tag:blogger.com,1999:blog-5574479.post1947210270559493252..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: MOPPing up selection patents: are you Reddy ...?Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger16125tag:blogger.com,1999:blog-5574479.post-2544005439484208682011-08-23T20:46:04.996+01:002011-08-23T20:46:04.996+01:00The EPO approach seems fair - you can rely (entire...The EPO approach seems fair - you can rely (entirely, if necessary) on post-filing data showing a new or surprising technical effect, as long as the effect you are thereby showing is closely enough related to or implied by the original inventive concept you disclosed i.e. not plucked out of thin air ex post facto (so-called 'bonus effects'). It shouldn't need to all be in the application as filed - as long as the existence of such an effect is plausible to the skilled person, that should be enough, as it is for 'normal'inventions.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-25816576952122091902011-08-23T18:39:44.319+01:002011-08-23T18:39:44.319+01:00@cosmictrout - anon@10.46 doesn't say post-fil...@cosmictrout - anon@10.46 doesn't say post-filing data shouldn't be allowed. In fact says the opposite, that it should be allowed to support plausible assertions in the spec (as you specify in your example) so you'd be fine. This is also what Max Drei is saying I think, that it must be plausible.<br /><br />UK IPO seems to be taking a different approach, that it must be plausible and actually demonstrated. Didn't Conor v Angiotech say that there was no requirement to prove your invention worked??Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33007379281181712992011-08-23T17:55:47.825+01:002011-08-23T17:55:47.825+01:00@Anon of Aug 22, 10:36PM:
"But the test of ob...@Anon of Aug 22, 10:36PM:<br />"But the test of obviousness is supposed to be what the skilled person would find obvious given the prior art; and there seems no logical justification for saying that he would find B's range obvious but not A's."<br /><br />B's range is obvious because ANY arbitary range is obvious. If the skilled person is given the task of selecting an arbitrary range, there is no skill - let alone inventive ingenuity - involved in randomly choosing a begin point and an end point.<br /><br />However, once the selected range has a _technical_ effect, the technical problem becomes not to select an arbitrary range, but to modify the closest prior art so as to provide that technical effect.<br /><br />No layman would consider that there is an invention worth of a monopoly in coming up with two arbitrary numbers that nobody before has disclosed. Only a mechanical application of the rule "no suggestion in the prior art, therefore inventive" can lead to another conclusion. However, this is rightly not a rule of European patent law.<br /><br />Anyway, <a href="http://k-slaw.blogspot.com/2011/08/oldies-but-goldies-arbitrary-selection.html" rel="nofollow">T 939/92</a> explains it very well.Myshkinnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39661718254867874642011-08-23T17:37:05.550+01:002011-08-23T17:37:05.550+01:00Julie - my post at 10.46 was made before your post...Julie - my post at 10.46 was made before your post of 10.19 was visible and I had assummed that the prior art had disclosed the biological activity and that you were therefore relying on the improved activity for inventiveness over the prior art. I see now that is not the case.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-62086638411141931172011-08-23T15:33:53.134+01:002011-08-23T15:33:53.134+01:00Anon @10.46:
"If the specification makes no ...Anon @10.46:<br /><br /><i>"If the specification makes no mention of the particular range having improved activity then why should the applicant be able to later discover that it does and then use that discovery to get a patent for an invention that they hadn't made on filing?"</i><br /><br />But the 'improvement' is part of the notional 'selection' - over prior art of which we might not have been aware on filing. <br /><br />It is important to remember that a 'selection invention' does not generally arise from any kind of real-life selection process (where you look at the prior art and then pick the best bit from within that). It is a device to justify novelty/non-obviousness for an invention which happens to form part of an earlier generic disclosure (as implied by Anon @2.04), but which has something special over and above that earlier disclosure that makes it inventive in its own right.<br /><br />We are not claiming an invention we hadn't made on filing, we are claiming the same invention, but in a narrower way in order to overcome said prior art. The applicant should be entitled to narrow their claim (provided they have basis for the narrowing).<br /><br />One could argue that disclosing that the compounds disclosed (generally) are inhibitors of X, and providing basis for a fallback to a subset of compounds, at least implies that those subset might be preferred in some way, in any case.<br /><br />JulieJulie Carlislenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-50659192448067262272011-08-23T15:10:57.603+01:002011-08-23T15:10:57.603+01:00I wonder if the UKIPO isn't trying to 'imp...I wonder if the UKIPO isn't trying to 'import' similar recent US case law in which it was determined that the Description must not only enable the invention to be recreated, but must also demonstrate that at the time of Application the inventor 'possessed' the invention (and thereby avoiding a claiming what has not yet been invented situation rightly objected to by Anon@10.46). <br /><br />Following this logic to satisfy (iii) it is not enough for the Applicant to suggest a particular selection might work, rather they must demonstrate in the Specification that it does as claimed work, i.e. demonstrate broadly the technical effect thereafter relied upon to support patentability.<br /><br />Contrarily, if one cannot demonstrate the 'inventive' technical effect at the time of Application is there not a danger that the selection is made not to define a patentable invention but to avoid irritatingly anticipatory prior art! In so doing there may indeed be invention, but not as of the filing date. If such 'new' selection invention is to be claimed a new filing adding required subject matter may need to be filed albeit with consequential unfair loss of the original priority.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86178784740969704152011-08-23T14:42:18.740+01:002011-08-23T14:42:18.740+01:00Hmmm....
