2.11.2.3.3 "For Use", "When Used", etc

Note: The information in this part only applies to:

• standard patent applications with an examination request filed before 15 April 2013.  
• innovation patents with an examination request filed before 15 April 2013.
• innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see 2.11.2.3.3A “For Use, “When Used”, etc.

In this topic:

The phrases "for use" or "when used" (and similar phrases) inherently impart an element of conditionality, such that the true scope of the claim is likely to be different from a superficial reading of the words. In all cases, it should be remembered that words in a claim must always be construed in the context of that claim and the specification.

“For”, “For Use”, “Used To”, “Used For”

In general, in claims directed to a product or apparatus, the words "for", "for use in", “used to”, “used for” and the like place a limitation on what is claimed only to the extent that it must be suitable for the specified purpose. For example, if a claim refers to a "hook for a crane", this implies that the hook is of a particular structural character which makes it quite distinct from a fish hook. However, examiners should appreciate that the words "for", "for use in", “used to”, “used for” and the like in claims of the form "Apparatus for ..." are merely indicative of the environment in which it is intended to use the apparatus, and do not limit the apparatus to use solely in that environment (Thurston Catton's Application (1978) AOJP 3666). As a consequence, a claim of this form is to be construed as a per se claim to the apparatus, albeit having a functional capability in the specified environment. Similarly, a claim to a substance or composition for a particular use would normally be construed as relating to the substance or composition per se (Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning's Application (1964) AOJP 1483).

While the above sets out the usual interpretation, it may be possible that the context of the claim clearly mandates a different interpretation. This is particularly the case with Swiss claims, where the formulaic structure of the claim exists for a particular purpose (see 2.11.2.3.10 Swiss Claims and also point iii below). Therefore, an argument that a claim containing these terms is to be interpreted differently from the ‘typical’ interpretation needs to be supported by persuasive reasoning.

In general, method or process claims using words of purpose are construed as being restricted to that purpose as a result of process steps in the method imparting that restriction. For example, a claim defining “A method of producing X....”  or “A method for producing X….” is limited to a method that would result in the production of X. Note, however, that there may be exceptions (see CSL Limited v Pharmacia & Upjohn AB [2000] APO 58) and that construction of method or process claims may vary depending upon the facts of the case.

“When Used”, “Whenever Used”

The words "when used" or "whenever used" have the effect of limiting the scope of a claim to a particular application, environment or timing. Thus, a claim to something "when used" in a process is normally construed as a disguised process claim. This construction was accepted in the obiter of the High Court in Wellcome v Commissioner of Patents 1A IPR 261 at 266:

"there is no distinction between the claim to the process and the claim to the substance when the substance claim is limited to its use in the process".

Similarly, a claim of the form “Use of X for…”, or “Use of X to…” is normally construed as a process claim.

There may be circumstances where a "when used" or "use of" claim defines something per se (rather than a process) due to the specific facts of the case, although departure from the normal interpretation should only be adopted when this is clearly required by the wording of the claim. Examples are:

a. A claim to "A combination of compounds A and B whereby the said combination produces a synergistic effect when used in the treatment of tumours" defines a composition of A and B capable of producing a synergistic effect;

b. A claim to "Compound X when used to stabilise compound Y" is equivalent to a composition of X and Y.

A claim to an apparatus "for carrying out" a process was held to be equivalent to a claim to the apparatus per se (L'Aire Liquide Societe Anonyme pour L'Etude et L'Exploitation des Precedes George Claude (1932) 49 RPC 428). However, amendment of the claim to "An apparatus when used for carrying out the process" restricted the claim to the apparatus when used in a particular manner.

Note: Where a claim is directed to a product, apparatus or substance, a described use without the phrase “when used” or “whenever used” (particularly in the claim preamble) should be taken as a suitability limitation only, unless otherwise indicated.

Special Considerations

Certain types of use claims raise special issues:

i. Use of compound X for combating diseases.

If the description only discloses that compound X is useful for treating a specific disease (e.g. cardiac arrhythmia), then the claim is not fairly based on the description (see 2.11.7 Claims are Fairly Based).

ii. Use of compound X for the treatment of cardiac arrhythmia.Although the claim encompasses the medical treatment of human beings, no objection is to be taken on that basis alone (see 2.9.2.13 Treatment of Human Beings).

However, if the invention relates to the second pharmaceutical indication of compound X (that is, another use), novelty or inventive step issues will need to be considered in the light of the use(s) disclosed in the prior art ("new use of a known substance").

iii. Use of compound X for the preparation of medicament Y for treatment of disease/condition Z.

Such claims, and certain variations along similar lines, are colloquially known as "Swiss claims" (see 2.11.2.3.10 Swiss Claims).