2.6.6 From use claim to Swiss-type claim

In T 1635/09 (OJ 2011, 542) claim 1 in the 23rd auxiliary request differed from claim 1 in the granted text in that the originally granted use claim was converted to the so-called Swiss form of claim, i.e. a claim for the use of a substance or mixture of substances for manufacturing a medicament for a specific therapeutic use. Under the established jurisprudence of the boards of appeal, when establishing whether the scope of protection was extended by this amendment all the granted claims must be taken into consideration. It was therefore necessary to determine whether the reformulation of a claim for the "use of an oral dosing form comprising ... for contraception ..." into a claim for the "use of a composition comprising ... for manufacturing an oral ... dosing form for contraception ..." complied with the requirements of Art. 123(3) EPC. A crucially important question here was whether the Swiss-type claim was to be regarded as for (a) the use of a substance or mixture of substances for a specific purpose or (b) the manufacture of a medicament. Citing G 5/83 (OJ 1985, 64) and G 2/88 (OJ 1990, 93), the board in T 1635/09 ruled that the conversion of a claim for the use of a substance or mixture of substances for a specific purpose into a Swiss-type claim or a product claim limited to a specific use in accordance with Art. 54(5) EPC results in an extension of the scope of protection.

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