In "Eisai/Second Medical Indication" the EPO decided that as well
as protecting first uses, Article 54(4) also applied to second and
subsequent medical uses on the condition that claims were drafted
as ‘Swiss claims’, i.e. the patent had to claim the ‘use of a
substance for the manufacture of a medicine for the specified new
therapeutic use.’
A Swiss claim is directed at the manufacture of the known
substance, ensuring that the invention is not excluded on the basis
that it is a method of medical treatment under section 4(2)/Article
52(4).
The novelty of a Swiss claim arises from the new therapeutic
application (the drug and first medical use always being known),
with the result that the focus of the patent shifts so that novelty of the
invention is not in the way the substance is used, nor in relation to
the substance itself.
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