Patentability of Second Medical Use Inventions

December 5, 2022

In Japan, second medical use inventions are recognized as patent-eligible either as “substance claims” (claims directed to the product itself) or through “Swiss-type claims” (*1, *2).
This approach contrasts with practices in other jurisdictions, where second medical uses are protected as methods of treatment in the United States and as product inventions under the European Patent Convention (EPC) (*3).

Additionally, regarding exceptions to lack of novelty due to prior disclosures such as academic publications, both Japan and the United States allow a one-year grace period.
Even when sufficient experimental data are not fully available at the time of filing, we recommend positively considering patent applications if basic supporting data are available.

(References)
*1 Japan Patent Office website, “Examination Guidelines for Patents and Utility Models,” Part III, Chapter 2, Section 4:
https://www.jpo.go.jp/system/laws/rule/guideline/patent/tukujitu_kijun/document/index/03_0204bm.pdf
*2 Regarding Swiss-Type Claims:
https://www.moriwakipat.com/jp/blog/202112034858
*3 “Current Status of Inventions Relating to Medical Use,” Patent, Vol. 70, No. 9, pp. 86–98