Court of Appeals Issues Decision on Selection Inventions and Support for Claims

Pfizer filed on September 15, 1986 patent application No. 305,233 related to a selection invention. The Patent Office rejected this application on August 8, 2006, arguing that the objections raised during prosecution had not been overcome and that claim 2 was not appropriately supported by the specification.

The judge of first instance revoked the PTO’s decision and ordered the grant of the patent. This decision was, in turn, appealed by the PTO.

The Federal Court of Appeals of the City of Buenos Aires upheld the first instance court decision. However, it should be borne in mind that this decision is not final since certiorari has been petitioned and granted. Consequently, the Argentine Supreme Court will review the case and issue a final decision.

The Federal Court of Appeals, citing the official expert’s report, held that the subject matter claimed in Pfizer’s application met the novelty requirement as the compounds related to the case had not been specifically disclosed in the prior art nor the examples provided in the prior art would have led to the compounds. In addition, and once again based on the official expert’s report, the Court considered that an unexpected advantage in terms of low toxicity can fulfill the inventive step requirement. Then the decision went on to analyze the written description requirement, where it was found that the applicant is entitled to claim obvious variations of the subject matter disclosed originally. Finally, the Federal Court of Appeals ordered the Patent Office to grant the patent stating that all the arguments raised by the PTO proved to be arbitrary and the prosecution stage has already ended.

Several conclusions can be drawn from the second instance decision. We believe that the most relevant are:

1. selection inventions are patentable subject matter;
2. a generic disclosure does not affect the novelty of a specific disclosure;
3. an unexpected advantage in terms of low toxicity can fulfill the inventive step requirement;
4. the claims can protect obvious variations of the subject matter disclosed in the specification;
5. amendments and additions, obvious from the subject matter originally disclosed, can be made during prosecution without affecting section 19 of Decree 260/1996 (the regulatory decree of the Argentine Patent Law);
6. the decision of the President of the Patent Office puts an end to the administrative prosecution stage; therefore, modifications in both the specification and the claims can be performed any time until the decision is rendered by the President of the Patent Office;
7. the Judiciary may order the grant of a patent when the administrative decision is arbitrary, as the prosecution stage has already ended.

Thus the decision upheld the patentability of a selection invention. It will be recalled that under Joint Regulation Nos. 118/2012, 546/2012 and 107/2012 (issued May 2, 2012 by the Patent Office and the Ministries of Industry and of Health) new guidelines were introduced, which, inter alia, barred selection inventions. In view of this court decision, these guidelines should be considered unconstitutional insofar as they prohibit the patentability of selection inventions.

Also, this decision acknowledges the possibility of claiming obvious variations of the subject matter originally disclosed. In this way, this decision reverses the PTO’s practice, which limits the scope of the claims to what has been specifically disclosed in the specification.

It now remains to be seen how the Supreme Court finally decides this case.

For more information, please contact:

		Martín Bensadon
		Ignacio Sánchez Echagüe