Of leaves & forests – Enablement under South African patent law

Of leaves & forests – Enablement under South African patent law
30 Nov 2015

“Where does a wise man hide a leaf? In a forest.”

So begins the Supreme Court of Appeal’s judgment in the matter of Merck Sharpe and Dohme Group & Merial LLC v Cipla Agrimed (Pty) Ltd which was handed down on the morning of 27 November 2015.

The judgment is particularly noteworthy given that it is the first Supreme Court of Appeal judgment dealing with the assessment of the novelty of a patent by a prior disclosure and in particular whether the disclosure must be an enabling one or not.

The court, in analysing whether the court a quo correctly held that South African Patent 1998/10975 was invalid for lack of novelty, stated that in assessing the disclosure in a particular document it is “important to appreciate that a finding of anticipation requires more than a throw away reference to the same subject matter in a prior art document”. The subject matter in the prior art document must be taught so that the skilled person is enabled, on reading the document, to appreciate its import and implement its teaching.

Accepting that first there must be a disclosure, the next step must then be to determine whether it is in fact enabling or not. To this end, the court endorsed the view, from UK case law, that the test for enablement is the same as the test for enablement for purposes of determining whether an invention is sufficiently disclosed in a patent specification.

Turning to the meat of the matter, the issue with the patent in suit crystalised to the question as to whether the selection of a combination of hydrophobic carriers was disclosed in a prior art patent, the other elements of the claim being agreed upon by the parties as having been disclosed.

Without burdening the reader with a technical discussion, resulting in one ‘not seeing the leaf’, in this case, ‘for the trees’, the court held that the prior art patent did not “plant the flag at the precise destination” of the claims of the patent in suit but that it rather offered a signpost on the road to the invention. Even if the flag had been planted, the court continued, it still remained open to consider whether the skilled person would have been enabled by it.

Turning to the evidence, and even on Cipla’s version, the skilled person would still have to conduct further experiments and gain further information regarding the hydrophobic carriers. The court concluded, on the evidence, that there was no enabling disclosure.

The judgment is a good one for the patentee in that the Supreme Court of Appeals has confirmed that a mere disclosure of an invention is not sufficient – there must be something more, namely that it provides enough information to the skilled person to arrive at the invention.

A mere signpost in the direction of the invention simply doesn’t cut it for purposes of destroying the novelty of a patent!

See also: Patents of Note: Part 2 – The concept of enablement

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)
Alexis Apostolidis
Alexis Apostolidis

Alexis Apostolidis is a partner in the patent litigation practice of Adams & Adams and heads the competition law department of the firm. He is well versed in all aspects... Read more about Alexis Apostolidis


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