2.4.6.2 Non-Literal Disclosure

Date Published

In Hill v Evans (1862) 6 LT 90, Lord Westbury elaborated on the issue of disclosure:

"the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able to apply the discovery without the necessity for further experiments."

Later courts have interpreted this to mean that something less than a literal disclosure can act as an anticipation. Thus, Lord Reid in Van der Lely NV v Bamfords Ltd [1963] RPC 61, stated:

"Lord Westbury must have meant experiments with a view to discovering something not disclosed. He cannot have meant to refer to the ordinary methods of trial and error which involve no inventive step and are generally necessary in applying any discovery to produce a practical result."

The full Federal Court ruled in WR Grace and Co v Asahi Kasei Kogyo Kabushiki Kaisha (1993) AIPC 90-974, that a "clear recommendation" could be a sufficient disclosure.

However, each of these later cases found that a disclosure will not be an anticipation if the skilled addressee has to be inventive in applying the teaching of the earlier disclosure (a non-enabling disclosure; see 2.4.6.5 Enabling Disclosures) or in arriving at the essential integers of the claim:

"It follows from the English authorities as they have been applied in Australia that, whilst Hill v Evans (supra) does not require a literal disclosure and something less may suffice and whilst an alleged paper anticipation is to be treated as read by a skilled addressee, a disclosure will fall short of an anticipation by description of an effective means by which a combination claimed in the patent in suit might be produced, if what is required of the skilled addressee is the exercise of any inventive ingenuity..."

Nicaro Holdings v Martin Engineering 16 IPR 545 at page 563.