Imagine the extreme case of a selection ...Hmmm....<br /><br />Imagine the extreme case of a selection invention i.e. where the claim is to a single compound, which falls within a broad genus of compounds previously disclosed.<br /><br />Say a patent application is filed disclosing a group of compounds defined by a generic formula, which are said to be useful as anti-cancer agents. Several specific example compounds are shown, and their synthesis described, but biological data is only available for a few of these at the time of filing. However, there is more than enough to pass the 'plausibility' threshold (Conor v Angiotech).<br /><br />Post-filing, it turns out that one of the specifically disclosed compounds, but <i>not one for which biological data was given in the application</i>, is far and away the best compound - kills cancer cells with sub-nanomolar potency, and minimal side effects, etc. <br /><br />In a patent office search, prior art is then uncovered that turns out to disclose generic formulae overlapping with the original genus claimed. At least one such prior art genus encompasses the magic compound. However, the magic compound itself is not exemplified anywhere - it is therefore a novel 'selection' from that prior art genus. <br /><br />As the compound was specifically disclosed on filing, there is basis to write a claim directed to that specific compound alone. Its synthesis was described, so it is unquestionably enabled. Its potential use was also disclosed. It is a non-arbitrary selection because it has the hitherto unknown properties described above (<i>but</i> which were not explicitly demonstrated in the application as filed).<br /><br />Clearly, this compound is worthy of patent protection?<br /><br />But if the view of the two Anons (@10.36 and 10.46) and the UKIPO were followed, however, they would not get a patent for it because only with post-filing data can it be proven to have the necessary technical effect.<br /><br />And as it has now been disclosed, they can't claim it anywhere else.<br /><br />If we are talking about fairness, then how is it fair that no patent would be possible for that compound, which must be considered to be a contribution to the art?Cosmictrouthttps://www.blogger.com/profile/14474511806174328323noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36541369021147287832011-08-23T14:04:52.803+01:002011-08-23T14:04:52.803+01:00Selection inventions are inherently 'unfair...Selection inventions are inherently 'unfair' in a sense, because they work on the basis that it is OK to re-claim part of something that has previously been given to the public as part of the prior art, provided that in return there is a contribution to the art i.e. in principle the earlier disclosed genus now belongs to the public, but if you discover something amazing (+ hitherto unknown) about one member of that genus, you are entitled to claim that member, provided it is novel.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-42258992229489546632011-08-23T10:46:14.746+01:002011-08-23T10:46:14.746+01:00I'm with anonymous of 10.36 on this one. Julie...I'm with anonymous of 10.36 on this one. Julie's example appears to be a case of trying to claim an invention that wasn't known about on filing, which shouldn't be allowed in my opinion. If the specification had said on filing that the particular sub-set was expected to have greater activity then I would expect the UK IPO to allow post-filing evidence to support that assertion. If the specification makes no mention of the particular range having improved activity then why should the applicant be able to later discover that it does and then use that discovery to get a patent for an invention that they hadn't made on filing?<br /><br />None of the above is based on a consideration of the law though, just what I think is fair.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-41549651750996098652011-08-23T10:19:01.236+01:002011-08-23T10:19:01.236+01:00@MaxDrei: Yes, I think that is how it should be, b...@MaxDrei: Yes, I think that is how it should be, but the UKIPO seem to have made a special case out of selection inventions which requires a much higher standard of disclosure to show the necessary 'technical effect' i.e. it must be 'demonstrated', not just made plausible, that the selected compounds have the technical effect. See paragraph 3.91 of MOPP, quoted above.<br /><br />@Anonymous: I disagree - the original broader range claimed was disclosed as a genus of compounds having a particular biological activity - inhibitors of target enzyme X, say. This range of compounds turns out not to be novel over a prior art document that discloses a broader, or overlapping, range of compounds, but does not say or suggest that they inhibit enzyme X - enzyme X is not even mentioned. We narrow our claim to a subset of the original genus - a subset which is disclosed in the original application (i.e. there is basis for the narrowing amendment). This subset are the best at the activity that we have disclosed for them - and can be shown to be significantly better inhibitors of enzyme X than the examples in the prior art (which now fall outside our claim). It is still the same invention, just a narrower embodiment of it that avoids the prior art examples. <br /><br />But at UKIPO this narrower claim will only be acknowledged as an inventive selection if the evidence showing that the new subset are better than the prior art was presented in the application as filed. <br /><br />The EPO on the other hand would generally accept post-filing data to show such an improvement, provided that the effect in general terms was disclosed in the application - because they realise that the applicant cannot be expected to know of all the prior art in advance, and so may not have presented what turns out to be the crucial comparison (i.e. with the closest prior art). <br /><br />JulieJulie Carlislenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-16776850031361385442011-08-23T09:16:04.451+01:002011-08-23T09:16:04.451+01:00Very useful post, many thanks indeed. I was wonder...Very useful post, many thanks indeed. I was wondering if it might be possible to mention infringement of selection patents in a future post or post a link to a relevant case concerning infringement? I suppose my point is that if you have a patent for a narrowed range of compounds, who could sue a potential infringer? Could both original and selection patent holder sue an infringer? Also, would the holder of a selection patent be able to perform their invention whilst the original patent was in force?