2.4 New uses and patentability criteria
As learned in the first chapter of this module, new uses of known substances can be denied process patent protection by broadly construing the "methods for treatment" exception under Article 27.3 (a), TRIPS Agreement (see chapter 1.2).
If your country elects not to generally deny process patents on new uses of known substances and in any case with respect to product patents, you as a patent examiner will have to examine new uses in the light of the patent eligibility criteria of novelty, inventive step and industrial applicability. By strictly applying these patentability criteria, you might still be able to exclude process and product patents for certain new uses on a case-by-case basis (see the table below).
| New use | ||
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Product patent | Process patent |
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Novelty |
You could argue that the invention lacks novelty as the product as such has been publicly available before. Note: The European Patent Office grants even product patents for new uses.
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The process as such could be considered new. In case of first medical use the known product is used as a medicament for the first time. Regarding second medical use, where the known medicament is discovered to cure a different disease than it was traditionally used for, the particular medical use is new. |
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Inventive step |
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Whether the new use invention passes the inventive step test depends on the predictability of the new use. Under a strict non-obviousness standard, the new use could be considered predictable. |
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Industrial application |
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Whether the new use invention is industrially applicable depends on your argumentation. You could make the argument that what is industrially applicable is the product itself but not its use. |
