Patent Protection for Second Medical Uses

When a party proposes a ‘second medical use’ for a known substance or compound, special issues of patentability and patent protection arise. Jurisdictions around the world vary significantly in their treatment of such claims. This detailed country-by-country analysis – here in an updated and expanded second edition – provides clarity, insight and guidance on the legal issues and practical implications of second medical use claims in twenty-four jurisdictions (the EPO and twenty-three individual countries).

The work is published under the auspices of the prestigious International Association for the Protection of Intellectual Property (AIPPI), and the authors of the country chapters have been carefully selected based on a broad basis of experience and in-depth knowledge about medical patents in their respective jurisdictions. Each chapter considers such issues and topics as the following:

• availability of protection;
• validity of claims;
• scope of protection;
• enforcement;
• infringement and investigations; and
• procedural aspects and tactical recommendations.

A general chapter about the practice of the European Patent Office (EPO) addresses in particular the latest changes in the format of second medical use claims from ‘Swiss-type claims’ to EPC 2000 claims. Specific issues and peculiarities which deviate from the EPO practice are explained in the various national European chapters, while chapters on jurisdictions outside Europe cover both prosecution and enforcement of patents with second medical use claims. The text of AIPPI’s Resolution Q238 (Congress Toronto 2014) which triggered this analysis initially is included at the end of the book.

As a comparative law study and a collection of contributions from around the world on an important and controversial field, this book will prove to be of tremendous practical interest for patent lawyers and patent attorneys and for the industries involved. Applicants for pharmaceutical patents, third parties, and interested legal practitioners will benefit greatly from its thorough analysis and guidance when filing a patent application and assessing risks of conflict with existing patents or patent applications, and its detailed explanation of the key issues when enforcing such claims and defending against an action.