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It is widely known that the methods for the treatment of the
human or animal body by means of therapy are excluded from
patentability in most legislations around the world, and the
Mexican law is not the exception.
Under Article 19 section VII of the Industrial Property Law
(IPL), such methods are excluded from patentability since they are
not considered as inventions. However, it is feasible to obtain
patent protection in Mexico if method claims are amended into the
Swiss-style format:
"The use of a substance X for the manufacture of a
medicament for the treatment of a disease Y".
Europe has also opened the possibility of patenting known
compounds that were previously unknown for use in treatment, thus
giving rise to the first medical use claim, whose wording is as
follows:
"A compound X for use in medicine"
"A compound X for use in therapy" or
"A compound X for use in the treatment of a disease
Y".
In Mexico, however, this kind of claims is allowable only if the
compound is the object intended for patent protection provided that
such compound is new. As well it is also possible to protect new
uses of compounds or compositions if the claims are drafted in
Swiss-style format.
Significant changes were made to the European Patent Convention
which entered into force on December 13, 2007. EPC amended Article
54, such that a new form of second medical use claim was
introduced. This article expressly permits purpose-related product
claims for a new medical use of a known substance. Thus, the new
format allowed under EPC is as follows:
"Product X for use in (new therapeutic use)"
This type of wording may be used for a second and for subsequent
medical uses.
Due to these changes made in Europe, plenty applications are
filed in Mexico containing both types of claims, that is, claims
drafted in the traditional Swiss-style format and claims drafted
following the new format of second medical use.
At this point, it is important to indicate that although the
criteria of the Mexican Institute of Industrial Property (MIIP) are
similar to those of the European Patent Office (EPO), upon
monitoring patent applications filed in Mexico related to this
subject, it appears that Examiners do not accept the new format of
second medical use but .only the first medical use format, when it
comes to a novel compound.
Therefore, the position of MIIP - at least until now - is not to
accept the new format to claim a second or a subsequent medical
use. This means that the Swiss-style format remains as the only
format accepted in Mexico to claim such medical use.
It appears that Mexican examiners do not accept the new European
format because
The Industrial Property Law (IPL) does not contemplate any
provision equivalent to the one defined by Article 54(5) EPC.
The novelty requirements of the Law provide that a claim
directed to a known compound for a new use (A compound X for use in
the treatment of a disease Y) is considered to lack of novelty over
the disclosure of compound X.
Therefore, modifications to the Industrial Property Law (IPL)
are needed in order to bring it into line with those approved by
the European Patent Convention (EPC) in order that purpose-related
product claims for a new medical use of a known substance are
allowed.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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