7.2.2 Restriction to substances and compositions

In T 1314/05, the board stated that decision G 5/83 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.

The board in T 1099/09 found that it followed clearly and directly from the EPC that Art. 54(4) and (5) EPC applied only to products which were substances or compositions and that no other products were patentable under them. The therapeutic effect of a medicinal product usually resulted from at least one substance or composition used in it and generally known as its active ingredient.

For the "Formulation of claims under the EPC 1973", see CLB, 6th edn. 2010, I.C.5.2.2.