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Selection Inventions and New Uses: Protecting Specific Applications Based on Prior Knowledge
By Verónica Toro and Pablo Valdivieso
In industries such as chemistry, pharmaceuticals, biotechnology, and materials science, an invention does not necessarily arise from the discovery of a completely unknown compound, material, or process. In many cases, the prior art may encompass a broad set of alternatives associated with a product, process, or use, without this meaning that all of the properties, advantages, or applications associated with them have been disclosed. It is in this context that selection inventions and new-use inventions become especially relevant.
A selection invention can arise when the prior art discloses a broad range of options, but subsequent research, or a particular choice within what is already known, makes it possible to identify a specific selection that provides an unexpected technical effect. For example, a patent document available in the prior art may describe an extensive family of compounds, while new research shows that using a subset of these compounds achieves activity, stability, selectivity, or performance significantly superior to the rest of the disclosed options. For such a selection to have a reasonable chance of meeting the patentability requirements, it is not enough that the selected elements were not explicitly mentioned; it is necessary that the selection be associated with a technical effect or technical advantage distinct from what was disclosed, such that it can be established that the invention operates in a different way. In this regard, inventive step can be supported when the selection produces an unexpected technical effect, a significant qualitative or quantitative advantage, or behavior that could not have been foreseen or derived from the disclosures available in the prior art.
A similar situation arises with new uses. A product, compound, composition, or material may be known, yet it may still be possible to identify specific applications that have not been previously disclosed. For a specific application to have sufficient merit to be protected by a patent, a relevant technical difference from known uses must be demonstrated, one that gives rise to an unexpected effect. Simply identifying a different application, or a result that would necessarily occur when using a known product, may not be sufficient to meet the requirements of novelty and/or inventive step.
In both cases, providing experimental evidence supporting the technical effect, advantage, or behavior described will be relevant to establishing that the selection or new use does not constitute an arbitrary choice or a routine optimization for a person skilled in the technical field. For example, comparative tests, performance parameters, and studies on selectivity, stability, efficacy, or the reduction of adverse effects can demonstrate that a selection or new use provides a technical result that could not be evidently derived from the prior art. On this point, it is relevant to compare or indicate that the selection or new use produces results that differ from the closest known alternatives.
Accordingly, the patenting strategy for selection inventions or new uses must take into account the scope of prior disclosures, so that it is possible to define a selection or new use that is not encompassed by another document, without unduly limiting the scope of the protected subject matter. It is therefore relevant to identify a subset that can be technically differentiated from the prior art and whose effects or advantages are supported by experimental evidence.
Properly identifying what is already known, the alternatives explicitly described, and the properties, effects, or technical advantages disclosed or demonstrated is relevant to determining specific areas of protection with sufficient merit, in technical fields that may have a high degree of development or technology protection.
Ultimately, selection inventions and new uses can be valuable mechanisms for protecting incremental innovations or improvements over what is already known. Their strength, however, will depend on whether the selection or specific application can be distinguished from the prior art, not merely on formal grounds, but through a demonstrable and non-obvious technical contribution, supported by experimental evidence.