mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: In the matter of Esso Research and Engineering Co's Application (Shell) [1960] RPC 35
Outcome: referred to
The first case in the United Kingdom Court of Appeal to consider selection patents was In the matter of Esso Research and Engineering Co's Application (Shell) [1960] RPC 35 where the principle was explained as follows ([1960] RPC 35 at 53): "So it is that you may have first the scientist who discovers and discloses the whole range and who may obtain patent protection for the subject-matter of his discovery or the means of manufacturing them what Maugham, J. called the "originating patent". But within such a range there is room also for the second scientist whose researches may discover and disclose that certain of the items or a section of them have advantages peculiar to themselves, hitherto unknown; and, if so, then there would appear to be no ground on reason or principle why patent protection should not be, in proper cases, available to the second scientist." (See also Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147, [1972] RPC 364; May &amp; Baker Ltd (1948) 65 RPC 255.) 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.
Case: Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147, [1972] RPC 364 
Outcome: referred to
The first case in the United Kingdom Court of Appeal to consider selection patents was In the matter of Esso Research and Engineering Co's Application (Shell) [1960] RPC 35 where the principle was explained as follows ([1960] RPC 35 at 53): "So it is that you may have first the scientist who discovers and discloses the whole range and who may obtain patent protection for the subject-matter of his discovery or the means of manufacturing them what Maugham, J. called the "originating patent". But within such a range there is room also for the second scientist whose researches may discover and disclose that certain of the items or a section of them have advantages peculiar to themselves, hitherto unknown; and, if so, then there would appear to be no ground on reason or principle why patent protection should not be, in proper cases, available to the second scientist." (See also Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147, [1972] RPC 364; May &amp; Baker Ltd (1948) 65 RPC 255.) 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. 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.
Case: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228
Outcome: applied
The phrase in s 100(1)(g) of the 1952 Act, "was not novel in Australia", is similar in substance to the phrase in s 7(1) of the 1990 Act "not novel in the light of" various kinds of information. To say that the claim of a patent is not novel in that sense is to say that it adds nothing new to that with which it is compared. In the case of a paper anticipation, it assumes that the product described is made or the process outlined is followed. Each integer of the claimed invention must be disclosed in the prior publication. The reverse infringement test is a practical way of detecting whether that is so in most cases ( Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 ; (1977) 137 CLR 228 at 235). 44 The patent in suit claims a chemical compound with a specific property namely, the capacity to rotate plane-polarised light to the right. That property distinguishes it both from the racemate and from the levo-rotatory enantiomer. The dextro-rotatory enantiomer is not expressly identified as such in the French patent. Counsel for Sanofi-Aventis submits that it is not possible from the face of the earlier specifications to say which enantiomer is the levo-rotatory and which is the dextro-rotatory the most that can be said is that both are in the racemate. Furthermore, it is said that that difference is significant so far as pharmacological efficacy and toxicity were concerned as disclosed in the complete specification of the patent in suit. Thus, the patentee's contention is that this is something new and different novel in form and in substance. 45 On the other hand, the formula identified as derivative 1 or example 1 in the French patent and corresponding patents (PCR 4099) has the identical formula to the enantiomer in suit. I am satisfied that the skilled but not inventive reader of the French and corresponding patents would understand that the derivative in question (in common with all of the derivatives) was the racemate and that all of the technical explanations as to the means of obtaining that (and other) derivatives and as to the testing of them related only to the racemate and not to any individual enantiomer. There is no express suggestion that either enantiomer had in fact been separately obtained or tested for efficacy or toxicity. That said, it was commonly known, and was spelled out in the French patent, that the compound in question was a racemate with one chiral centre and two enantiomers one dextro and the other levo. There were express references to the enantiomers in both the body of the specification and in the claims of the French and corresponding patents, with the detail most clearly spelled out in the Canadian patent. The express references to the enantiomers in the French and corresponding patents (particularly the Canadian patent) plainly carry the claim that the enantiomers are within the compounds disclosed.
Case: National Research Development Corp v Commissioner of Patents (NRDC Case) [1959] HCA 67 ; (1959) 102 CLR 252 
Outcome: discussed
It is contended by the applicants that the claims in suit do not represent an invention because they are not a manner of new manufacture s 100(1)(d) of the 1952 Act combined with the definition of "invention" in s 6; s 18(1) of the 1990 Act together with the definition of "invention" in the dictionary in Sch 1. The most illuminating discussion of that which is encompassed by "a manner of manufacture" is that by the High Court in National Research Development Corp v Commissioner of Patents (NRDC Case) [1959] HCA 67 ; (1959) 102 CLR 252 where the extended meaning of the phrase in accordance with principles which were developed for the application of s 6 of the Statute of Monopolies was explained by reference to the authorities up to that point. In my opinion, it could not be suggested that the subject matter of the present claims is outside that extended notion. The claims are for compounds and processes in a field of useful pharmacological application. 119 That decision was delivered several months after the decision of another Full Court of the High Court in Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; 102 CLR 232. In that case it was held that the specification did not disclose a patentable invention the headnote succinctly summarises the gist of the decision as follows: "It is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before." In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655 at 664 the High Court quoted with approval the following passage from the NRDC Case [1959] HCA 67 ; 102 CLR 252 at 261 262 per Dixon CJ, Kitto and Windeyer JJ: "the Commissioner may properly reject a claim for a process which is not within the concept of a "manufacture". But the case cited [ie Microcell] shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded".
