CA-2025-001040 - [2025] EWCA Civ 903

The law concerning arbitrary selections

The judge set this out at [39]-[59]. Save in one respect, there is no dispute as to the accuracy of that account, and so I can summarise it briefly. Making an arbitrary selection from the prior art is not inventive. The question is therefore what distinguishes an arbitrary selection from an inventive selection. The answer to that question is that an inventive selection makes a technical contribution to the art, whereas an arbitrary selection does not. The leading authority on this distinction is Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly & Co Ltd [2009] EWCA Civ 1362, [2010] RPC 9, in which this Court adopted the principles applied by the Boards of Appeal. The test established in that case was succinctly summarised by Floyd LJ in Generics (UK) Ltd v Yeda Research & Development Co Ltd [2013] EWCA Civ 925, [2013] Bus LR 1329 at [49(4)]:

“… a selection from the prior art which is purely arbitrary and cannot be justified by some useful technical property is likely to be held to be obvious because it does not make a real technical advance …”

This principle has found particular application where the application or patent claims a chemical compound selected from a genus of compounds disclosed in a prior document. It is not necessary to show that the prior document contains some pointer to the later claimed compound. (If there were such a pointer, the complaint of arbitrary selection would be unnecessary because the later compound would be obvious in the conventional sense.) In order to rebut the charge of arbitrary selection in such a case, the applicant or patentee must show that the claimed compound achieves what in Dr Reddy’s Jacob LJ at [52] called “a real technical advance” and Lord Neuberger of Abbotsbury MR at [109] called “a particular technical result”.

The judge summarised the law at [59] as follows:

“Overall, I do not perceive any material difference between the case law of the EPO and the UK case law (which is to be expected, given that the intention of the Court of Appeal in Dr Reddy’s was to adopt the EPO approach). The requirement is for the claimed invention to in fact constitute a technical advance and for the patent to disclose enough to make that technical advance plausible. If the patent claims a compound selected from a previously disclosed genus of compounds which are said to have a particular property, then that requirement is not satisfied if the compound does not in fact have some different or improved property compared to those previously individually disclosed (a new effect or an increase in an effect), or the patent does not make such improved property plausible.”