- selection inventions are patentable subject matter;
- a generic disclosure does not affect the novelty of a specific disclosure;
- an unexpected advantage in terms of low toxicity can fulfill the inventive step requirement;
- the claims can protect obvious variations of the subject matter disclosed in the specification;
- amendments and additions, obvious from the subject matter originally disclosed, can be made during prosecution without affecting section 19 of Decree 260/96 (the regulatory decree of the Argentine Patent Law);
- the decision of the President of the Patent Office puts an end to the administra-tive prosecution stage; therefore, modifications in both the specification and the claims can be performed any time until the decision of the President of the Patent Office;
- 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 prohib-it 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 prac-tice, 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.