The following IP guidance note Produced in partnership with Adrian Chew and Andrew Bowler of Bristows LLP provides comprehensive and up to date legal information covering:
Second (and subsequent) medical use patent claims are specific to the pharmaceutical/biotechnology industry and are used to define the scope of an invention by way of a specified medical use. For an introduction to these and other types of patent claims, see Practice Note: Major types of patent claims.
There are two different types of second medical use claim which are described in more detail below. The inclusion of a medical use as a feature in a claim has implications for the claim’s patentability and its scope of protection.
To understand the background of second medical use claims it must be appreciated that they came about under the previous 1973 version of the European Patent Convention (EPC 1973) which has since been succeeded by the EPC 2000.
The original second medical use claims granted by the European Patent Office (EPO) from the mid-1980s until 2010 followed the format of ‘the use of a product [X] in the manufacture of a medicament for a therapeutic use [Y]’, and are termed 'Swiss-type' claims. They were therefore process claims that came about to avoid two underlying problems with the patentability of a new use of a known active pharmaceutical ingredient:
that the active pharmaceutical ingredient (product) being claimed was not in of itself new as required under European patent law;
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