Patent Protection for Second Medical Uses

Patent Protection for Second Medical Uses explains the key jurisdictional differences and challenges in protecting and enforcing second medical use (SMU) claims. When a party proposes an SMU for a known substance or compound, special issues of patentability arise as they form an important component of the potential second-line patent protection. Jurisdictions around the world vary significantly in their treatment of such claims. This compendium of contributions from nineteen jurisdictions worldwide is the result of the need for a broader and more detailed exposition in SMU in order to allow comparison between jurisdictions.

The authors have been carefully selected based on their 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; and
- infringement and investigations of SMU claims.

This book provides a detailed country-by-country analysis by focusing on specific issues and national peculiarities that deviate from the European Patent Office (EPO) practice. The analysis starts with the availability of the protection for SMU claims and the legal basis these claims are based upon, and then continues with the scope of protection and infringement of SMU claims. A general chapter about the practice of the EPO addresses in particular the latest changes in the format of SMU claims from the ‘Swiss-type claims’ to the ‘EPC 2000 claims’.

This book serves as a guide for filing a patent application by assessing the risks of conflict with existing patents or patent applications thereby enabling practitioners to be prepared for defending against infringement and enforcement procedures concerning SMU claims. As a comparative law study on an important and controversial field, this book is of tremendous practical interest for those involved in the industry. Applicants for pharmaceutical patents, third parties, and interested legal practitioners will benefit greatly from its thorough comparative analysis and guidance.

List of Contributors
Foreword - Felipe Claro
Introduction - Dr. Jochen Bühling

European Patent Office- Dr. Jürgen Meier
Germany - Dr. Jochen Bühling
Switzerland - Dr. Thierry Calame
France - Isabelle Romet, Dora Talvard
The Netherlands - Gertjan Kuipers
Italy - Lamberto Liuzzo, Bianca M. Gutierrez
Sweden - Jonas Westerberg
Denmark - Nicolai Lindgreen, Nicolaj Bording
Poland - Justyna Rasiewicz, Marta Sznajder
United Kingdom - Tim Powell, Dr. Penny Gilbert
Israel - Tal Band, Yair Ziv
United States of America - Dan Altman
Canada - Steven Garland, Dan Davies, Dr. Lei Liu
Australia - Sarah Matheson, Matthew Swinn
Japan - Dr. Shoichi Okuyama
Republic of Korea - Seong-Ki Kim, Yoon Suk Shin
China - Amy Feng, An Chen, Simon Tianle Luo
India - Hari Subramaniam
Brazil - Maria Carmen de Souza Brito
Mexico - Javier Uhthoff-Orive

Resolution Question Q238