Swiss format kept for medical use claims

November 22, 2010

POR ROMMY MORALES

INTERNATIONAL BRIEFINGS, MANAGING INTELLECTUAL PROPERTY, SEPTEMBER 2010

Article 19, section VII of the Mexican Industrial Property Law establishes, inter alia, that methods of therapeutic treatment applicable to the human body and to animals shall not be considered as inventions; as a result, such methods are expressly excluded from patentability. However, under Mexican law and practice, there is no exclusion of the possibility for patenting a (new or known) substance or compound for any specific use in a method of therapeutic treatment, as long as such use is new and the claims directed to this kind of matter are written under the first medical use format (compound X for use as a medicament and/or in the treatment of condition Y), or under the subsequent medical use format, also named second medical use format or Swiss-type format (the use of a compound X for manufacturing a medicament for treatment of disease Y).

Concerning the above, before February 19 2010, the criteria used by the European Patent Office (EPO) relating to protection and scope of claims directed to medical uses had been wholly adopted by the Mexican Patent Office (MXPTO). However, for the moment, the MXPTO has decided not to adopt the decision G2/08 issued by the Enlarged Board of Appeal of the EPO which, inter alia, establishes that, when protection for a second medical use is claimed, purpose-related product claims shall be employed, and the claims shall be written under the format: compound X for use in the treatment of a condition Y, instead of the Swiss-type format previously accepted.
Accordingly, until MXPTO changes the present practice and decides to adopt the criteria provided by decision G 2/08, the Swiss-type format shall still be accepted for second (or subsequent) medical use claims.