5.5.4.4 Swiss Claims

Also in this Chapter:

• 5.5.4.1 The claims are construed as a legal document
• 5.5.4.2 Presumption against redundancy
• 5.5.4.3 Omnibus claims
• 5.5.4.5 Product by process claims 
• 5.5.4.6 Parametric claims
• 5.5.4.7 ‘For use in’, ‘when used’, and similar wording in claims
• 5.5.4.8 ‘Comprises‘, ‘includes‘, ‘consists of‘, and ‘contains‘ in claims
• 5.5.4.9 Reference numerals in claims
• 5.5.4.10 Relative terms
• 5.5.4.11 ‘Substantially‘, ‘about‘, and ‘generally’
• 5.5.4.12 Appended claims

Key Legislation: ​​​​​​​

Patents Act:

• s7 Novelty, inventive step and innovative step  
• s7A Meaning of useful  
• s18 Patentable inventions
• s40 Specifications 
• s41 Specifications: micro-organisms  

Related Chapters: 

• ​​​​​​​​​​​​​​5.5.3 Rules of Construction​​​​​​​
• ​​​​​​​5.6.4 Citations: Prior art base and construction of prior art
• 5.6.5 Novelty, Whole of Contents, and Secret Use
• 5.6.6 Inventive Step
• 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (s40)
• 5.6.7.1 Claims are Clear and Succinct;
• 5.6.7.3 Support for the Claims
• 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)

On this page

• Characteristics
• Claim construction.

Characteristics

‘Swiss claims’ are common in patents directed to therapeutic treatments.

The Swiss claim format is quite specific.

The typical format is:

"The use of (substance X) for the manufacture of a medicament for the therapeutic and/or prophylactic treatment of (medical condition Y)."

An alternative format is:

"The use of (substance X) in the manufacture of a medicament for the therapeutic and/or prophylactic treatment of (medical condition Y)."

Some minor variations in format may be possible. However, the following are not considered Swiss claims and are to be construed according to the usual rules for claim construction:

• (Substance X) in the manufacture of a medicament for the therapeutic and/or prophylactic treatment of (medical condition Y);
• (Substance X) for use in the treatment of (medical condition Y);
• The use of (substance X) in the treatment of (disease Y);
• Commercial package containing as an active pharmaceutical agent (compound X) together with instructions for treating (condition Y); or
• A process for the manufacture of a medicament for use in the treatment of (medical condition Y) characterised by the use of substance X.​​​​​​​

Claim construction

Note: The below rule of construction for Swiss claims only applies to medical use claims, wherein the medical use relates to the treatment or prevention of disease in humans or animals.  It does not apply to claims wherein the intended use is non-medical, e.g. treatment of plants, weeds etc.  Claims directed to a non-medical intended use should therefore be construed according to the usual rules of construction.

​​​​​​​Claims in the Swiss format are construed as defining the manufacture of a medicament wherein the medicament is intended for a specified medical treatment. The novelty and inventiveness of Swiss claims derives from the new medical use, not from the manufacture of the medicament.

Therefore, a prior art disclosure of a method of making the medicament will not in itself anticipate a Swiss claim. To anticipate a Swiss claim, a citation must disclose both a method of preparing the medicament and the specific treatment claimed. This approach is consistent with that followed in Otsuka Pharmaceutical Co Ltd v Generic Health Pty Ltd (No 4) (2015) FCA 634).