Second medical use claims and double patenting (T1780/12)

Decision T1780/12 of the EPO’s Technical Board of Appeal (TBA) was an appeal against the refusal of a divisional patent application on the basis that it related to the same subject-matter as the granted parent application in order to prevent double patenting.

Both applications related to a specific compound and its therapeutic use. The claims of each differed in that the claims of the parent were Swiss-type claims whereas the claims of the divisional were use-limited product claims.

The TBA concluded that, although the two applications related to the same invention, the subject-matter and scope of the claims differed. This was because the Swiss-type claims were considered to be purpose-limited process claims whereas the claims of the divisional were purpose-limited product claims. They are thus different categories of claims and furthermore the Swiss-type claims include the manufacture of the medicament.

The TBA stated that, as it is accepted that a process or method claim generally confers less protection than a claim to the product itself, it follows that Swiss-type claims confer less protection than medical use claims and thus the applicant had a legitimate interest in pursuing the broader claims of the divisional application, even though they overlap significantly with those of the parent application.

The full decision can be found here. It will be of relevance to practitioners in the pharmaceutical field for some time, though the EPO is no longer permitting Swiss-type claims to be included in new applications.

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