Art. 54(4) EPC 1973 and Rule 23a EPC 1973 continue to apply to patents granted in respect of patent applications filed before 13 December 2007. Consequently, in such cases, the designated countries need to be taken into consideration when assessing the novelty of documents according to Art. 54(3) (see H‑III, 4.2).
Art. 54(5) applies only to patents for which the date of the decision to grant the patent under consideration was taken on or after 13 December 2007 (Special edition No. 1, OJ EPO 2007, 197). If the decision to grant was taken before that date (the date of entry into force of EPC 2000), only "Swiss-type" claims are allowed for any second or further medical use (provided these claims meet with all the other requirements of the Convention).
Where the subject-matter of a claim is rendered novel only by a new therapeutic use of a medicament, that claim may no longer take the form of Swiss-type claim for European or international patent applications having a filing date or earliest priority date of 29 January 2011 or later (see G 2/08, OJ EPO 2010, 514, and G‑VI, 7.1).
Date of entry into force of EPC 2000: 13.12.2007.
The decision to grant for patent EP1 mentions the date of 13.12.2007 in the top box and the date of 07.12.2007 in the bottom line.
EP1 has three claims.
Claim 1: Product X.
Claim 2: Product X for use in medicine.
Claim 3: Product X for use in the treatment of asthma.
Notice of opposition is duly filed in 2008 citing prior-art document D1 under Art. 54(2) EPC which reveals product X and its therapeutic use in the treatment of pain and more specifically headache.
The situation is as follows:
According to G 12/91 and J 7/96, published in OJ EPO 1999, 443, the date when the decision to grant the patent was taken is the date the decision to grant was handed over to the EPO postal service, that is 07.12.2007.
This means that, as regards medical use-related claims, EP1 is treated under the system applicable before EPC 2000’s entry into force on 13.12.2007. Thus, Art. 54(5) EPC does not apply to EP1.
Therefore, in the opposition proceedings for EP1, claims 1-3 are no longer acceptable. Claims 1 and 2 are not novel and claim 3 is not in the required "Swiss-type" format for a second medical use (G 5/83). The proprietor of patent EP1 would then need to abandon claims 1 and 2 and reformulate claim 3 as: "Use of product X for the manufacture of a medicament for the treatment of asthma".
It is to be noted that if the date of handing the decision to grant over to the EPO postal service had been 13.12.2007 or later, then Art. 54(5) EPC would have been applicable and in the current example claim 3 of EP1 could have been maintained as granted.
Example of conflicting prior art:
The mention of grant for a patent EP1 filed on 10.12.2007, designating FR, DE, GB, IT and ES and claiming no priority, is published in the Bulletin in May 2012 and nine months later notice of opposition is filed. One of the novelty objections is raised under Art. 54(3) EPC with regard to a European patent application EP2 published on 18.12.2007, having a valid priority date of 16.06.2006 and validly designating FR, DE and GB. Oral proceedings in this case are held during 2013.
The situation is as follows:
EP1 was granted in respect of a patent application filed before the date of EPC 2000’s entry into force (i.e. 10.12.2007). Consequently, as regards Art. 54(3) EPC, the provisions in force before that date apply. So in this case Art. 54(4) and Rule 23a EPC 1973 still apply (in 2013). Therefore, EP2 is relevant for novelty only for the designations FR, DE and GB but not for the designations IT and ES.
Note that if EP1 had in this case been filed on 13.12.2007, Art. 54(4) and Rule 23a EPC 1973 would no longer be applicable when assessing novelty under Art. 54(3) EPC. Consequently EP2 would be prior art against the novelty of EP1 as a whole, regardless of any common designations.