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.
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