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Enablement

3.18 The principle that a citation must provide an enabling disclosure of the invention was affirmed by the Singapore Court of Appeal in Merck & Co v Pharmaforte Singapore Pte Ltd [2000] 2 SLR(R) 708:

“for a prior publication to anticipate the patent it must be established that following the teachings in the prior publication would inevitably lead to the invention covered by the patent. The prior disclosure must not only identify the subject matter of the claim in the later patent, it must do so in a way that enables the skilled person to make or obtain it, a kind of enabling disclosure.”

3.19 Thus the person skilled in the art must be able to perform the invention (SmithKline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2006] RPC 10). In Smithkline Beecham, the House of Lords held that the test for enablement of a prior disclosure for the purpose of anticipation is the same as the test of enablement of the patent itself for the purpose of sufficiency.

3.20 The two requirements of disclosure and enablement should be kept distinct (SmithKline Beecham). In particular, the role of the person skilled in the art is different.

3.21 In the case of disclosure, the document is read using the common general knowledge, available at the date of the disclosure, of the person skilled in the art who is trying to understand what the author meant by the language they used. Once this is determined, the person skilled in the art takes no further part in the determination.

3.22 On the other hand, for enablement, the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work, and the question is not what the person skilled in the art would think the disclosure meant, but rather whether he would be able to work the disclosed invention.