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Date Published

In Nicaro Holdings v Martin Engineering 16 IPR 545 at page 561, Gummow J stated:

"As is illustrated by the discussion of the English authorities by Falconer J in Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613 at pages 629 to 633, selection patents may require special attention, ..."

Gummow J raised the question of whether a different level of disclosure was required to anticipate a selection patent, but did not elaborate on the issue. However, this has been considered by the English courts, as discussed below.

The question of "selection" arises when the invention claimed lies within a known field. Before an invention may be regarded as a selection, there must exist a single prior disclosure against which the claimed invention is compared. It is not necessary for the prior disclosure to encompass the entire claim under consideration. Only that portion of the claim which falls within the prior disclosure can have the selection test applied to it. Any portion of the claim which falls outside the prior disclosure is subject to the normal tests for lack of novelty and inventive step.

The matter of "selection" patents was considered in the case of I.G. Farbenindustrie A.G.'s Patents (1930) 47 RPC 289 and the following criteria for a valid "selection" patent were stated at pages 322 to 323:

a. the selection must be based on some substantial advantage gained or some substantial disadvantage avoided;

b. the whole of the selected members must possess the advantage in question; and

c. the selection must be in respect of a quality of a special character which may fairly be said to be peculiar to the selected group.

A selection can arise irrespective of the breadth of the earlier disclosure of a parent class, or the manner of describing that class. In E.I. Du Pont de Nemours & Co (Witsiepe's) Application [1982] FSR 303, it was stated:

"In the first place, in order to leave open a field for selection by a subsequent inventor, it does not matter whether the original field is described by formula or by enumeration. A skilled chemist could, in most cases, quite easily transform the one into the other and the rights of the subsequent inventor cannot depend upon the notation used. ...

Secondly, the size of the initial group or class is not in itself decisive as to a question of prior publication of an invention related to a selected member or members. A selection patent might be claimed for one or several out of a class of 10 million ... or for one out of two."

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