Whether there is a therapeutic method 

In T 454/08 the board confirmed that if a claim formulated as a Swiss-type claim was not directed to the use of any therapeutic method or was de facto directed to a non-therapeutic use, the feature defining the use was purely illustrative and could not be used to establish novelty over the prior art. In effect, this specific novelty approach applied only to claims directed to the use of a substance or composition intended for use in a method referred to in Art. 52(4) EPC 1973 (now Art. 53(c) EPC). Claim 1 of the main request was based on the model proposed by G 5/83, namely the application of a substance to produce a composition for a particular use. However, nothing in the wording of claim 1 implied use in any of the therapeutic methods within the meaning of Art. 53(c) EPC. The specific novelty approach created by G 5/83 thus did not apply to claim 1 of the main request, the subject-matter of which amounted to a process claim. The step of administering the tablet had to be seen as an illustrative feature of the tablet and not as a limiting feature for a specific mode of administration.

In T 1278/12 the board had to decide whether the main claim constituted a second medical use claim (Swiss-type claim). The appellant argued that the reference to "an infant delivered via caesarean section" implicitly indicated a therapeutic effect. The board stated that an enteral administration to an infant delivered via caesarean only specified the mode of delivery to the patient, but did not relate to any therapeutic effect obtained thereby. The appellant argued that, according to T 1020/03, the therapeutic effect did not need to be specified in a claim for it to qualify as a further medical use claim. The board did not share the appellant's view and observed that the board in T 1020/03 had explicitly stated that the further medical indication had to be specified in the claim with some degree of specificity. Since claim 1 of the main request did not specify any therapeutic effect at all, it represented a non-medical use claim. Therefore the wording "for enteral administration to an infant delivered via caesarean section" limited claim 1 only in so far as the composition had to be suitable for the enteral administration to caesarean section infants. Since this suitability was given in some documents, these were novelty-destroying for the subject-matter of claim 1.

Quick Navigation