Case: Beecham Group Ltd's (Amoxycillin) Application, Re [1980] RPC 261 
Outcome: cited
If that view is correct, then the patent in suit is not a selection patent in the ordinary sense as PCR 4099 and each of the enantiomers were expressly disclosed and claimed in the earlier patents and are expressly referred to in the patent in suit. In one sense, the dextro-rotatory enantiomer is selected from that sub-class. There is authority to suggest that selection can be from a small class (per Buckley LJ in Beecham Group Ltd's (Amoxycillin) Application, Re [1980] RPC 261 at 292; EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303 per Lord Wilberforce at 310; but, cf Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147 at 154, [1972] RPC 364). I will therefore assume, contrary to my own opinion, that the principle can apply to the present case on that basis if the requirements are met. 86 The phrase in In the matter of Esso Research and Engineering Co's Application (Shell) [1960] RPC 35 at 53 was "advantages peculiar to themselves" or, as Lord Wilberforce put it in EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303 at 309 "unrecognised advantages". Buckley LJ said in Beecham Group Ltd's (Amoxycillin) Application, Re [1980] RPC 261 at 292: "... the substance must be truly new and the advantage to be gained from its selection must be the inventor's own discovery as opposed to mere verification by him of previous predictions or of what was previously predictable; in other words, it must be unexpected." The specification in question here was, no doubt, drawn with this concept in mind. However, the advantages here are not different in kind from those described and predicted in the earlier patent specifications. Even if such an advantage could be satisfied by a quantum leap in relation to an earlier claimed advantage, the results here are by no means out of the range of results predictable from the tests done on the examples in the earlier specification. 105 The patentee's argument is not easily reconcilable with the existence of Pt VII of the 1952 Act dealing with patents of addition for "improvement in or modification of" the main invention, particularly with s 76, which was as follows: "Objection shall not be taken to an application for a patent of addition, so far as the invention is claimed in any claim of the complete specification, and a patent of addition, so far as the invention is so claimed, is not invalid, on the ground only that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve an inventive step, having regard to- (a) the publication of the main invention before the priority date of that claim but after the priority date of the claim of the specification of the main invention defining the invention the improvement in which, or the modification of which, is the subject of the first-mentioned claim, or, if there are two or more claims defining that invention, after the priority date of whichever of those claims has the earlier or earliest priority date; or (b) the use of the main invention during that period." A patent of addition expired with the original patent (s 75) (cf Ch 7 of the 1990 Act.) It will be observed that the section protected against invalidity on the ground of obviousness not novelty, and did so regardless of the state of common general knowledge in Australia. (For an interesting example of patents of addition in a similar context see Beecham Group Ltd's (Amoxycillin) Application, Re [1980] RPC 261.) 106 On the other hand, if the starting point or baseline is not known to those in the field in Australia, then the selected compound may be seen as a large advance or inventive step in one leap and may be a valuable contribution to the relevant field. It may, as in this case, provide a useful product for the public, thus justifying patent protection. 107 The applicants' contention cannot be rejected out of hand, particularly in the case of a selection patent where the prior publication is a patent specification published or issued in Australia. If that contention is wrong, then this objection to the validity of claim 1 fails. I will consider the position if the contention were accepted and on the basis that the starting point for analysis of the inventive step was the racemic compound of PCR 4099 as disclosed in the French patent. The starting point of the invention identified in the complete specification in suit is the racemic mixture of derivative 1 as described in the French patent application. There is no claim of invention in selecting that racemic mixture out of the others disclosed in the French patent. The invention claimed was ascertaining that only the dextro-rotatory enantiomer exhibited platelet aggregation inhibiting activity, the levo-rotatory enantiomer being inactive and being the less well tolerated of the two. It is, thus, expressed to be a selection patent only in that limited respect.