Selection Inventions – When Is A List Not A List?

It is well-established European law that the combination of two specific features each selected from different lists "of some length" may result in a novel invention when combined. This principle, the "two-list principle" as established in T 12/81 is outlined in detail here.

In the recently published decision T 2635/16 from the European Patent Office, the Board considers what constitutes a selection in the lists of the prior art.

In this case, Claim 1 of the patent was directed to a specific salt of a specific compound. During prosecution, the Examiner cited document D1 as novelty destroying to Claim 1. D1 related to compounds of a general formula or salts thereof and disclosed the specific compound in one of its claims, amongst a list of 121 other compounds. Separately, D1 disclosed the specific salt in a list of possible salts, the list of salts referred to the general claimed formula and not the claimed compounds. The Examiner considered that the disclosure of