7.2.4 Transitional provisions

In G 2/08 date: 2010-02-19 (OJ 2010, 456), the Enlarged Board considered the consequences of the revised EPC for claims in the Swiss-type format. It decided that, 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 (OJ 1985, 64). As Art. 54(5) EPC now permits purpose-related product protection for any further specific use of a known medicament in a method of therapy, the loophole existing in the provisions of the EPC 1973 is now closed – when the reason for the law ceases, the law itself ceases. In view of the fact that patents had been granted for claims of this (Swiss) type and many applications seeking such patent protection were still pending, the Enlarged Board considered that a transitional arrangement was necessary to ensure legal certainty and to protect the legitimate expectations of applicants. It therefore set a time limit of three months from publication of its decision in the Official Journal of the EPO for future applications to comply with the new situation. In this respect the relevant date for future applications was ordered to be their date of filing or, if priority had been claimed, their priority date.

G 2/08 date: 2010-02-19 is discussed in further detail in this chapter I.C.7.2.6 e) "New dosage regimen".

According to Art. 1, No. 3 of the decision of the Administrative Council of 28 June 2001 under Art. 7 of the Act revising the EPC of 29 November 2000, revised Art. 54(5) EPC is applicable to European patent applications pending at the time of the EPC 2000's entry into force, insofar as a decision on the grant of the patent has not yet been taken (see decision T 1127/05, T 406/06, T 1599/06; see also OJ SE 4/2007).

Article 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 considered it already necessary to take the new situation under the EPC 2000 into account when examining the claims at issue. Claim 1 was interpreted as a product claim for a second medical use in accordance with Art. 54(5) EPC (see also T 385/07, a case involving similar circumstances).