The Protection of Second Therapeutical Use Inventions in the Practice of the European Patent Office

Rivista Orizzonti del Diritto Commerciale 2021 (Online Law Review edited by the Italian Association of Professors in Commercial Law)

36 Pages Posted: 29 Mar 2022

See all articles by Emanuela Arezzo

Emanuela Arezzo

University of Teramo, School of Law; affiliation not provided to SSRN

Date Written: March 10, 2021

Abstract

The paper addresses the issue of patenting inventions for new therapeutic uses in the light of the legal framework provided by the European Patent Convention and the case law of the EPO Technical Boards of Appeal. The patenting of new uses of a known compound is, especially in the pharmaceutical field, an essential lever to promote innovation. In recent years, the EPO has adopted an increasingly "accommodating" attitude towards this type of findings, clarifying that the new therapeutic application is not to be confined to the treat-ment of a new ailment, different from the one cured by the previous use of the compound, but may well target the very same technical problem (i.e. the cure of the same disease). Thus, protection (in the form of new therapeutic use inventions) has been granted to find-ings aimed at modifying the form of administration of the drug or its dosage, at changing the functioning of the drug at a physiological or cellular level, or even validating the use of the therapeutic treatment for a new class of patients with different characteristics. Given this new expansionist drift of protection, however, many knots remain to be unravelled. In particular, a clarification would be needed with regard to the perimeter of exclusivity at-tributed to inventions of new therapeutic use, which should be considered as product in-ventions limited to the specific field of use, but whose structure is generally identical to that of other inventions that insist on the same molecular composition.

Keywords: patent, first therapeutical use, second therapeutical use, purpose-bound product protection

JEL Classification: K11, K20

Suggested Citation

Arezzo, Emanuela and Arezzo, Emanuela, The Protection of Second Therapeutical Use Inventions in the Practice of the European Patent Office (March 10, 2021). Rivista Orizzonti del Diritto Commerciale 2021 (Online Law Review edited by the Italian Association of Professors in Commercial Law), Available at SSRN: https://ssrn.com/abstract=4031581

Emanuela Arezzo (Contact Author)

affiliation not provided to SSRN

University of Teramo, School of Law ( email )

Via Balzarini – Campus di Coste Sant'Agostino
Teramo, Teramo 64100
Italy
+39.0861.266442 (Phone)
+39.0861.266456 (Fax)

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