T 1139/13 - Animal diet as second medical use

Key points

• In this case, claim 1 was directed to a use of a food composition n the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline.
• The Board accepts this as second medical use claim.
• " If claim 1 had been directed to a method of using a diet to increase blood antioxidant levels in a feline, its subject-matter would have been excluded from patentability under Article 53(c) EPC, since it covers therapeutic treatments, such as improvements in conditions like diabetes as well as cardiovascular and gastrointestinal diseases, []. [If] in such a situation the claim is re-drafted in the Swiss-type format, it is to be considered a medical-use claim", citing T 1020/03.

EPO T 1139/13 -  link

XI. The only independent claim of the new main request reads as follows:

"1. Use of a food composition comprising a sulfur-containing antioxidant which is a mixture of cysteine and methionine in a total amount of from 1.0 wt% to 2.2 wt%, wherein the methionine is at a concentration of from 0.8 wt.% to 1.5 wt.% and the cysteine is in an amount of from 0.2 wt% to 0.7 wt% in the manufacture of a companion-animal diet composition for increasing blood antioxidant levels in a feline."

Reasons for the Decision

3.1.3 Claim 1 is drafted in the Swiss-type claim format, i.e. use of an active ingredient for the manufacture of a medicament for a therapeutic treatment. The food composition of claim 1 with the specific methionine/cysteine concentrations corresponds to the active ingredient, the diet represents the medicament and the increase in the blood antioxidant level in a feline corresponds to a therapeutic treatment.

The appellant argued that claim 1 was not a Swiss-type claim, since it did not use the term "medicament". The board does not agree. The Swiss-type claim format does not require the use of the term "medicament"; equivalent expressions such as "diet" can be used instead (T 485/99, point VI in conjunction with points 3.1 and 3.2). Therefore, the fact that claim 1 makes reference to a diet does not disqualify it from being in the Swiss-type claim format.

The appellant furthermore argued that claim 1 was not a medical-use claim since an increase in blood antioxidant level was not a true therapeutic effect.

The board does not agree with this argument either. If claim 1 had been directed to a method of using a diet to increase blood antioxidant levels in a feline, its subject-matter would have been excluded from patentability under Article 53(c) EPC, since it covers therapeutic treatments, such as improvements in conditions like diabetes as well as cardiovascular and gastrointestinal diseases, as mentioned in paragraph [0010] of the patent. As set out in T 1020/03 (OJ EPO 2007, 204, point 36), if in such a situation the claim is re-drafted in the Swiss-type format, it is to be considered a medical-use claim ("medical indication" in point 36 of T 1020/03). As explained by the board in point 36 of T 1020/03, this follows the logic that

"... there is a seamless fit, either a method of using a composition is not a treatment by therapy and therefore falls outside the provision of Article 52(4) EPC [Article 53(c) EPC 2000] first sentence, and so is patentable subject to compliance with the other provisions of the EPC, or else a method is a treatment by therapy and therefore inside the provision of Article 52(4) EPC [Article 53(c) EPC 2000] first sentence, and so not itself patentable, but use of a composition for making a medicament for use in such treatment by therapy is patentable for unspecified therapy as a first medical indication or for a specified therapy as a further medical indication, again subject to compliance with the other provisions of the EPC, in particular novelty and inventive step" (insertion in square brackets made by the present board).

But even if claim 1 were not a true medical-use claim, the skilled reader would still recognise that the format of claim 1 is that of a Swiss-type claim.

The skilled reader would be aware that the active ingredient in such a claim must be present in the medicament so that it can achieve the desired therapeutic effect. For instance, the only technically sensible reading of a claim directed to the use of aspirin to manufacture a medicament to treat pain is that the active ingredient aspirin must be present in the medicament to deliver the desired therapeutic effect. In the same way, the skilled reader looking at claim 1 of the new main request would assume that the active ingredient, i.e. the food composition with the specific methionine/cysteine concentrations, must still be present in the diet so that when it is fed to a feline it increases its blood antioxidant levels.

Therefore, the board follows the respondent's interpretation of claim 1 that the methionine/cysteine concentrations cited for the food composition are also the concentrations present in the diet to be administered to the feline.