Hoffmann Eitle - München, London

Hoffmann · Eitle Newsletter 1/2010 - Patents for Dosage Regimes and the End of the Swiss-type Claim Format - Decision G 2/08 of the EPO Enlarged Board of Appeal

Author(s): Dr. Matthias Wolf & Dr. Friederike Heckmann

On February 19, 2010 the Enlarged Board of Appeal of the EPO ("EBA") announced the Decision G 2/08 ("Dosage regime/Abbot respiratory") relating to specific issues of patentability of second medical indication claims under Art. 53(c) and 54(5) EPC 2000. It had to be decided (a) whether in a case where a drug and the disease to be treated were known, a different (new and inventive) treatment of the same disease with this drug is patentable and, if so, (b) whether this different treatment may reside exclusively in a dosage regime. Also, the EBA had to decide whether when interpreting and applying Art. 53(c) and Art. 54(5) EPC 2000 any special considerations apply.

In the decision G 2/08, the EBA answered questions (a) and (b) in the affirmative. Further, the EBA ruled that in the future the Swiss-type claim format established for second medical indication claims in the EBA decision G 5/83 will no longer be admissible under Art. 53(c) and 54(5) EPC 2000.