Second medical uses

This regulation is applicable to the prosecution of new and pending patent applications and it provides that no patent protection will be awarded to second medical uses as a main object in the following cases:

(i)    claims directed to the use of a known compound for the treatment of a certain disease, because they will be considered as included in the prohibition to patent methods of therapeutical treatment contained in the Argentine Patent Law;

(ii)    claims worded as Swiss-type claims, since the Patent Office will assume that the invention does not comply with the novelty requirement;

(iii)    claims directed to the process for the manufacture of a medicament when the novelty of the process is based on a new use of a known compound, because the Patent Office will consider that the invention does not comply with the novelty requirement.

The Argentine Patent Law only provides that an invention must meet the novelty, inventive step and industrial application (utility) requirements. In addition, this Law expressly forbids patentability of methods of diagnosis or surgical or therapeutic treatment, but it does not contain any provision referring to second use claims.

It seems therefore that the Patent Office has ruled beyond the boundaries established by the Argentine Patent Law. Rejections of patent applications on the basis of this new regulation could be appealed to the Federal Courts on these grounds.