Anticipation by Generic Disclosures

Date Published

There is no invention in mere verification of a result suggested by the prior art. For example, if the prior art indicates that certain compounds can be made by a particular reaction and suggests that other compounds could also be made by the same process, it is not inventive to verify that result (Sharp & Dohme Inc v Boots Pure Drug Co Ltd (1928) 45 RPC 153 at 192).

Where a compound is within the scope of an earlier generic disclosure in a document, the objection of lack of inventive step should be considered separately to the issue of novelty. If the compounds within the generic disclosure are alleged to solve the problem, then prima facie there will be a lack of inventive step.  

A generic structural formula represents all the specific structural formulae encompassed by the generic formula. This can be described as the intellectual content of the generic formula. The compounds that are within the intellectual content of a document are clearly put forward as possessing the same properties as the compounds within the technical content. In the absence of selection or the lack of an enabling disclosure, it is immediately obvious that the compounds of the intellectual content would be expected to have the same properties as the compounds within the technical content and there is no inventive step in merely preparing those compounds in the manner suggested and verifying their properties.

Rohm and Haas Co v Nippon Kayaku Kabushiki Kaisha and Sankyo Co, Ltd [1997] APO 40.

Where the document does not disclose the particular property or use of the compounds that is relevant to the problem, then it probably does not solve the problem.

American Home Products Corporation Application [1994] APO 58.

If the particular compounds cannot be prepared by the prior art method, or there is no method of preparation given, then there will be an inventive step in preparing the compounds.