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Date Published

In order to be used as a novelty citation, a generic disclosure must disclose the compounds in question and provide sufficient information for the compounds to be made. It is not essential that the compounds have actually been prepared.

What Compounds are Clearly and Unmistakably Disclosed By a Generic Disclosure?

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 question of what compounds are clearly and unmistakably disclosed goes beyond the intellectual content, and is equivalent to asking what technical information would the citation make public to the instructed reader (though not necessarily revealed in every detail).

American Home Products Corporation [1994] APO 58.

A compound that is named in the worked examples part of a specification as a further example of the invention is disclosed in a technical sense.

Pharmacia Aktiebolag v Ueno Fine Chemicals Industry Ltd (1995) 34 IPR 445.

A generic formula should always be considered in conjunction with the compounds specifically described in the citation in order to determine which combination of substituents and which substitution patterns are actually disclosed in the citation.

Bristol-Myers Co v L'Oreal (1989) 16 IPR 652, especially pages 657-658.

The preferred compounds do not disclose all the structural formulae that could be produced using different combinations of the variables as exemplified.

PPG Industries Inc v Stauffer Chemical Co (1985) 5 IPR 496, especially pages 509-511.

Does the Disclosure Enable the Production of the Compounds Whose Structures Have Been Disclosed?

An enabling disclosure is provided if a generic preparative method is given in the citation or is self-evident, and this method would have been considered to be technically credible by a person skilled in the art at the date of publication of the citation.

American Home Products Corporation [1994] APO 58.

Where there is prima facie an enabling disclosure, then the objection should be taken and the onus placed on the applicant to show that the disclosure is not enabling.

This practice (which is used in the UK Patent Office) has received judicial approval in Toyama Chemical Co Ltd's Application [1990] RPC 555 at 564.

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