Enablement & disclosure reformatted

PAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEW Enablement and Disclosure:
3. Disclosure
What is “clear and complete enough”?
3.1 The question of whether or not a document 1. Introduction
discloses matter which reads on to the claims of a patent is determined with reference to the 1.1 This publication examines the statutory person skilled in the art. A discussion of the basis of the above terms and looks at their construction of this legal individual is outside meanings and the way UK courts are likely to the scope of this article, but it can be assumed that they are skilled (but not expert) in the field 2. Statutory basis
2.1 Section 14 (3) of the UK Patents Act constructed, the document must be read and requires that the specification of an application disclose the invention in a manner which is clear and complete enough for the invention to be performed by a person skilled in the art. “the skilled person is taken to be trying Failure to comply means that the comptroller to understand what the author of the may refuse to grant a patent during substantive 2.2 Section 72 (1)(c) of the Act permits the court or the comptroller to revoke a granted patent if it does not disclose the invention in a 3.3 The result of this exercise will be a manner which is clear and complete enough for document where all contentious or potentially it to be performed by a person skilled in the art. allocated the meaning which the skilled person 2.3 This dual requirement of disclosure of the would give them. It is this document thus invention and disclosure of how to perform it is defined which constitutes the disclosure, and often termed a requirement for an “enabling whether the claims read on to this disclosure is “a description [must] contain sufficient “once the meanings of the document material to enable the specification to have been determined, the disclosure constitute the enabling disclosure is either of an invention which, if which Section 14 (3) requires.”1 performed, would [fall within the 2.4 The two concepts of ‘enablement’ and ‘disclosure’ are linked in that “a disclosure must 3.4 It is important to note that the same enable the invention to be performed to the full procedure is followed whether assessing a document in respect of sufficiency or novelty: once the skilled person has been constructed 2.5 Disclosure of the invention and disclosure and all contentious terms have been construed, of how to perform it are, however, two separate requirements, both of which are determined describes an invention which falls within the 3 SmithKline Beecham Plc's (Paroxetine 1 Biogen Inc v Medeva plc [1997] R.P.C. 1, at page Methanesulfonate) Patent [2006] R.P.C. 10, at 2 Kirin-Amgen Inc v. Hoechst Marion Roussel Ltd PAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEW 3.5 It is worth emphasising that, for the purpose 4.2 The question of enablement is determined of disclosure, the part played by the skilled by considering whether the person skilled in the person is solely in making the specification art would be able to follow the teachings of the comprehensible. This is done without seeking specification and thereby make the invention. to modify the specification in any way. The 4.3 In contrast with the question of disclosure, “an invention which, if performed, the skilled person at this point has recourse to would necessarily [fall within the claims of] the patent. It is not enough to say mentioned in Paragraph 3.7 above) and is that, given the prior art, the person willing to modify the teachings in obvious ways skilled in the art would, without undue burden, be able to come up with an invention which would [fall within the “he is not to be expected to exercise research, inquiry or experiment. He must, however, be prepared to display respect of inventiveness may due account be taken of any modifications which could easily be made to the disclosure and so arrive at the making trials and to correct obvious errors in the specification if a means of correcting them can readily be found.”7 inventiveness, may a disclosure be found 4.4 Whether or not a person skilled in the art will be able to perform the invention disclosed cases, however, further documentation may be by a specification will depend on the evidence produced if clarification of a particular word or available and is always a question of fact.8 phrase in the document is required, or if it is necessary in order to show what constitutes 5. Conclusion
part of the skilled person’s common general 5.1 Disclosure requires that a person skilled in 4. Enablement
specification, understand it to describe matter which (without any modification on the part of 4.1Even if a patent specification is found to the addressee) falls within the claim(s) of the disclose the invention, it must still meet the second requirement of Section 14 (3) of the UK Patents Act: it must permit the invention to be 5.2 Enablement requires that a person skilled in the relevant art can follow the teachings of the description (with only those alterations which “It is very possible to make a good suggest themselves in light of common general invention but to lose one's patent for knowledge, as discussed in Paragraph 4.3 failure to make an enabling disclosure. above) and so produce the disclosed invention. The requirement to include an enabling disclosure is concerned with teaching 5.3 If both of these requirements are met, the the public how the invention works, not document will be held to be sufficient (if it is a with devising the invention in the first patent specification) or it will be held to 7 Valensi v British Radio Corp [1973] R.P.C. 8 SmithKline Beecham Plc's (Paroxetine 6 University of Southampton's Applications Methanesulfonate) Patent [2006] R.P.C. 10, at PAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEWPAGEVIEW For further information please contact: Thomas Zvesper HLBBshaw 10th Floor 1 Hagley Road Birmingham B16 8TG United Kingdom Tel : +44(0)121 454 4962 Fax : +44(0)121454 4523 E-mail : [email protected] URL : www.hlbbshaw.com Peer reviewed by Alex Turnbull The information provided in this document is, of course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact us as set out above. HLBBshaw Ltd July 2007

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