Can Swiss-style claims go off-piste in Australia? Is it possible under Australian law for Swiss-style claims to cover the use of compounds in methods other than methods of medical treatment? As this article sets out, this should be possible and it may provide additional scope for protection of a compound intended to be used in the method when compared to the more straightforward method claims.
Swiss-style claims are a very particular form of claim developed to circumvent the exclusion of methods of medical treatment from patentability in Europe. They are second medical use claims in that the compound used in the treatment is known for use in medicine but is not known for treating the particular disease state of the claim.
Swiss-style claims have been introduced into Australian practice and are accepted by the Patent Office even though Australia does not exclude methods of treatment from patentability.
The judicial development of Swiss-style claims in Australia is interesting in that they have been determined to provide protection of different scope to that of method of treatment claims. In a recent decision reported by my colleagues here, an offer for supply of a pharmaceutical formulation was found not to infringe a method of treatment claim but was found to infringe a corresponding Swiss-style claim.
The decision raises a question as to whether the Swiss-style format could legitimately be used as an adjunct to method claims that are not method of treatment claims. For example, a Swiss-style claim could be drafted to address the use of a particular ingredient in a paint formulation, a polymer formulation or the like. These claims would provide additional protection under Australian practice.
There is no judicial authority on point. However, given that Swiss-style claims in Australia are not an artifact used to overcome an exclusion to patentability but rather a judicially approved claim format, the author’s view is that it would be worth introducing such claims during prosecution for important cases.
Accordingly, it may be worth considering Swiss-style claims where your method claims are the sole source of protection for an important commercial product in Australia.
