Hoffmann Eitle - München, London

22.02.2010 -

New Decision G 2/08 of the Enlarged Board of Appeal – "Dosage regime/ABBOTT RESPIRATORY"

On 19 February 2010, the Enlarged Board of Appeal of the European Patent Office issued its decision in re G 2/08 "Dosage regime/ABBOTT RESPIRATORY" und thus answered a referral on the admissibility and patentability of claims on the second (or further) medical use.

The head notes of the decision are:

"1. Where it is already known to use a medicament to treat an illness, Article 54 (5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

2. Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

3. Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

A time-limit of three months after publication of the present decision in the official Journal of the European Patent Office is set in order that future applicants comply with this new situation."

In this decision, the Enlarge Board of Appeal established legal certainty as regards the admissibility and patentability of inventions relating to a second or further medical indication. Moreover, the Board has called for the end of the Swiss-type claims. In the future, applicants will have to use the following format of a purpose-related product or composition claim:

"Composition comprising drug X for use in the treatment of disease Y".

The complete text of the decision is available for download from the EPO website (www.epo.org).