Art. 54(5) EPC was introduced into the Convention as part of the revision of the EPC. Under the transitional provisions for EPC 2000, Art. 54(5) EPC shall apply to pending applications in so far as a decision on grant has not been taken (T 1599/06 and T 1127/05).
In T 1599/06 the board noted that under the then applicable version of the EPC (EPC 1973) the claim at issue would be regarded as a product claim to a first medical use under Art. 54(5) EPC 1973, although the therapeutic use was indicated in a specific manner. However, a revised version of the EPC was about to enter into force (EPC 2000 on 13 December 2007). Under the legal situation as from 13 December 2007, claim 1 would be regarded as a claim relating to a second medical use under Art. 54(5) EPC since it defined the use in a specific manner.
The board observed that under the transitional provisions for EPC 2000, the new Art. 54(5) EPC would apply to pending applications in so far as a decision on grant had not been taken. Although pursuant to Art. 111(1) EPC 1973 the boards of appeal could exercise any power within the competence of the department responsible for the decision under appeal, the boards did not, in practice, take decisions to grant patents themselves, but remitted the case for that purpose to the department of first instance. This was because several further requirements of a formal nature, such as the provision of a translation of the claims, still had to be fulfilled. The board noted that, since the deciding board was following this practice, it would de facto not be possible for the patent application at issue to be granted before 13 December 2007. The board therefore considered it already necessary to take the new situation under the EPC 2000 into account when examining the claims at issue. Claim 1 was thus interpreted as a product claim for a second medical use in accordance with Art. 54(5) EPC.
In T 385/07, although the subject-matter of the claims complied with the requirements of the EPC as then in force, the board did not consider it appropriate to remit the case to the examining division with the order to grant the patent on the basis of these claims. The board noted that it had to be taken into account that the EPC 2000 would enter into force on 13 December 2007 and that, according to Art. 1 No. 3 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Art. 7 of the Act revising the EPC of 29 November 2000, the new Art. 54(5) EPC of the EPC had to be applied to European patent applications pending at the time of its entry into force, in so far as a decision on the grant of the patent had not yet been taken.
Since it was highly unlikely in the case at issue that a grant decision would be taken before 13 December 2007 (the description had still to be adapted); and since Art. 54(5) EPC allowed a claim format different from the so-called Swiss-type claim format endorsed by the Enlarged Board of Appeal in its decision G 5/83 (OJ 1985, 64), the appellant was able to consider amending its claims in the light of the forthcoming change in substantive law. The board therefore remitted the case to the department of first instance for further prosecution.
In T 1314/05, the board stated that decision G 5/83 (OJ 1985, 64; point 21 of the Reasons) made it quite clear that its special approach to the derivation of novelty was applicable only to inventions or claims relating to the use of substances or compositions in a method of treatment referred to in Art. 52(4) EPC 1973, where that method did not yet form part of the state of the art. The board decided that G 5/83 did not imply that the special approach to novelty assessment which was associated with the Swiss-type claim for substances or compositions could be applied to the use of a device to produce an appliance intended for medical purposes. Extension of that special approach to the production of such appliances ran counter to the general legal principle that exceptions are to be construed narrowly. This was confirmed by the fact that the EPC 2000 legislator in Art. 54(5) EPC expressly restricted the exception concerning the second medical use to substances or compositions. Decision G 2/08 (OJ 2010, 456) has since considered Swiss-type claims in the light of both G 5/83 and the revisions to the EPC.