Case: Re IG Farbenindustrie AG's Patents (1930) 47 RPC 289
Outcome: applied
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. 78 Crennan J made a passing reference to patents of addition (to which I shall return) and selection patents in Imperial Chemicals Industries Pty Ltd v Commissioner of Patents [2004] FCA 1658 ; (2004) 213 ALR 399 , (2004) 63 IPR 476 , (2005) AIPC 92-055 at [66] . Her Honour also referred to a decision of Delegate Barker in University of Georgia Research Foundation Inc v Biochem Pharma Inc (2000) 51 IPR 222 , (2001) AIPC 91-676. It is quite clear from that decision that the Commissioner of Patents has applied the IG Farbenindustrie AG's Patents (1930) 47 RPC 289 principles for many years (see also Pfizer Inc v Commissioner of Patents [2005] FCA 137 ; (2005) 141 FCR 413 at [10] and [11]). Gummow J made a delphic reference to the topic in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 529, (1990) 16 IPR 545 , (1990) AIPC 90-670 where, after reference to the decision of Falconer J in Re Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613 at 629 633, he said: "[s]election patents may require special attention, but that is a matter for another day." As I said earlier, the decision of Falconer J appeared to be and, in my opinion, was, a departure from the manner in which the law of anticipation had been understood in the United Kingdom and in Australia up to that time. 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." 85 The third proposition was explained by Maugham J in IG Farbenindustrie AG's Patents (1930) 47 RPC 289 as follows (at 323): "If there are five thousand possible members of the group, and a hundred have been selected as possessing some new and definite advantage, it is not intended to assert that such a selection patent would be bad if it were shown as the result of further research that there existed another hundred members possessing the same advantage. If, on the other hand, it were to be established that there were a thousand unselected members which possessed the same advantage, I doubt very much whether the patent could be sustained. The quality must be of a special character. It must not be one which those skilled in the art will expect to find in a large number of the members. It would be rash to attempt a closer definition, for the question is ultimately one of appreciation. Returning to the same old fashioned metaphor I would say that the citadel must be defended, and that there is no reward if the gates have been opened at the first blast of the trumpet. ... I will summarise the conclusion at which I have arrived by saying that in a selection patent the inventive step lies in the selection for a useful and special property or characteristic adequately defined; and this is the proposition which has to be kept in mind in considering the application to amend and the Petition for revocation." 101 It is difficult to see how this patent could have been valid without disclosing the starting point or the master patent in the specification. To do so would have amounted to obtaining the patent on a false suggestion or representation within the meaning of s 100(1)(k) of the 1952 Act or be in breach of s 40(1)(a) of that Act by not describing the invention (see Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65 ; (1968) 119 CLR 156 at 159 and 164 165). The same applies under the 1990 Act. Hence the necessity to spell out that step and the advantage in the complete specification ( Re IG Farbenindustrie AG's Patents (1930) 47 RPC 289 at 323; Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147 at 154, [1972] RPC 364). The specification of the patent in suit is drafted consistently with that obligation. The cases on selection patents discuss both novelty and obviousness by reference to the nature of the selection from the earlier patent specification to the later claim.