New uses

September 28, 2020

New uses of pharmaceutical or biotechnological compounds or compositions have been protectable through patents for a long time in Mexico, as long as all patentability requirements were met.

Acceptance of patentability of new uses are in line with the commitments acquired by Mexico with the World Trade Organization (WTO) by means of the TRIPS Agreement, which requires countries to make patents available for any inventions, whether products or processes, in all fields of technology, without discrimination.

Nevertheless, the current Mexican IP Law only provides that variations of use are not considered as inventions except when that use is not obvious for a person with an ordinary skill in the art. Clearer support for use patents under the law has been sought for many years.

The new Federal Law for Protection of the Industrial Property that will come into force on November 5, 2020, expressly provides that patentability of substances, compounds or compositions contained in the state of the art cannot be excluded from the patentability as along as the use thereof is new.

This express provision in the new Mexican IP Law fills some gaps present in the current Mexican Law, which will be positive for the Mexican IP system, as it provides certainty to the pharmaceutical sector. Furthermore, the recognition of the patentability of said type of inventions complies with the agreement reached between the United States – Mexico – Canada Agreement (USMCA), which also includes provisions to make patents available for inventions in all fields of technology.

Regulations of the new Mexican IP Law are still pending. OLIVARES will be attentive to the implementation process. It is expected that these Regulations will include the revision of claim drafting accepted to claim first, second and further medical uses, since based on the current practice, purpose limited product and Swiss type formats are accepted to claim new uses, even though they are not included in the current Mexican IP Law or Regulations.