A “selection patent” is a patent under which a single element or a small segment within a large known group is “selected” and independently claimed, based on a particular feature not mentioned in the large group96. If the large group of elements is already patented97, the patent owner may use the selection patent to extend the term of protection beyond the expiration of the original patent, at least for the selected subset. While accepted in some jurisdictions when the selected elements possess a surprising advantage, selection patents have been denied when the supposed advantage is a property shared by all or nearly all of the large group. Germany has refused selection inventions by holding that disclosure of even a large group of elements is fully equivalent, for the purposes of inventive step, to the disclosure of each compound within the group98.
96 A “selection invention” may take place, for instance, when a range of products characterized as having N carbon atoms has been patented, and, later on, a patent on a specific range (e.g. C1-C4) is claimed. Substantial differences exist in the treatment of these patents, including between the European Patent Office (EPO) and some national offices in Europe.
97 Often broad (“generic”) patent claims are admitted, covering a large number (sometimes thousands) of possible compounds.
98 See, e.g., Grubb, 1999, p. 197-199.
An important policy issue is, therefore, to decide whether and under which conditions selection patents should be admitted. The TRIPs Agreement leaves broad discretion to national laws and practices in this area.