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76761595705803708482011-08-23T07:33:20.260+01:002011-08-23T07:33:20.260+01:00In haste (please forgive, if I have missed the poi...In haste (please forgive, if I have missed the point), but:<br /><br />I'm thinking of the Conor stent case, and the notion of making an effect "plausible". In the app as filed, you have to include enough "evidence" to make "plausible" the effect on which you rely for patentability. <br /><br />Is that not so? Is that not it, both at the EPO and in the UK?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-73647529862887312572011-08-22T22:36:20.367+01:002011-08-22T22:36:20.367+01:00I agree that selection inventions are a bit of an ...I agree that selection inventions are a bit of an oddity. Suppose A finds that part of a known range provides a new and unexpected result, and says so and puts in a claim to that part; while B puts in a claim to a different part which has no unexpected effect. A can get a patent, while B's range is considered obvious. But the test of obviousness is supposed to be what the skilled person would find obvious given the prior art; and there seems no logical justification for saying that he would find B's range obvious but not A's.<br /><br />That said, in your case, Julie, you make it sound as though the right result was reached. The originally-claimed wide range was not novel. The narrower range may be better but the specification as filed apparently did not say this. So you are seeking protection for an invention which was not there in the spec as filed, or at least was not supported by saying why that particular range was special. In effect you're trying to get protection for an invention that you didn't come up with till later.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70256908256433845722011-08-22T17:33:06.286+01:002011-08-22T17:33:06.286+01:00@Rich H
The problem is that the UKIPO are not int...@Rich H<br /><br />The problem is that the UKIPO are <i>not</i> interpreting 'demonstrated' in the way you suggest. It is not enough that the technical effect be 'described' or 'implied' (as it would be at the EPO). They are looking for explicit demonstration, i.e. proof, in the spec. <br /><br />Hence (an example from my personal experience) they will not take into account post-filing data showing that a biological activity which was recited in the spec as being possessed by the compounds of the invention (in general) is greatly improved in the compounds of the new claim (narrowed to restore novelty over a piece of prior art - i.e. to make it a novel 'selection' therefrom) as compared to the compounds in that prior art i.e. the evidence that notional 'selection' from the prior art is not arbitrary must be present in the application as filed. <br /><br />This means that if you are faced with a situation where your eventual claim is a notional 'selection' over prior art that you were not aware of when drafting the case, you are almost certainly scuppered by criteria (iii).<br /><br />JulieJulie Carlislenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-66684727558230879522011-08-22T15:47:27.124+01:002011-08-22T15:47:27.124+01:00I understand the term “demonstrated” in the third ...I understand the term “demonstrated” in the third criteria to mean “identified” or “indicated” or “described” or “implied” etc. “Demonstrated” in this context cannot be interpreted as “providing evidence”. When narrowing down an originally filed broad claim, the new narrow claim must have basis (clearly identified technical advantage) in the specification as filed. The basis cannot be one where no technical contribution is identified (otherwise it would be a mere arbitrary selection at the time of filing and fail criteria 2). Without the third criteria three, a pending patent application may well be amended to cover subsequent drug discovery, which obviously is an absurd outcome. New evidence and data may be used to support an argument about contribution which is at least implied in the application as filed. It may not be used to justify the merits of a selection that was apparently arbitrary at the time of filing. <br /><br />Rich HAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-67142021204037958442011-08-22T09:40:36.283+01:002011-08-22T09:40:36.283+01:00Thank you Jeremy. As a postscript to this I have s...Thank you Jeremy. As a postscript to this I have since spotted that the Glaxo case (cited in MOPP) actually states (see paragraph 113):<br /><br /><i>…There is a limited class of cases in which the patentee has identified an advantageous feature possessed by some members only of a class otherwise old or obvious, has described the advantageous effect in his specification and has limited his claim to the members of the class possessing this advantageous feature. Such a claim may be justified on the basis of what is called selection.</i> <br /><br />Note - 'identified' and 'described', not 'demonstrated'.<br /><br />So far from providing basis for criteria (iii), this case actually singles out selection inventions as an exception to the idea that post-filing data cannot be used to support inventive step...<br /><br />JulieJulie Carlislenoreply@blogger.com