The IPKat has just learned that the EPO Enlarged Board have announced their decision in G 2/08, which relates to the question of whether a new dosage regime can result in a European patent. This is a particularly interesting one for the IPKat, because it was his announcement of the referral being made back in May 2008 that apparently resulted in an unusual postscript being added to the Court of Appeal's judgment in Actavis v Merck (IPKat commentary here, decision in full here).
To recall, the questions being asked were the following:
1. Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of Articles 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness ?
2. If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime ?
3. Are any special considerations applicable when interpreting and applying Articles 53(c) and 54(5) EPC 2000 ?These questions have now been answered as follows:
Question 1: Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.
Question 2: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.
Question 3: 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.Interestingly, the Enlarged Board have now set a time limit of three months after publication of the decision in the EPO Official Journal "in order that future applicants comply with this new situation". The IPKat is not an expert in this particular field, but he thinks that this will probably also apply to plenty of current applicants too.
The decision is available from the EPO here.