POSTED BY:
Peter Brown
ON:
12 Mar 2010In countries such as the US and Australia methods of medical treatment are patentable subject matter. However, in many countries including New Zealand, methods of medical treatment of humans do not constitute patentable subject matter. Enter the Swiss-type claim.
Swiss-type Claims
Swiss-type claims can be used not only to protect the
manufacture of a known medicament for a novel pharmaceutical use,
but also as substitute claims in place of claims for methods of
human medical treatment.
A Swiss-type claim is generally worded as
follows:
"The use, in the manufacture of a medicament, of [the active
compound] for [the new activity]."
EPO Decision
On 19 February 2010 the European Patent Office's (EPO's)
Enlarged Board of Appeal ruled (case no. G 0002/08) that Swiss-type
claims will no longer be considered patentable subject matter, and
a new claim type will take its place. The EPO's newly proposed
claim structure, which we have coined a Euro-type claim, will
read:
"A [known substance or composition] for use in [new
therapeutic use]."
Thus, an exemplary fictional claim could be:
"A salicylic acid composition for use in the treatment of
foot ache."
This change at the EPO is likely to occur in the next 6-12
months. As changes at the EPO are often followed by the New Zealand
Patent Office, it would be no surprise if New Zealand follows the
EPO's lead at some point in the near future.
Implications of EPO Decision
So if you are considering patent protection in Europe,
what are the implications for patent protection in this
jurisdiction?
On the one hand, it appears that the Euro-type claim is
geared at the manufacture and sale of the composition for the
intended new use - so, this is similar to a Swiss style claim.
However, upon closer inspection the wording of the Euro-type claim
also suggests that the scope may offer broader protection. This is
because the words "for use in the treatment of" may be interpreted
to mean the actual use of the composition, not just
manufacture/sale of the composition for a particular
use.
Any difference in claim interpretation will likely be left
to the Courts to clarify. It is interesting to note, however, that
the EPO does not intend the new claims to alter the scope of the
protection.
Questions…and Answers?
Numerous other questions remain to be answered.
For instance, if the scope of protection extends to the
actual use, will this constitute protection for methods of medical
treatment? In both Europe and New Zealand, methods of medical
treatment are strictly not patentable subject matter as they are
considered contrary to public good. This could result is greater
confusion surrounding what is patentable in certain
jurisdictions.
Furthermore, will the new claim structure, if introduced
into New Zealand, support novel dosage regimes, as previously
provided by Swiss-type claims? The EPO has just recently signalled
that dosage regimes will remain patentable subject matter, despite
Swiss-type claims being banned. In Europe, this is excellent news
for pharmaceutical companies looking for additional patent
protection to replace their initial patent upon its
expiry.
Future Developments
In the event a practice note issues from the New Zealand
Patent Office, we will report again. We will outline the Patent
Office's views on this matter and how this may affect protection of
2nd use pharmaceutical claims in New Zealand.
By Dr Peter
Brown, Technical Adviser, and Jason Rogers,
Partner
Other articles you might be interested in:
Intellectual Property Filing Strategies - Choosing
Countries
Patent
Filing Strategy: Timing Is Everything