Issue of Selection Patent in India

(By Manas Vridhi manas.v@lsdavar.in)

Selection patent, as the name itself suggest it to be selection of something related to patents. In
lay man language selection patent refers to those inventions where by selection of one or more
specific embodiments, procedure, dimension etc. from the disclosure made in the prior arts, a
new invention is carved out and is known as selection patent. The category of ‘Selection
patents’ pertains to inventions which are individually novel but selected from a group of a
previously known class, and show some surprising or unexpected benefits over the prior art.
Normally a general disclosure in the prior art is not considered fatal to the novelty of new
invention which claims a specific embodiment similar to that disclosed in the prior art. If a
prior art discloses metal, and the new invention claims a specific metal, for e.g. Nickel, the
invention still be considered novel if renders a new result, characteristic or properties within
the meaning of section 2(1)(j) of the Indian Patent Act. Although selection patents are mostly
seen for chemical species/ compound, selection may also be made from a numerical range such
as temperature/pressure conditions in production methods.

There is no separate section in the Indian Patent Act dedicated to the “selection patents”. But
in the view of general provisions of the Indian Patent Act, the assessment of inventive step and
testing under section 3(d) of the Indian Patents Act can be perceived as the most critical to
patentability of selected novel species.

A selection patent is granted for making an inventive choice of selection from a prior known
field. Selection inventions normally involve the selection of individual elements, subsets, or
sub-ranges, which have not been specifically disclosed previously, within a larger known set
or range. For example, a selection patent may involve a claim to a particular group of
compounds having certain advantageous properties, where that group is selected from a prior-
disclosed broader class of compounds and where the advantageous property is not possessed
by the prior-disclosed wide class of compounds. The principle laid down in selection patent
can be deduced from the classic case of IG Farbenindustrie (1930) 47 RPC 289 on doctrine of
allowing patents to old or obvious inventions where the invention lies in the selection from a
class.

In India, the jurisprudence related to ‘selection patents’ is still in evolving phase with very less
number of judiciary precedents. One of the earliest jurisprudence in aspect of selection patent
dates back to 1969, where the Bombay High Court in the case of Unichem Laboratories’ held
that the, “Even where an invention consists of the production of further members of a known
series whose useful attributes have already been described or predicted, it may possess
sufficient subject matter to support a valid patent provided the somewhat stringent conditions
prescribed by Maugham. J., as he then was, in I.G. Farbenindustrie A.G.’s Patents (1930) 47
RPC 289 as essential to the validity of a selection patent are satisfied”. Thus, the Bombay
High Court did identify the concept of ‘selection patent’ but required that the selected members
must possess an advantage peculiar to the selection.

The next major ruling in the respect of selection inventions came from the IPAB in 2009 in the
famous Novartis (Glivec) case. The IPAB in its ruling observed that although there is no
specific provision of ‘selection patent’ in India, if the basic criteria of novelty, inventive step,
industrial applicability, and patentability under sections 3 and 4 are met, the inventive step can
be demonstrated by way of an inventive selection.

A very recent case (AstraZeneca v. Dr. Reddy’s & Ors.) also involves issue of “Selection
Patent” where the claims of the plaintiff’s patent relate to TICAGRELOR (an effective platelet
aggregation inhibitor) and the defendant are involved in manufacturing of generic version of
TICAGRELOR using selection patent based on the claims of the plaintiff. In 2018, the Delhi
HC passed orders in the plaintiff’s interim applications restraining the defendants from selling,
marketing or dealing with TICAGRELOR tablet or any other drug violating the plaintiff’s
registered patents- IN 907 and IN 908. The issue in the case relates to filing selection patent
for the similar kind of substance and thus trying to evergreen the patent illegally as the plaintiff
took patent on the drugs that are derived from the original patent IN 229 i.e for TICAGRELOR.
The Delhi High Court, in this case passed an order dated 8th August 2019 to vacate restrain on
the defendants from manufacturing and selling of the generic version of TICAGRELOR. The
court stated in its order that the balance of convenience is in the favor of defendants as the
original patent in question IN 229 has already expired on 14.07.2018.

I would like to conclude by saying that still India lacks a proper jurisprudence with respect to
selection patent which is not limited only to pharmaceutical industry rather applicable in all the
sectors such as mechanical, electrical engineering etc. The law needs to be revised to give a
clear understanding on the aspect of selection patent which is very vague and ambiguous
currently.