Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 
Outcome: followed
Counsel for Sanofi-Aventis submitted that enabling disclosure, not mere disclosure, is required for anticipation, citing, most recently, Lindgren J in Alphapharm Pty Ltd [2008] FCA 559 at [160] [161] and the decision of the House of Lords in SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323. By way of introduction, it is worth remarking that the phrase "enabling disclosure" was brought to prominence by the speech of Lord Hoffmann in Biogen Inc v Medeva plc [1996] UKHL 18 ; [1997] RPC 1 , (1996) 36 IPR 438. That decision concerned the requirements for a valid patent under the 1997 United Kingdom Act (based upon the European Patent Convention) but did not concern the question of anticipation. The most important question was whether a later patent could claim an earlier priority date because it was "supported" by the earlier specification. That is a concept similar to, but narrower than, whether a later patent is fairly based upon an earlier specification in our law (cf F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274). It may be accepted that, in the case of a claim for a chemical compound by formula, in order to be valid, the specification would have to disclose how it might be manufactured (s 40). The phrase was also used in the speech of Lord Oliver in Asahi Kasei Kogyo KK's Application [1991] RPC 485 , to which I shall return. The phrase is reasonable shorthand in relation to the disclosure required for there to be anticipation of a process or method claim but, in my opinion, has little, if any, relevance to anticipation of a product claim or a claim for a chemical compound by formula. Indeed, it is apt to mislead in relation to the latter. For a product claim, the novelty must lie in the product not the means of producing it ( May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 at 281 282). By the same token, a new process to obtain an old product will have novelty. 103 The position established in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was of relatively short duration. Until then, the wider view of Williams J in HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 had applied (see Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305 per Aickin J at 329 330). The 1990 Act widens the prior art base, but does not change the nature of the issue. Leaving aside Aktiebolaget [2002] HCA 59 ; 212 CLR 411 , the principal survey of the topic by the High Court since Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 , particularly at [31] [66]. That case did not involve the problem that arises here. It is noteworthy that the Court said of the 1990 provisions (at [127]): "As stated above, by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention." (Emphasis added.) (cf Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816 at [33] as to combination patents.) The applicants do not seek to utilise the contents of the prior specification as an admission as to common general knowledge (cf Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 , 81 ALJR 1070 at [105] [109]). Rather, it is a statement of the nature of the inventive step that is claimed (cf in another context, Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; (1959) 102 CLR 232). 120 The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19 ; (1998) 194 CLR 171 , particularly at [36] [40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 ; (2007) 81 ALJR 1070 at [106] [107]. It is made clear that external evidence cannot be relied upon. The same ground of invalidity was examined in some detail by the Full Court in Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 at [20] [75] (cf at first instance Arrow Pharmaceuticals Ltd v Merck &amp; Co Inc (2004) 213 ALR 182 , (2004) 63 IPR 85 at [80] [97]). The true scope of this ground of invalidity is difficult to discern in a case such as the present where the claims are for conventional products (albeit defined by chemical formula) and processes for the manufacture of products compared, say, with Merck &amp; Co Inc [2006] FCAFC 91 ; 154 FCR 31 which dealt with a variation of a dosage regime. It is clear that the grounds of novelty and obviousness must be considered as such rather than through this prism ( CCOM Pty Ltd [1994] FCA 1168 ; 51 FCR 260 at 295 295).