Saturday, 21 January 2012

T 1827/07 – A Late Swiss

In this case claims 1 to 4 related to hydrophilic sulphonamide derivatives, claim 5 to their use as a medicament, claim 6 to their use for the preparation of a medicament against certain diseases, claim 7 to pharmaceutical compositions containing these compounds, and claims 8 and 9 to processes for making the compounds.

The Board found the claims to involve an inventive step. It then examined the allowability of the use claim 6:

[6] Claim 6 is directed to the “Use of a sulfonamide derivative according to any of claims 1-4 for the preparation of a medicament for the treatment of a neuronal disorder selected from ...”. Thus it is in the form of a “Swiss-type claim”.

The Enlarged Board of Appeal has decided that a claim of this type may no longer be used “Where the subject-matter of a claim is rendered novel only by a new therapeutic use ...” (see G 02/08 [7; headnote 3]).

This decision applies only to patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 02/08 [7.1.4], in combination with the "Notice from the European Patent Office dated 20 September 2010 concerning the non-acceptance of Swiss-type claims...", OJ EPO 10/2010, 514, point 4).

The present application is not affected by this ruling in G 02/08, as it has a priority date of 27 September 2000.

Hence, Swiss-type claim 6 may remain in the present set of claims.

To download the whole decision, click here.

The file wrapper can be found here.


Anonymous said...

G2/08 deals with known compounds and their known use to treat a particular illness, and in particular claiming the known compounds for a new use. G2/08 does not relate to new compounds as is the case here. Thus, the discussion about the date of filing would seems superfluous to me. Applicants may draft the claims in the Swiss-type. However, they should be aware that the scope of protection is not the same as a medical use form according to Article 53(c) EPC.