Patentability of Markush Formulas and Selection Inventions

Abstract

Introduction: Typical pharmaceutical invention claims fall into two categories: Markush claims and selection inventions. Markush claims define a group of chemical compounds by a set of structural features: specific atoms, functional groups or substituents that are used in pharmaceutical patents to cover a large number of compounds that share similar structures and properties. Claims that define a selection of compounds from a more general group based on a particular property or activity are called selection inventions.

Objective: To analyze the particularities of the patentability of Markush claims and selection inventions according to the requirements regulated by patent offices.

Method: Qualitative research based on the systematic review of guidelines or guides for the examination of authorities, such as the World Intellectual Property Organization, the U.S. Patent and Trademark Office, the European Patent Office, the Indian Patent Office, the National Institutes of Industrial Property of Argentina and Brazil, among others.

Conclusion: According to the research carried out, the criteria for evaluating the patentability of claims related to pharmaceutical inventions are unity of invention, novelty, inventive step and industrial applicability, sufficiency of the description, clarity, precision and substantiation in the description. Due to the complexity of this type of claims, criteria with high standards are adopted in the analysis of these requirements.