Colombia: Use claims in the Andean Community

The Colombian Patent Office denied to grant a patent on an application filed by Pfizer Inc directed to a product known as "Viagra" , whose chemical name is pyrazolepyrimidone. The reason for this decision was that the application was trying to protect a new use of a known product. About the same time, the Peruvian Patent Office granted a patent to a corresponding patent application for the same subject matter.

The decision taken by the Peruvian Patent Office was then subject to investigation by the General Secretary of the Andean Community, as a consequence of a complaint filed by a third party against the Peruvian Patent Office decision.

The result of the investigation made was that Perú, as a member of the Andean Community, failed in the interpretation of the Patent Law, Decision 344 of the Andean Pact, as a patent was granted to non-patentable subject matter.

The sentence issued by the General Secretary was appealed by Pfizer, but the final decision was maintained in that use claims are not patentable under decision 344.

The analysis made by the General Secretary of the Andean Community included the concept of "use" in patent right and a distinction between a process patent and the use of the patented object.

In making such analysis, a comparison between US, European and Andean Community patent law was taken into account. With respect to the US, patent legislation a conclusion was obtained in that "the patent system in the United States mainly lays on the concept of ' utility´ " . Such teaching easily accepts the patentability of new and second uses, which has been a practice for around 50 years in that country.

In Europe, granting patents to second medical uses has been a more recent practice and it was allowed by broadly interpreting the European patent law which refers only to the substance or composition and process but not to the use of the invention.

On the other hand, the Andean Community Patent Law, establishes as a general principle a rule that classifies inventions into two categories: products and processes in all areas of technology. The distinction between use and process was made clear when article 16 of Decision 344 (Andean Community Patent Law) was thought and approved as follows:

Those products or processes already patented, part of the state of the art, according to article 2 of the present Decision, shall not be object of a new patent, just because the simple fact of being attributed a new use distinct from the original use comprised within the first patent.

Accordingly, all member countries of the Andean Community, (Venezuela, Ecuador, Perú, Bolivia and Colombia), which are ruled by a common regime in patent matters, cannot grant patents to new uses of known products. This issue is being discussed now that a new patent law is a matter of study in the Andean Community.

John Bateman