This post was first published on February 25, 2010.
On reading Siddharth’s post on the 19th February decision (G02/08) from the Enlarged Board of Appeal regarding the Swiss type claims, I got motivated to write something about the Swiss type claims and the reason for its birth and death.
Like in India, Method of Treatment and Method of diagnosis (in vivo) has always been non patentable subject matter in Europe (Article 52(4)). Furthermore, before the concept of Absolute Novelty was introduced by the European Patent Office, a Second medical use of a drug could not get any kind of protection due to two reason: Firstly, the new use would not provide novelty to the product because the product was already known and Secondly, Method of treatment being a non patentable subject matter, a method of treatment using known drug would not be possible either. In this stalemate situation some ingenious brains from Switzerland came up with the Swiss-Type claiming where the method of treatment could be indirectly claimed through a manufacture Claim.
The Swiss type claim usually has the wording:
What is claimed is: “A Use of a product X for the manufacture of a medicament for the treatment of disease Y.”
Once the inventors realized the value of this type of claim wording they extensively started filing such claims at the EPO. Surprisingly some of them even managed to get through the patent filter at EPO through the Swiss type claims.
It was around the same time that the principal of absolute Novelty came into being. As per this principle:
“An invention that possesses the quality of absolute novelty was not publicly known, was not sold or offered for sale (publicly or secretly) and was not made available to the public anywhere in any way prior to some critical date.”
Although most would read this principle and believe that it put an extra responsibility on the Inventor to keep his invention secret until filing, some pharma inventors took it to their advantage by saying that since the new use is novel and not part of prior art, a new use of a known product shall be novel for the purposes of Article 54.
In other words, so long as there is at least one element in the invention to differentiate it from prior art, the novelty can be established. Thus a claim with the following wording became acceptable at the EPO.
What is claimed is: “A product X for the treatment of disease Y”.
Even though the role of Swiss type claims got nullified at this point, till today most of the inventors continued to claim both these types of claims in the patent application making the second claim redundant. After the latest decision made by the Enlarge Board elaborated by Siddharth in his blogpost, the problem of redundancy has been taken care of.
