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The genus, the species, and the argument you cannot run both ways
Delhi High Court · 2023 · 2023:DHC:2269, decided 29 March 2023
What happened
A patentee holding an expired broad genus patent and a later species patent on a specific compound sought an interim injunction on the species patent.
What the fight was about
Whether a compound specifically claimed to obtain an earlier genus patent could be the subject of a later species patent, and whether an injunction should follow.
What the court decided
The interim injunction was refused. The defendants raised a credible challenge under section 64(1)(a) on prior claiming: the compound had been specifically claimed in obtaining the genus patent, making successive patenting impermissible. The Court also noted that the genus specification asserted no significant enhancement of therapeutic efficacy, raising a section 3(d) question. Two points of general importance: section 13(4) means grant does not warrant validity, so no presumption of validity attaches from grant or from the age of a patent; and at the interlocutory stage, vulnerability is the issue - the question is not whether the patent is invalid but whether a credible challenge exists.
Why an inventor should care
You cannot argue that an earlier broad patent covers a compound when you are suing, and that it does not disclose it when you are defending validity.
What a patent professional should take from it
Where a species follows a genus, the species needs a distinct inventive step of its own, with data. And positions taken in other jurisdictions - a terminal disclaimer abroad, for example - have been treated as relevant in India.
Coverage and disclosure are the same document read twice. Courts notice when the readings differ.
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This is an editorial case note prepared by Ragulika IP - a summary of a decision, not the text of the judgment, and not authority. Read the judgment itself before relying on any point.
Sources & further reading
Related
The genus and the species
Why is this argument so effective?
Section 3(d)
A provision that treats a new form of a known substance as unpatentable unless it differs significantly in properties **with regard to efficacy**, and also bars the …
A granted patent can still be taken away
Grant is a decision by an examining office on the material in front of it. Section 13(4) says expressly that it carries no warranty of validity - and there are four …
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.
Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.