Case: EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303
Outcome: distinguished
The most recent reference to the topic in Australia is that by the Full Court in Ranbaxy [2008] FCAFC 82 at [105] : "A patent application will overcome a prior publication, as a selection patent, if the following criteria are met: &#8226; there must be some substantial advantage to be secured by the use of the selected members; &#8226; the whole of the selected members must possess the advantage in question; &#8226; the selection must be in respect of a quality of a special character, which can fairly be said to be peculiar to the group; and &#8226; the advantage possessed by the selected members must be clearly disclosed in the specification. (see Re IG Farbenindustrie AG's Patents (1930) 47 RPC 289 at 322-3)." However, that was said in considering the ground of false suggestion rather than lack of novelty. It is a fair brief summary of the position as it was understood at the time of the 1952 Act based upon the authority to which reference was made Re IG Farbenindustrie AG's Patents (1930) 47 RPC 289. This remained the basis of the law in the United Kingdom, at least until the decision of the House of Lords in EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303. 79 It seems to me that it is too late in the day to find that the principles explained by Maugham J in IG Farbenindustrie AG's Patents (1930) 47 RPC 289 are not relevant to the question of anticipation under the 1952 Act (and the 1990 Act, for that matter). That is not to recognise a special class of patents the reference to a selection patent is a convenient shorthand to pick up the relevant principles concerning anticipation. I approach the United Kingdom cases from and including EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303 with caution. I must also endeavour to keep separate questions of anticipation, on the one hand, and obviousness, on the other. The distinction is not always easy to discern in the authorities on this topic, including the seminal judgment of Maugham J. 80 There is a question as to whether the selection patent principles apply to a compound specifically identified in the early specification as a member of the larger class (eg as an example or derivative) or whether it is restricted to the express identification (for the first time) of a particular member of the larger class with the special characteristic. The latter was conceded by the patentee in EI Du Pont De Nemours &amp; Co (Witsiepe's) Application [1982] FSR 303. In the Court of Appeal, Buckley LJ had favoured the view that the concession was necessary (395) but, in the House of Lords, Lord Simon preferred to leave the point open ([1982] FSR 303 at 315). I favour the view of Buckley LJ as more in accordance with the rationale as explained by Maugham J and with his description of the class as follows ( IG Farbenindustrie AG's Patents (1930) 47 RPC at 321): "The second class comprises patents (the so-called selection patents) based on a selection of related compounds such as the homologues and substitution derivatives of the original compounds which presumably have been described in general terms and claimed in the originating patent." 81 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.