Selection Patents Upheld

The Supreme Court of Canada, in a rare patent case, has upheld the validity of selection patents.  This is a case that is especially significant for anyone involved in chemical, biological or pharmalogical technologies, however selection patents may also find use in other technologies.  The case is Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2002 SCC 61and a copy of the decision is available here:
http://scc.lexum.umontreal.ca/en/2008/2008scc61/2008scc61.html

Selection Patents Generally
Selection patents claim the exclusive right to a specific subset of a larger group.  For example, the Lion is a species of the larger Panthera genus which also includes Tigers, Jaguars and Leopards. 

Selection patents permit the inventor to claim the genus or larger group of chemicals at an early stage.  Later, as more research is conducted on that genus, a particular chemical, or species, may be identified that has additional benefits which can also then be claimed in a new patent. 

The Technology in Question
In the present case, Sanofi obtained a first patent (the ‘875 patent) which claimed a genus of anti-platelet compounds.  The ‘875 patent disclosed over 250,000 different possible compounds thought to be useful for this purpose.

Sanofi then obtained a second patent (the ‘777 patent) which disclosed a specific compound that Sanofi then marketed under the name Plavix.  The Plavix compound encompassed within the scope of the ‘875 patent, although its benefits were not specifically identified. 

Decision of the Court
The court held that the ‘777 patent was not anticipated or rendered obvious by the prior ‘875 patent.  (For a discussion on anticipation and obvious, see “Can I Patent This – Part 2” in the May 2008 edition of the Legal Alert.) 

Because the ‘875 patent did not disclose the special advantages of ‘777 compound, it could not be said that the ‘777 compound was not new.  Additionally, the ‘777 compound was not obvious because it was not clear the testing to find the ‘777 compound would work.  The court also rejected concerns of double patenting (patenting the same invention twice) and evergreening as the ‘777 compound was patentably distinct from the ‘875 patent.