Rebuttal against the claim that use claims cause evergreening

In the pharmaceutical field, countries like India and Brazil often oppose the patentability of use claims (i.e., new medical uses of known compounds), arguing that such protection results in 'evergreening'—unjustified extensions of patent exclusivity. However, this view is both legally flawed and practically counterproductive. This article aims to refute that misconception and affirm that use claims are legitimate tools for encouraging medical innovation.

(i). Counterarguments

- Use claims do not extend the original patent term: A use claim is an independent invention. It does not prolong the protection of the original compound.

- Use claims require high inventiveness and clinical relevance: Discovering a new therapeutic use of a known substance often involves costly and risky clinical research.

- Rejecting use claims would undermine innovation: Especially in developing countries, researchers may not invent new compounds but could discover valuable new uses for existing ones, including traditional herbal remedies.

- Patent examination standards already prevent evergreening: Use claims must meet novelty, inventive step, and industrial applicability. This ensures only truly innovative claims are granted.

(ii). International comparison

Many developed jurisdictions—including Europe, Japan, South Korea, and Switzerland—recognize use claims in various forms. In contrast, India’s opposition (e.g., Section 3(d) of its Patent Act) is controversial and often seen as populist rather than innovation-driven.

Conclusion

Equating use claims with evergreening is a profound misunderstanding. Denying protection for new uses would stifle medical discovery and harm patients. Rather than eliminating use claims, patent systems should rigorously evaluate and grant protection only to truly innovative and beneficial applications./.