Enabling Disclosures

Date Published

For inventive step considerations, a document must be construed as at the priority date of the claim in question, i.e. in some situations it may be construed having regard to common general knowledge which was unavailable at its publication date (unlike novelty considerations).  Thus a document that was non-enabling for novelty may become enabling in the light of the subsequent common general knowledge, thereby forming the basis of an inventive step objection.

The test for enablement relies on the principles of sufficiency which are summarised by McTiernan J:

"Specifications very frequently contain mistakes; they also have omissions. But if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid."

AMP v Utilux (1971) 45 ALJR 123 at page 128:

If a document provides sufficient instructions for the person skilled in the art to produce the solution without inventive ingenuity, it will be enabling.

It may be difficult to distinguish between a disclosure which requires inventive ingenuity to put the solution into effect and one which only requires uninventive "trial and error":

"Any technician, therefore, faced with this problem would experiment, as a matter of workshop adjustment, with various settings in order to test which produced the best results. .... It seems to me, however ... that this is simply the result of taking the obvious course of trial and error and that the taking of that course cannot properly be described as an inventive step."

Van der Lely v Ruston's Engineering [1985] RPC 461 at page 485.


"... it is apparent that the demarcation of the borderline between trial and error in the ordinary course of the work of an addressee and the type of experiments which rank as being inventive is on occasion very difficult."

General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457 at page 504.

Examiners are to apply balance of probability considerations when this issue is raised (see Balance of Probabilities).