Managing Intellectual Property, Dec. 2012-Jan. 2013, 62

 

SELECTIVE SPECIES OF AN EARLIER DISCLOSED "GENUS" IS PATENTABLE

 

 

The general test for anticipation in the Pakistan Patents Ordinance 2000 is that “an invention must not form part of the ‘state of the art’; that is it must not be ‘disclosed’ to the public anywhere in the world by publication in tangible form, by oral disclosure, use or in any other way. Whether or not such a disclosure is ‘enabling’ or make the underlying technology available to the public is not decisive. Given this, a prior generic disclosure of a new chemical entity (NCE) in the so-called Markush grouping claim format, followed by a specific listing or enumeration of ‘species’ is anticipatory whether or not the ‘species’ is actually made and tested or could not be made or tested by the person skilled in the art. On the other hand, because of the statutory exclusion of new or subsequent uses of a known product or process from the scope of patentable subject matter such a disclosure ‘as such’ does not give rise to a right to re-claim the invention in a later patent even if its subsequent use in the same or different field is not anticipatory.

Despite this, in the interest of scientific advancements and promotion of technological innovations, the 2000 Ordinance has sanctioned ‘selection’ patent provided: i) the ‘selected’ species exhibits some material or novel improvement or an un-expected or non-obvious advantage or effect or increase in an effect over the previously disclosed class or group (the ‘genus’); ii) the claimed improvement, advantage or effect is peculiar or exclusive to the ‘selection’; iii) the selected ‘species’ though falling within the scope of the issued ‘genus’ claim, but it is not specifically named therein; and iv) the ‘selected’ species is not worked to know exactly the valuable property it actually possesses.

While none of the listed requirements may be abandoned against “selection” patent, yet against a picture claim directed to the selected species, or a tight sub-genus claim encompassing it, mere structural difference has no value. To avoid double patenting issues, the selected species is critical to possess some substantial advantage or valuable property not suggested by other members of the class.

Another point worth consideration in relation to “selection” patent is the selection must be from a substantially long list of variants or analogues. Generally, when a genus encompasses a very limited number of well-identified and closely related species, an explicit disclosure of the genus is considered an explicit disclosure of all included species.