The transitional provisions of the EPC 2000 for patents relating to "further medical uses" have given rise to a hybrid generation of European patents that have undergone examination under the old law (EPC '73) but which, as a result of their date of grant, are subject to the new law (EPC 2000). In many cases, claim wording in the granted patents reflects the old practice.
The Boards of Appeal of the European Patent Office (EPO) are now beginning to provide insight into the potential consequences of old-type claims in new-type patents.
Case T599/06 confirms that a claim drafted in the form of a "first medical use" under the old law but which indicates the therapeutic use in a specific manner (for example "Substance X for use in treating disease Y"), will be regarded as a claim to a second medical use under the new law. This has significant implications for the assessment of novelty, for example in opposition proceedings, and perhaps also for claim scope in enforcement.
In T406/06, the Board has suggested that there is no place for the old Swiss-type claim under the EPC 2000, and that the special regime which these claims previously enjoyed for assessment of novelty might no longer be justified. The Board hinted that novelty of Swiss claims might now have to be evaluated on the basis of the substance itself or the manufacturing process. Such an assessment would no doubt prove disadvantageous for many patentees.
It remains to be seen how national courts will consider this special generation of European patents.
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Carol Almond-Martin |
