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Real-life scenario · fictionalised
The genus and the species
A company holds an older patent claiming a broad class of compounds, and a later patent claiming one specific compound within that class. The broad patent has expired. When the company seeks an interim injunction on the later patent, the defendant argues that the specific compound was already covered by the expired broad patent, and that the company cannot claim coverage for infringement while denying disclosure for validity.
Why is this argument so effective?
Coverage and disclosure
Indian courts have been unsympathetic to a patentee who asserts that a genus claim covers a compound for infringement purposes while arguing that it does not disclose it for validity purposes. The Delhi High Court has described that position as incongruous.
The practical effect is that a species patent following a broad genus patent has to demonstrate a distinct inventive step of its own, and cannot rely on the genus for scope while disclaiming it for novelty.
What compounds the difficulty
Where the species is a new form of a known substance, section 3(d) adds a further requirement: a significant difference in properties with regard to efficacy, which for a medicine means therapeutic efficacy judged strictly.
And conduct elsewhere is relevant. Where a patentee has filed a terminal disclaimer for the corresponding foreign patent, that has been treated as weighing against them in India.
At the interlocutory stage the question is not whether the patent is invalid but whether a credible challenge exists. Arguments of this kind often meet that threshold.
What should have happened
- Decided at the outset whether the species was genuinely a separate invention, with data to show it.
- Generated the efficacy comparison against the genus before filing on the species.
- Kept positions consistent across jurisdictions.
- Assessed the credible-challenge risk honestly before seeking an injunction.
You cannot have a claim be broad on Monday for infringement and narrow on Tuesday for validity.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
Sources & further reading
- Boehringer Ingelheim Pharma v Vee Excel Drugs, Delhi High Court, 29 March 2023, 2023:DHC:2269
- Section 3, Patents Act 1970 - what are not inventions — Official IP India section text
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
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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.