Case: Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 529, (1990) 16 IPR 545 , (1990) AIPC 90-670 
Outcome: cited
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. 108 The specification in suit does not explain in express terms the reason or motivation for separating and testing the enantiomers and comparing the results with those for the racemic mix. It is assumed that the enantiomers might be separated. The reason for that course is not disclosed. There is no statement, for example, of the problems concerning tolerance and toxicity which are now known to have affected the racemic mix and to have led to the search for a better alternative. The inventive step claimed, in relation to the product claim for the dextro-rotatory enantiomer, was the unexpected nature of the result. It is as if, in the course of an investigation, an unexpected result occurred. That can be sufficient to provide subject matter (as it used to be called) for an invention in appropriate circumstances. The references to the French patent in the complete specification of the patent in suit are sufficient to permit reference to the French specification but only to understand the context of the disclosure of the particular racemate. The discussion by Gummow J (agreed with by Jenkinson J) in Nicaro Holdings Pty Ltd 91 ALR 513 at 532 539 is apposite, although directed to novelty in that case.
Case: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655
Outcome: cited
That decision was delivered several months after the decision of another Full Court of the High Court in Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; 102 CLR 232. In that case it was held that the specification did not disclose a patentable invention the headnote succinctly summarises the gist of the decision as follows: "It is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before." In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655 at 664 the High Court quoted with approval the following passage from the NRDC Case [1959] HCA 67 ; 102 CLR 252 at 261 262 per Dixon CJ, Kitto and Windeyer JJ: "the Commissioner may properly reject a claim for a process which is not within the concept of a "manufacture". But the case cited [ie Microcell] shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded".
Case: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239
Outcome: cited
Section 233 of the 1990 Act has been applied on the basis that a 1952 Act patent can now only be revoked on a ground provided for by the 1990 Act but as if it corresponds with the similar ground available under the 1952 Act (eg NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1993] FCA 404 ; (1993) 44 FCR 239 per Lockhart J at 250 254 (agreed in by Northrop J at 241 and Burchett J at 268); ICI Chemicals &amp; Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349 ; (2000) 106 FCR 214 at [22] [23]; and Abbott Laboratories v Corbridge Group Pty Ltd [2002] FCAFC 314 , (2002) 57 IPR 432 at [81] ). This is a somewhat strange result as the grounds do not correspond, particularly in relation to lack of novelty and obviousness. Uninstructed by authority, I should have thought that the intention was to maintain the status quo in relation to revocation for 1952 Act patents with time to run under the 1990 Act in other words, the grounds for revocation would be those set out in s 100(1) of the 1952 Act. That would maintain the status quo and neither advantage nor disadvantage the 1952 Act patentee. However, that approach is not reflected in the authorities and has not been contended for by either party.
Case: Pfizer Inc v Commissioner of Patents [2005] FCA 137 ; (2005) 141 FCR 413
Outcome: referred to
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.
Case: Prestige Group (Aust) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197
Outcome: cited
Even if the statements were false, it must be asked whether the suggestion or representation was "a material inducing factor which led to the grant" ( ICI Chemicals [2000] FCA 1349 ; (2000) 106 FCR 214 at [88] citing Prestige Group (Aust) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 at 201 per Lockhart J and 218 per Gummow J, with whom Northrop J agreed).
Case: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79
Outcome: cited
"Utility" in this sense "depends upon whether, by following the teaching of the complete specification, the result claimed is produced" ( Advanced Building Systems [1998] HCA 19 ; 194 CLR 171 at [24] ). The result claimed may cover two aspects one is physically producing a result and the other is producing a result that is useful. Useful in this sense does not mean commercially successful. Put another way, Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 96 approved the following statement of general principle: "If an invention does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention."
Case: Sami S Svendsen Inc v Independent Products Canada Ltd [1968] HCA 65 ; (1968) 119 CLR 156 
Outcome: cited
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.
Case: Smith Kline &amp; French Laboratories' Application [1968] RPC 415 
Outcome: discussed
Asahi Kasei Kogyo KK's Application [1991] RPC 485 concerned the 1977 United Kingdom Act. Counsel for the Comptroller of Patents neatly, and, in my opinion correctly, summed up the law as it previously stood in the following way ([1991] RPC at 520): "Novelty is a fundamental of patent law. Prior to the Act of 1977 it was settled law in the U.K. that "if the prior inventor's publication contains a clear description of, or clear instruction to do or make, something that would infringe that patentee's claim if carried out after the grant of the patentee's patent, that patentee's claim will have been shown to lack the necessary novelty", see: General Tire v. Firestone [1972] R.P.C. 457 at p 485. Accordingly under the Act of 1949 a claim to a chemical compound has been held to be anticipated by a statement that it has been prepared (Gyogyszeripari [1958] R.P.C. 51) or with a method for preparation which does not work (SKF [1968] R.P.C. 415). The latter cases were consistent with General Tire being instances where the prior documentation contained a description of the invention." The House of Lords upheld the contrary view of Falconer J in Re Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613. The 1977 Act, in s 2(2), included the words "made available to the public". Counsel in Asahi [1991] RPC 485 suggested this may have made a difference to the test. Falconer J's reasoning did not appear to depend upon that distinction, although he did refer to a decision of the Technical Board of Appeal of the European Patent Office supporting his position. Falconer J expressly declined to follow decisions of the Patents Appeal Tribunal in Gyogyszeripara Kurato Interzet's Application [1958] RPC 51 and Smith Kline &amp; French Laboratories' Application [1968] RPC 415 and the established practice of the Comptroller. Counsel for the petitioner for revocation in that case submitted that this was a departure from the long standing law in the United Kingdom as to anticipation and I agree with that submission.
Case: University of Georgia Research Foundation Inc v Biochem Pharma Inc (2000) 51 IPR 222 , (2001) AIPC 91-676 
Outcome: referred to
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.