To publish or not to publish, that is the question.
We are all familiar with the old academic adage, “publish or perish”, but when commercialisable research outputs have associated potential intellectual property, any published or presented outputs from the research prior to filing patent applications can result in a minefield for the patent applicant.
There are two important intrinsic requirements for obtaining a patent for an invention in most countries in the world, the first is that the invention must be new and the second is that the invention must be inventive or non-obvious. In order to be new, an invention cannot have been made available to the public anywhere, in any way, whether by publication, presentation, use, sale, and the like. In order to be inventive, an invention cannot be considered an obvious step forward on what was already known to skilled persons in the relevant technology field.
However, when considering novelty and inventiveness, a key factor set out in the patent law and practice of many countries is that there must have been an “enabling disclosure” in the prior art. This term is referred to in both the United States Patent Office Manual of Patent Examining Procedure (US MPEP) and also in the European Patent Office Guidelines for Examination in the EPO (EPO GE).
This term was taken over from another requirement of patent law, which is that a patent specification must fully, or at least sufficiently, describe an invention.
Specifically, US patent law states that “The specification shall contain a written description and process of making and using it in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains or with which it is most nearly connected, to make and use the same…”.
This is essentially equivalent to the South African Patents Act Section 32 (3)(b) which provides that a “complete specification shall… sufficiently describe, ascertain, and where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such an invention…”.
As in the test for the novelty and inventiveness of an invention, the question is asked whether a piece of prior art, such as a publication, presentation, or use, etc. provides enough information to the public, as to be an enabling disclosure which will destroy the novelty or inventiveness of the invention.
It is therefore important to understand what this term “enabling disclosure” means.
In the US, the approach to be used by examiners is set out in the MPEP. As a starting point, it is presumed that any piece of prior art that expressly contains or makes obvious all of the elements of the claimed invention is enabling and it is up to the patent applicant to provide facts that will persuade the examiner that this is not the case. It is also not necessary for the prior art to have proven efficacy in order to be enabling, there need merely be sufficient detail provided to allow a person of ordinary skill in the field to carry out the invention which is being claimed.
However, the mere naming or description of the subject matter of the invention in the prior art is not sufficient to be enabling if additional “undue experimentation” would be required by a person in order to produce the invention being claimed.
Also, if the prior art merely discloses a structure of a claimed compound, then if the patent applicant can provide evidence that shows that attempts to prepare that compound were unsuccessful prior to the date of the invention, this is enough to show inoperability and the prior art will not be considered to be enabling.
The EPO GE contains similar guidance that merely naming a compound in a piece of prior art is not sufficient unless it is also known how to prepare and/or separate the compound.
Furthermore, US examiners can consider what knowledge the public possesses before the date of the invention being claimed and consider whether a person with ordinary skill in the field would be able to combine their knowledge with the information described in the prior art to make the invention being claimed. Again, the EPO GE has similar guidance that a combination of the general knowledge of a skilled person together with the disclosed subject matter at the time of making the invention is enough to provide enabling disclosure. Evidence of this knowledge can be in the form of publications or patents that are available to the public.
The US guidelines indicate that an examiner may also make use of illustrations and pictures as enabling disclosures, as long as each claimed structural feature and how these are put together are provided in the illustrations/pictures.
The UK Patent Office also provides useful guidelines for patent examination, including references to relevant case law, which deal with enabling disclosure that may be persuasive to South African courts during revocation proceedings. In the UK, the guidelines have set out that there are two requirements for an invention to be anticipated by a piece of prior art. The first is that there must have been prior disclosure and the second is that there must be enablement, and these are two separate and distinct concepts that have their own rules.
Firstly, for there to be prior disclosure, the prior art must disclose subject matter that, if performed, would necessarily result in infringement of the patent in question, were it to be granted. Another way to put this is that if a prior art experiment, on more than 99 % of the occasions on which it is conducted, would reliably produce a particular result, then this can be considered as “inevitably” leading to the result in question and there would then be prior disclosure. When considering whether there has been prior disclosure, it is also permitted to consider the general knowledge of a person skilled in the field in combination with the prior art to determine whether each of the features of the claim under consideration have been disclosed.
Secondly, once it has been established that the prior art satisfies the requirement of prior disclosure, for there to be enablement, it must be possible for the ordinary skilled person to be able to perform the subject matter of the invention prior to the patent having been applied for. In other words, the test set out for enablement mirrors the test for sufficiency of disclosure in a patent description.
UK law also provides that if it is clear from contemporaneous evidence that the literal disclosure of a document is erroneous, then this disclosure is not part of the state of the art.
There is not much case law in South Africa dealing with enabling disclosure. Two cases seem most relevant, Elan Transdermal Ltd v Ceiba Geigy (Pty) Ltd 1994 and Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd 2006. In the Elan Transdermal case, Judge MacArthur referred to English case law, and indicated that on the assumption that the principle of enabling disclosure contained in English law is also part of South African law, unless a method of putting an earlier document into operation was self-evident, it will not be treated as anticipation. It therefore appears that the English law cases and guidelines regarding enabling disclosure will be applicable to South African law.
There is an even briefer mention of enabling disclosure in the Bromine Compounds case where the judge indicates that plaintiff’s counsel argued that disclosure in the prior publication must be an enabling disclosure, i.e. it must be sufficient for the practical working and real utility of the alleged invention. However, the judge went on to say that it was not necessary in the present case to determine whether the disclosure in question had been enabling.
Despite the lack of guidance in South African law, given the probability that UK patent law and guidelines will be persuasive to a South African court, as would case law from other countries such as the US and EPO members, an inventor needs to consider the possibility of whether prior publications and presentations may be considered to contain sufficient details to be enabling and therefore to anticipate a subsequent invention. When this is done, the inventor must not only consider their own work, but also the common knowledge of a person in their field and other publications, presentations or uses that are already known to the public.
So for academics involved in applied research, perhaps the old adage should be updated to “patent, then publish or perish”.