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Medical use claims

9.83 Pharmaceutical applications require specific considerations and care should be taken where claims include first medical use or Swiss-style formats:

  • First medical use claims are not related to method of medical treatment claims. As a consequence if the invention lies in the first medical use of a known compound and the claims of corresponding, related application or PCT application are method of medical treatment claims (for example an Australian or US application), then an objection will be taken that the claims are not related. The treatment steps are a limitation in a method of medical treatment claim. A first medical use claim does not include such treatment steps.
  • Similarly, Swiss-style claims are not related to method of medical treatment claims. Swiss-style claims define a method of preparing a pharmaceutical which is intended for a particular treatment – in effect a purpose-limited process of preparing the pharmaceutical. This is different subject matter to a method of medical treatment.
  • Swiss-style claims are not related to European-style second medical use claims. EPO allows second medical use claims in a format corresponding to a Singapore first medical use claim – that is substance X for use in treatment of Y and in effect a purpose-limited product claim. As noted above the Swiss-style claims are limited by the preparation of a medicament and in effect a purpose limited process claim. As these two claims have different claim limitations, they are considered not related.