In the past the term “the same subject matter” has caused some confusion with regard to second medical use claims in the Swiss-type format under the old EPC1973, i.e. purpose-limited process claims [“Use of X for the manufacture of a medicament for the treatment of disease Y”], vis-à-vis its counterparts in the format of purpose-limited product claims under the new EPC2000 [“X for use in the treatment of disease Y”]. Some EPO Examining Divisions are of the opinion that both claim formats should be considered to be equivalent, and as a consequence one of both independent claim sets, although in a different claim format, should be unallowable for reasons of double patenting.

Recently published decisions T 879/12 and T 1780/12 held that double patenting should not be an issue as

– the scope of protection afforded by the claims is what has to be taken into account and is meant by “the same subject-matter” (see, e.g., T 1391/07), and

– a claim to a process (“Use of X for the manufacture of a medicament for the treatment of disease Y”) confers less protection than that of a product claim (“X for use in the treatment of disease Y”).

In other words, the scope of protection of both second medical use claim formats is different from each other and therefore double patenting does not arise, i.e. both claim formats can be patented in parallel.

So far it was accepted EPO practice to allow both claim formats simultaneously as per independent claims in a single application, i.e. the new purpose limited product claim format along with the Swiss-type claim format. With regard to the latter, at least for those applications having a filing date or earliest priority prior date before the deadline given in G 2/08 (until 28.1.11). In a recent decision (T 1570/09) a Board of Appeal refused such a claim set. In the Boards opinion there is no longer an objective reason for justifying the simultaneous presence of both claim formats in a single application and G 2/08 does not give applicants an absolute right to draft such claim sets.

Nevertheless, filing both claim formats as per independent applications (e.g. by filing a divisional application once an objection as in T 1570/09 has been raised) still appears to be an option.