Case: SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323 
Outcome: distinguished
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. 57 Lord Hoffman's speech in SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323 spells out the current United Kingdom position with clarity. Under the 1977 United Kingdom Act "disclosure" and "enablement" are separate concepts and are cumulative requirements for anticipation, although there may be circumstances where disclosure will also satisfy enablement. In my opinion, at least in relation to product claims and claims for chemical compounds by formula, this is a departure from the law of Australia and from English law as it was applied up to 1977. I would respectfully suggest that it creates an anomalous relationship between anticipation and infringement. 58 In the present case, the earlier patent gave Sanofi-Aventis a monopoly in relation to the making and using of PCR 4099 and its enantiomers, together or separate, even though there was no description of a method of resolving the enantiomers. 59 I venture the view that the claimed symmetry between the disclosure requirements for validity of the earlier patent and disclosure for anticipation purposes does not exist or is anomalous in the case of a chemical compound described (adequately) by formula. 60 Nonetheless, Lord Hoffman's speech is useful in other respects. So far as the immediate point is concerned, in dealing with disclosure, he said ( SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323 at 337, [34] [35]): "Did the Synthon application disclose an invention which, if performed, would infringe the SB patent? Because it covered a class of chemicals defined by reference to a formula, it disclosed a myriad of compounds, each of which may be regarded as an invention. But that does not matter if one of those inventions was the crystalline PMS claimed in the patent. There seems to me no doubt that the application disclosed the existence of PMS crystals of 98 per cent purity and claimed that they could be made. Whether in fact they could be made is the question of enablement which I shall come to in a moment. But their existence and their advantages for pharmaceutical use were clearly disclosed in the application. And on the basis of the judge's finding of monomorphism, a PMS crystal of 98 per cent purity must necessarily have all the characteristics of the crystals claimed in the patent, including the IR and XRD spectra." At 334 ([22]) he said: "It follows that, whether or not it would be apparent to anyone at the time, whenever subject-matter described in the prior disclosure is capable of being performed and is such that, if performed, it must result in the patent being infringed, the disclosure condition is satisfied. The flag has been planted, even though the author or maker of the prior art was not aware that he was doing so." Then, at 336 ([32]): "In the case of disclosure, when the matter relied upon as prior art consists (as in this case) of a written description, the skilled person is taken to be trying to understand what the author of the description meant. His common general knowledge forms the background to an exercise in construction of the kind recently discussed by this House in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 ; [2005] R.P.C. 9. And of course the patent itself must be construed on similar principles. But once the meanings of the prior disclosure and the patent have been determined, the disclosure is either of an invention which, if performed, would infringe the patent, or it is not. The person skilled in the art has no further part to play." 61 The applicants contend that, in any event, the methods of resolving the enantiomers were part of the common knowledge of skilled persons in Australia at the priority date and would be applied as a matter of routine. 68 After referring to the well-known passage from General Tire &amp; