7.2.3 Purpose-limited product claims and Swiss-type claims – scope of protection

In T 1780/12 the board examined in the context of the issue of double patenting whether the subject-matter of a claim directed to a new medical use of a known compound was the same, irrespective of whether the claim was in the "Swiss-type" format or in the format according to Art. 54(5) EPC. The decision related to a divisional application with a main claim in the form of a purpose-limited product claim under Art. 54(5) EPC. Claim 1 of the parent application was granted in the "Swiss-type" format. The examining division held that the claims of the parent and the divisional applications were directed towards the same subject-matter "in the sense that both these claims concern the same invention claimed in a different format." It refused the application on the basis that double patenting was prohibited. The board held that there was no double patenting. The decisive issue was whether the claims of the patent granted on the divisional and that granted on the parent had the same subject-matter. The category of a claim and its technical features constitute its subject-matter and determine the protection conferred (see G 2/88, OJ 1990, 93). The claims in question were of different categories: Swiss-type claims were purpose-limited process claims (use of X for the manufacture of a medicament for the treatment of Y) and claims formulated in accordance with Art. 54(5) EPC were purpose-limited product claims (X for use in the treatment of Y). As regards the technical features, the board concluded that both sets of claims defined the same compound and the same therapeutic use, but that the Swiss-type claims comprised in addition the feature of manufacturing a medicament whereas the claim in accordance with Art. 54(5) EPC did not. The claimed subject-matter was thus different. This outcome has been followed in decision T 879/12. As regards the scope of protection, the board considered that a purpose-limited process claim, such as a Swiss-type claim, also conferred less protection than a purpose-limited product claim, such as a claim in accordance with Art. 54(5) EPC (see also T 13/14; for further details with regard to the scope of protection, see chapter II.F.5. "Prohibition of double patenting").

In T 1570/09 the set of claims of the main request contained two independent claims, claim 1 in Swiss-type form and claim 4 as a purpose-limited product claim under Art. 54(5) EPC. The claims aimed to seek protection for one and the same medical use of one and the same active drug. The purpose-limited product claim 4 sought protection for the same medical indication of the same substance as the Swiss-type claim 1, and the notional novelty of claim 1 was not derived from the "medicament" itself. The board stated that there was no longer an objective reason for justifying the simultaneous presence of both claims in the set of claims to be proposed for grant. Allowing such a set of claims would cause the contradictory legal situation that the old provisions in Art. 54 EPC 1973 together with Art. 52(4) EPC 1973, and the new provisions in Art. 54 EPC together with Art. 53(c) EPC, would apply simultaneously to one and the same set of claims. Art. 54(5) EPC applied to the case at issue and thus the purpose-limited product claim 4 of the main request was allowable in view of a new medical indication of a known substance. The Swiss-type form was conceived as an exception under the old law (EPC 1973). Therefore, in the board's view, there was no longer any legal reason for allowing Swiss-type claim 1 in the set of claims of the main request. Accordingly, the main request was not allowable.

In T 1021/11 too, the main request comprised two independent claims for the same medical indication of the same substance, one claim drafted in the Swiss-type format and the other claim following the provisions in Art. 54(5) EPC. The application had been pending when decision G 2/08 date: 2010-02-19 (OJ 2010, 456) was issued and therefore belonged to the category of applications in which the Swiss-type format could, as a general rule, still be used. As both claim formats were available for the application and claims in both formats were present in the main request, the question arose whether both claim types could be present in a single set of claims. The board concurred with the conclusion reached in T 1570/09 that decision G 2/08 date: 2010-02-19 did not give applicants an absolute right to draft two independent claims in one single set of claims for one and the same medical indication of one and the same substance, one of those claims being in the Swiss-type format and the other in the format in accordance with Art. 54(5) EPC. However, it appeared to the board that no prohibition of the coexistence of such claims in one claim set could be deduced from G 2/08 date: 2010-02-19 either, as it was silent in this respect. Having carefully examined the reasoning given in decision T 1570/09, the board found that several factors prevented it from objecting to the presence of claims in the two formats in one single set of claims in the case before it. Firstly, it noted that a single set of claims could be governed by provisions of the EPC 1973 and the revised EPC at the same time. Secondly, the continued existence of the Swiss-type format, in parallel to the provisions of Art. 54(5) EPC, was a direct consequence of the transitional arrangement provided for by the Enlarged Board in decision G 2/08 date: 2010-02-19. Thirdly, the board saw no reason to prevent an applicant from choosing both available formats during the interim period and considered it justified to do so in one set of claims. Even though the claims in both formats provided patent protection for the same medical indication, there was a difference in the subject-matter of the claims due to their category, in combination with their technical features (see above T 1780/12, T 879/12). Thus, by filing two patent applications having the same effective date (two parallel applications or parent/divisional or priority/subsequent application) it was possible for an applicant to obtain patent protection for the same second or further medical indication in both available claim formats. The board therefore did not object to the presence of both formats in a single set of claims, as both formats were applicable to the present application. The board noted that no objections had been raised in similar previous cases (see T 396/09 and T 1869/11), even if the issue had not been discussed in those decisions.