition.

When EPC 2000 comes into force, the new law will apply to pending applications. Therefore, it may now be appropriate to start including claims that will be acceptable when the new law comes into force. Indeed, where an application includes important ‘Swiss’ claims, delaying grant until after the new law comes into force may be worth seriously considering.

Under EPC 2000, it will still be possible to include ‘Swiss’ claims in applications, but it is quite possible that their use will eventually die out as they should prove unnecessary under the new EPC.

Siân Gill 01 May 2007

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