Aspects of the examination of patents relating to medical inventions

Abstract

Keywords: selection invention; medical inventions; examination; patentability criteria
 The article contains an analysis of approaches to the examination of selectioninventions for medicines. Selection inventions are inventions created in theprocess of selecting an optimal compound from a group of known compounds or in theprocess of selecting parameters from an interval of known parameters related to thecompounds. Selection inventions must demonstrate an unexpected result that is unknownin the prior art. Selection inventions can potentially be a means of obtaining amonopoly on an already known compound or a medicinal product containing thatcompound, or a method of producing the compound, etc. Therefore, the examination of criteria of patentability for selection inventions is important for maintaining the balanceof interests between the patent holder and the society. The article contains informationabout the difference between the examination of inventions in the patent officeand the forensic examination. The analysis of approaches to examination includesthe law of Ukraine for invention, which provides for the means of combating evergreen(secondary) patents, as well as the opinion of experts of the Patent Office abouta patentability of selection inventions. The article contains the approaches to examinationaccording to the regulations of the European Patent Office and other nationaljurisdictions, as well as the opinion of forensic scientists practising in this field. Apractice example of examination of a selection invention is given. The summary includesrecommendations on approaches to the examination of selection inventions:the subject of the selection invention should not have been specifically disclosed earlier;the subject should exhibit previously unknown and unexpected advantages; thedescription of the selection invention should contain reasonable evidence of non-obviousnessof the selection; the selection invention should meet the condition of inventivestep according to the general requirements as for all the inventions. If unexpected advantagesof existing products were deemed patentable under the applicable law, thepatentability of a selection could be considered when an inventive step is present.