Is the enlarged board of appeal of the European patent office authorised to extend the bounds of the patentable? The G-3/85 second medical indication/EISAI and G-2/08 dosage regime/ABBOTT RESPIRATORY cases

Abstract

The European Patent Convention (EPC), which governs the grant of European patents by the European Patent Office (EPO), forbids the grant of patents for methods of medical treatment. In 1984, in an attempt to find a manner in which European patents could be granted to those who found new medical treatments using existing drug compounds, the Enlarged Board of Appeal (EBoA) of the EPO sanctioned a novel form of patent claim, the "Swiss-type use claim", under which a known process for producing a known drug product was considered to acquire novelty by virtue of the new use to which the drug product was to be put. Following the revision of the EPC in 2000, in a 2010 decision, the EBoA has declared that the Swiss-type use claim is no longer to be permitted. In this article we explore the 1984 and 2010 decisions and their ramifications for the many European patents already granted with Swiss-type use claims. We conclude that the 2010 decision is both courageous and correct