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No. 180 Managing Intell. Prop. 82 (2008)
A Brief History of Swiss-type Claims

handle is hein.journals/manintpr180 and id is 82 raw text is: IndustryFocus: SPONSORED EDITORIAL Changes to European patent law have brought an end to the need for Swiss-type claims. Bdatrice Holtz and Lionel Vial of Lavoix explain what replaces them A brief history of Swiss-type claims he patentability of therapeutic substances or composi- tions was initially defined in Article 54.5 of the 1973 version of the European Patent Convention (EPC). The patentability of substances or compositions comprised in the state of the art for use in methods of treating the human or animal body by surgery or therapy was not excluded, provided that their use for any of such methods was not comprised in the state of the art (see table). In other words, EPC 1973 authorized patents on a first medical indi- cation of known substances or compositions. Strictly inter- preted, it could also forbid patentability of second (or fur- ther) medical indications. However, taking the importance for the pharmaceutical industry, of such a protection into consideration, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) gave another, less strict, interpretation of Article 54(5) EPC 1973 in its famous Second Medical Indication Decision, G 5/83 of December 5 1984. The EBA considered that Article 54(5) EPC 1973 merely excluded claims relating to second (or further) medical indications from being drafted as purpose-limited product claims; no intention to exclude such indications generally from patent protection could be deduced from the terms of the EPC. As a consequence, the EBA, adopting a practice followed by the Swiss Federal Intellectual Property Office, found it legit- imate to allow claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application, thereby paving the way for the worldwide success of so-called Swiss-type claims. More recently, the situation was clarified with the revised version of the EPC (EPC 2000), which entered into force in December 13 2007. Article 54(5) EPC 2000 (see table) now explicitly establishes protection of second (or further) medical indications, rendering the Swiss-type circumlocution unneces- sary for prosecuting European patent applications. Beatrice Holtz After obtaining her PhD in biochemistry in 2000 from the Institut National Agronomique Paris-Grignon, Beatrice Holtz joined Lavoix in 2001, becoming partner in 2007. As a French and European patent attorney, her specialism includes drafting and prosecuting patent applications, filing Supplementary Protection Certificates, conducting patentability and free- dom-to-operate opinions, and prosecuting opposition and appeal procedures. She is also involved in patent litigation. Lionel Vial Lionel Vial graduated from the Ecole Normale Superieure de Cachan in 1998 and holds a PhD in biochemistry and molecular biology from the Ecole Polytechnique (2002). He joined Lavoix in 2005 after three years of practice at another IP firm where he worked in biotechnology. He has been a European patent attorney since 2006. His areas of practice mainly focus on drafting and prosecuting patent applications, patentability and freedom-to-operate opinions, and opposi- tion procedures. A first consequence of the changes brought by EPC 2000 is formal. What form should now be adopted claims relating to second (or further) medical indications? The current version of the Guidelines for Examination in the EPO (published in December 2007) remains silent on that point, still only referring to Swiss-type claims. But the first post-EPC 2000 decision relating to second medical indications from a Board of Appeal of the EPO (T1127/05 - 3.3.4 of January 15 2008) gives an example of a purpose-limited product claim deemed acceptable: An ov3 antagonist for inhibiting 0vf33-mediated angiogenesis in a tissue, where- in said antagonist is an organic mimetic compound having a structure according to formula 7, 9, 10, 12 or 14. 8 2 www.managingip.com June 2008

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