The House considered a case involving the issue of enablement of a particular peptide in a patent application.
Held: On the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor common general knowledge would have enabled the skilled man to make it. The argument that the purpose of s2(3) was to prevent double patenting was rejected
Lord Oliver of Aylmerton said: ‘The Act does not contain any definition of the word ‘supported’ but some assistance can be obtained from the provisions of section 14(5) which require the claim in an application to be ‘supported’ by the description. That must, I think, involve the conclusion that if that which is contained in the description of the specification does not enable the claim to be established, it cannot be said to ‘support’ it, for the Act can hardly have contemplated a complete application for a patent lacking some of the material necessary to sustain the claims made. Since, therefore, subsection (3) of section 14 requires in terms that the specification disclose the invention in a way which will enable it to be performed by a person skilled in the art (i.e. it must contain an ‘enabling disclosure’) it follows that a description in an earlier application which contains no enabling disclosure will not ‘support’ the invention so as to enable it, as an invention, to claim priority from the date of that application under section 5(2)(a).’
Judges:
Lord Oliver, Lord Jauncey of Tullichettle
Citations:
[1991] RPC 485
Statutes:
Jurisdiction:
England and Wales
Citing:
Approved – Genetech Inc’s (Human Growth Hormone) Patent 1989
The court considered an enabling disclosure: ‘ . . what has come to be called an ‘enabling disclosure’, that is to say, one sufficient, in the case of a claim to a chemical compound, to enable those skilled in the art to make the compound claimed’ . .
Cited by:
Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
Cited – Aerotel Ltd v Telco Holdings Ltd and others, In re Patent Application GB 0314464.9 in the name of Neal Macrossan Rev 1 CA 27-Oct-2006
In each case it was said that the requested patent concerned an invention consisting of a computer program, and was not therefore an invention and was unpatentable. In one case a patent had been revoked on being challenged, and in the other, the . .
Cited – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 10 June 2022; Ref: scu.231506