Enabling Disclosure

1There are two requirements for anticipation, ie, prior disclosure and enablement. (See SmithKline Beecham Plc's (Paroxetine Methanesulfonate) Patent [2006] 1 All ER 685, (2006) RPC 10, para 32.) In other words, to prove anticipation, the prior disclosure must be an enabling one. A disclosure to be effective against novelty had to be an enabling disclosure, ie, it must disclose a method of working the invention. Section 10(4)(a) of the Patents Act requires every complete specification to 'describe the invention and its operation or use and the method by which it is to be performed'. The absence of such a description can be a ground for revocation under s 64(1)(h). Such description should 'enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention'. (Patents Act 1970, s 64(1)(h).)

2The information given in the prior document must be of practical working and real utility equivalent with that contained in the subsequent patent. (See Hills v Evans (1860) 31 LJ Ch 457, p 463, per Lord Westbury.) The test for determining whether a prior document would invalidate a subsequent patent is that the statement made in the prior document must be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able to practically apply the discovery without the necessity of making further experiments. Further experiments, however, do not mean the ordinary methods of trial and error which involve no inventive step and which are necessary in applying any discovery to produce a practical result. (See Van der Lely NV v Bamfords Ltd (1963) RPC 61, p 71. See also No-Fume Limited v Pitchford (1935) 52 RPC 231.)

3The mode of constructing a disclosure to determine whether it made available the invention is best described in General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd:

The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date. If the art is one having a highly developed technology, the notional skilled reader to whom the document is addressed may not be a single person but a team, whose combined skills would normally be employed in that art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed. We have already described the composite entity deemed to constitute the notional skilled addressee. ((1972) RPC 457, p 485, per Sachs LJ.)

4Anticipation consists of two concepts, disclosure and enablement. To constitute anticipation, the prior disclosure must not only identify the subject matter of the claim in the latter patent, but it must also do so in a way that enables the skilled man to make it or obtain it. (See Asahi Kasei Kogyo KK's Application (1991) RPC 485 (HL).) The role of a skilled addressee is different with regard to disclosure and enablement as stated by the House of Lords in SmithKline Beecham Plc's (Paroxetine Methanesulfonate) Patent:

Likewise, the role of the person skilled in the art is different in relation to disclosure and enablement. In the case of disclosure, when the matter relied upon as prior art consists (as in this case) of a written description, the skilled person is taken to be trying to understand what the author of the description meant. His common general knowledge forms the background to an exercise in construction of the kind recently discussed by this House in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd (2005) RPC 9. And of course the patent itself must be construed on similar principles. But once the meanings of the prior disclosure and the patent have been determined, the disclosure is either of an invention which, if performed, would infringe the patent, or it is not. The person skilled in the art has no further part to play. For the purpose of enablement, however, the question is no longer what the skilled person would think the disclosure meant but whether he would be able to work the invention which the court has held it to disclose.

There is also a danger of confusion in a case like Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd (1996) RPC 76, in which the subject-matter disclosed in the prior art is not the same as the claimed invention but will, if performed, necessarily infringe. To satisfy the requirement of disclosure, it must be shown that there will necessarily be infringement of the patented invention. But the invention which must be enabled is the one disclosed by the prior art. It makes no sense to inquire as to whether the prior disclosure enables the skilled person to perform the patented invention, since ex hypothesi in such a case the skilled person will not even realise that he is doing so. Thus in Merrell Dow the question of enablement turned on whether the disclosure enabled the skilled man to make terfenadine and feed it to hay-fever sufferers, not on whether it enabled him to make the acid metabolite. ([2006] 1 All ER 685, (2006) RPC 10, paras 32-33. Also reported as Synthon BV v Smithkline Beecham plc [2005] UKHL 59.)

5An enabling disclosure must allow the recipient of the matter to ascertain the invention in a manner in which he is free in equity and law to use it. (See PLG Research Ltd v Ardon International Ltd [1993] FSR 197, p 226.) For revoking a patent, the information disclosed by the prior use must be a clear and unambiguous description of the invention claimed. It should be an enabling disclosure as observed by Aldous J in Lux Traffic Controls Ltd v Pike Signals Ltd:

It is settled law that to invalidate a patent a disclosure has to be what has been called an enabling disclosure. That is to say the disclosure has to be such as to enable the public to make or obtain the invention. Further it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without hindrance from a monopoly granted by the State. ((1993) RPC 107.)

6In the case of chemical and pharmaceutical inventions, determining 'enabling disclosure' will be important as it is possible for a trained chemist to write down a new chemical formula without having even prepared the compound or even knowing its properties. Chemical and pharmaceutical inventions as a patentable concept, involve the combination of the two elements, formula and means. It will not amount to an enabling disclosure, if what is disclosed in the description of the specification is no more than the formulae for the making of the compounds claimed, without any sufficient information enabling them to be prepared, and that what are described in the claims are no more than compounds made up to the disclosed formulae. What is claimed is a chemical compound produced in accordance with and identified by, reference to the formula disclosed. The invention is not the formula itself but the 'thing' identified and described in terms of chemical building blocks by reference to the formula of its composition. (See Asahi Kasei Kogyo KK's Application (1991) RPC 485, p 536 (HL).)

7There may be cases where the means of producing the thing will be self-evident to the man skilled in the art from the mere recital of the formula of its composition. But in cases involving modern chemical and pharmaceutical technology, mere disclosure of the formula will not amount to an enabling disclosure of the invention. In other words, a disclosure of a chemical or pharmaceutical invention will be enabling if the formula of its composition is accompanied by a method by which it can be produced in accordance with that formula. (Ibid. See also Genentech Inc (Human Growth Hormone) Patent (1989) RPC 613.) Though the state of the art would include knowledge of their chemical composition, a mere disclosure of the formula of a product will not make the product available to the public and will not invalidate the claim for the product. (See Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd (1996) RPC 76 (HL).) The invention would be part of the state of the art if the information which has been disclosed enables the public to know the product under the description sufficient to produce or obtain such product. (See Boehringer Mannheim GmbH v Genzyme Ltd [1993] FSR 716, pp 725-26.)

8If the alleged anticipating document does not specifically refer to the element or compound claimed in the subsequent specification and if the general disclosure in the prior specification is so wide ranging that an enumerable number of alternative possible examples were to be found within a particular expression, it would be quite impossible to come to a conclusion that anticipation was established. (See General Mills Inc (Miller's) Application (1972) RPC 709, p 719.) The issues of novelty that arise in case of selection patents are no different from those that arise in the case of other patents. (See IG Farbenindustrie AG's Patent (1930) 47 RPC 289.)