UK Practice following Enlarged Board of Appeal decision relating to Swiss-Type Claims

As we reported in a recent news item 'Enlarged Board of Appeal Sounds Death Knell for Swiss Type Claims' the European Patent Office (EPO) Enlarged Board of Appeal, in its decision G2/08, decided that the Swiss-type format for claiming medical uses would no longer be accepted. Instead a new format introduced with EPC2000 has to be used. This decision will come into force 3 months after it is officially published and will only apply to new applications filed after then. The decision has yet to be published and therefore has yet to take effect for applications filed at the EPO.

In a recent Practice Note, the UK Intellectual Property Office has set out the UK practice following the decision in G2/08. With immediate effect the Swiss-type claim format will no longer be accepted in the UK. UK Examiners will now object to such claims as lacking clarity. This applies to all pending applications. The wording which should now be used is:

'X for use in the treatment of Y'

If this new wording is not present in an application amendment should be allowed if a new medical use is disclosed since the technical disclosure (i.e., a new medical use for a substance or composition) is the same.

This change in UK practice has been made with immediate effect. The reason for this is that there is no easy way for transitional provisions giving notice in advance of the change in practice and setting up different procedures for applications according to filing date, analogous to the EPO provisions, to be introduced under UK law.

Although we now have a change in practice in the UK and will soon have a change in practice at the EPO it is still advisable to draft Swiss-Type claims in application since there are still a number of foreign jurisdictions where Swiss-type claims are allowable.

Author – Philip French, Head of Biotechnology - details here