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Novelty

“Inherent” disclosure

3.35 As noted in General Tire v Firestone, the claimed invention will lack novelty if carrying out the directions contained in a prior publication will inevitably result in something being made or done that would constitute an infringement of the claims. This is particularly relevant to claims that define the invention by reference to  parameters. This may be distinguished from an implicit disclosure – in this case the person skilled in the art would not read the feature as being disclosed by the prior art, but if they were to repeat the teaching of the prior art they would inevitably obtain that result.

3.36 For example a process or a product is anticipated by a disclosure which, when put into practice, would necessarily fall within the scope of the claim, even if the disclosure does not disclose these particular parameters. However it must be noted that a determination that a prior art teaching will inevitably result in the claimed invention must be based on sound reasoning.

3.37 In particular, the operating conditions used in a process will need to be very similar in order to sustain an argument that a reaction or process will inevitably give the same product. For example, a claim defines an industrial process for preparing a product comprising a particular ratio of compounds A and B wherein a particular series of steps are carried out using specific reaction conditions (temperature, etc). A prior art citation discloses a similar process for preparing a mixture of A and B, but does not disclose the specific ratio of these components claimed in the present application. In this case, it may be necessary to consider the examples provided in the prior art document in order to determine whether the conditions are sufficiently similar that it could be concluded that the prior art disclosure would inevitably result in the presently claimed ratio.

3.38 Similarly a genetically modified organism characterized by a particular transgene and a particular characteristic may be novel in view of the same organism with the same transgene for which there is no discussion of the same characteristic. This will particularly be the case where there has been an intermediate selection step for the specific traits.

3.39 However, inevitability does not require 100% certainty on every occasion the prior art process is carried out. In Kirin-Amgen Inc. v Roche Diagnostics GmbH [2002] RPC 1, Neuberger J held that “the law of patents is ultimately concerned with practicality”. He considered that a prior art experiment which reliably produced a particular result on more than 99 percent of the occasions on which it is conducted would be regarded as “inevitably” leading to the claimed result.

3.40 In T 303/86 (CPC Int) [1993] EPOR 241 the Technical Board of Appeal of the EPO considered anticipation arising from two cook-book recipes of a process for making flavour concentrates from vegetable or animal substances by extraction with fat solvents under pressure in the presence of water. The claim specified certain parameters for the ratio between the vapour pressure of the water in the meat or vegetables and the vapour pressure of the free water. The Board said:

“It is sufficient to destroy the novelty of the claimed process that this process and the known process are identical with respect to the starting material and reaction conditions since processes identical in these features must inevitably yield identical products.”

Furthermore, it did not matter that the cook did not realise that he was not only frying a chicken, but also making a “flavour concentrate” in the surplus oil. It was enough, as the Board said, that“some flavour of the fried chicken is extracted into the oil during the frying process even if this is not the desired result of that process.

3.41 In Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76 the invention related to an acid metabolite of the known pharmaceutical terfenadine. The metabolite formed in the liver following administration of terfenadine. The acid metabolite was held to be anticipated not by prior use (see paragraph 3.70) but because its formation was the inevitable result of carrying out the directions in the earlier terfenadine patent. In this regard, Lord Hoffmann held that Section 2(2) – the equivalent provision to Section 14(2) of the Singapore Patents Act – does not require that the state of the art include a knowledge of the chemical composition. Rather, it is the invention which must be new and which must therefore not be part of the state of the art. In this case, there was sufficient information disclosed in the prior art to work the invention.