General Disclosures, Selections

Date Published

The question arises as to whether a broad generic disclosure can anticipate a narrow claim (General Tire & Rubber Co v Firestone Tyre [1972] RPC 457). If that generic disclosure is broad, vague and/or speculative, then it will not deprive a claim of its novelty.

"Apparent generality or a proposition not true to its full extent will not prejudice a subsequent statement which is limited, accurate, and gives a specific rule of practical application .... the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a patent, namely such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use."

Hill v Evans (1862) 6 LT 90.

Thus, a generic formula which describes:

"countless permutations and combinations of chemical formulae which could have been produced by a gorilla mindlessly producing chemical formulae with no knowledge of what they mean, nor whether any suggested formula was capable of manufacture"

does not constitute a disclosure of any particular chemical within the generic formula ("the gorilla test" of Beecham Group Ltd. v Bristol Myers Co. 1 NZLR 192 at page 218).

There are many situations where the disclosure of a citation is broad, particularly in the chemical field, where a large number of molecular combinations can be claimed by altering substituent groups. The court in E.I. Du Pont de Nemours (Witsiepe's) Application [1982] FSR 303, considered this issue and concluded that the earlier citation could be a disclosure for a later narrower claim:

"When a researcher is able to discover that a particular combination produces advantageous results he may well be able to assert, and will assert in the specification of his invention, that the same qualities will be produced by a number of variants or homologues described by a formula, or formulae. Moreover, having described how to produce the particular combination, he may well be able to assert, with truth, that production of any of the combinations can be made by any skilled chemist, following the indications he has given."


"... the fact that the product has not been made or tested may well be irrelevant, but different considerations arise when the issue is as to the field left open for subsequent researchers."


a. where a specification provides instructions on making a compound, together with an indication that it has been made (e.g. a melting temperature), there is a high presumption that the disclosure of the compound is an enabling disclosure which can deprive a later claim to that compound of novelty; and

b. the disclosure of a named chemical compound with no indication of it having been made, is nevertheless an enabling disclosure which can deprive a later claim to that compound of novelty, if it can be said that the production of that compound can be effected by any skilled chemist following the indications given; but

c. if the disclosure of a named chemical compound is not an enabling disclosure, it cannot deprive a later claim to that compound of novelty.

However, the court in E.I. Du Pont de Nemours (Witsiepe's) Application supra, also recognised the problem that some of the broadly claimed chemicals might have unexpected properties which a later researcher discovers and wants to patent. The court suggested that the law regarding selection patents has been developed to deal with that problem:

"It has done so in the direction of recognising two objectives, first to protect the original inventor, as regards the invention which he has made, but secondly, to encourage other researchers in the field to use their inventive powers so as to discover fresh advantages and to treat the discovery of such advantages as inherent in selected members of the group or class as a patentable invention."

Note:  Submissions based on Beecham Group Ltd (New Zealand/Amoxycillin) Application [1982] FSR 181, to the effect that a novelty objection citing a compound can only be taken if it can be shown that the substance was actually made, are to be rejected. This case was in the context of selection patents and refers to the requirement from I.G. Farbenindustrie that none of the members of the selection were previously made (see the discussion in Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 613 at pages 629 to 633 and E.I. Du Pont de Nemours & Co (Witsiepe's) Application supra).