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Claims shall be supported by description (Section 25(5)(c))

The enablement requirement

5.87 A claim will lack support if the description does not provide an enabling disclosure of the claimed invention (Asahi Kasei Kogyo KK’s Application [1991] RPC 485) – that is, it must provide sufficient information that enables the invention to be performed by the person skilled in the art across the breadth of what is claimed without undue burden of experimentation or the need for further invention.

5.88 A feature in the claims will be sufficiently enabled if, prima facie:

The disclosure teaches a principle that the person skilled in the art would need to follow in order to achieve each and every embodiment falling within a claim; and the specification discloses at least one application of the principle and provides sufficient information for the person skilled in the art to perform alternative applications of the principle in a way that, while not explicitly disclosed, would nevertheless be obvious to the person skilled in the art (Kirin-Amgen Inc. v Hoechst Marion Roussel Ltd, [2005] RPC 9 at [112]).

5.89 If the invention relates to a single product per se the disclosure of one method of making the product provides an enabling disclosure across the full scope of the claim. The applicant is not required to provide all possible methods of making the product (Generics v Lundbeck [2009] UKHL 12; [2009] RPC 13 at [80]). For example if the invention relates to a single compound and the specification provides one method of how it may be prepared, the specification is generally considered to provide sufficient support for a claim to the compound per se.

5.90 Where the claims relate to a number of discrete processes or products, the consideration is whether the enablement of one of these provides enablement of the others. Where there are different embodiments, each must be sufficiently disclosed and enabled. (Chiron Corp. and Ors v Murex Diagnostics Ltd and Ors [1996] RPC 535 at [612-613]). For example, the definition of a “connecting means” may be enabled if the skilled person would reasonably expect the invention to work with any means of connection. However, it would not be necessary in such a case for the specification to show that a broad range of other connectors would work. However, a broad claim for apparatus for “influencing” substances by means of high frequency electrical energy may not be supported if it includes any kind of influence on any kind of substance (Esau’s Application 49 RPC 85). In this situation, the disclosure of a single embodiment will not always satisfy the requirement for an enabling disclosure (see also Biogen v Medeva [1996] UKHL 18 at [22]). Whether the skilled person would be required to undertake an undue burden of experimentation in order to achieve the invention may also be a consideration.

5.91 For example, a claimed product comprises two components, each selected from separate vast lists. To perform the invention, the person skilled in the art is required to select a pair of components to achieve particular desirable characteristics in the final product. In this situation, the specification would lack an enabling disclosure where:

(1) the specification contains little or no guidance on how to select a pair of components which would achieve the desired characteristics in the resulting product; and/or

(2) the specification provides no information on how the desirable characteristics could be measured or otherwise determined in a product containing any pair of components.

In such cases, performing the invention over the entire scope of the claims may be considered to impose an undue burden on the skilled person. However, by narrowing the scope of the claims to a specific pair of components, the invention may be performed by the skilled person. Nevertheless, care should be taken to ensure that there is basis in the specification as filed for this narrower claim to avoid added matter. If there is no basis for a narrower claim then an objection under Section 25(4) may be more appropriate.

5.92 The following claim was found to be unsupported in Pottier’s Application [1967] RPC 170:

“A process for the treatment of hydrated seedlings which comprises subjecting the seedlings to cold shock at a temperature below 0°C for a period sufficiently long to affect the size of the resulting plant.”

In this case, the description only showed the treatment of sugar beet seedlings and there was no basis on which the treatment of sugar beet could be applied to other plants generally.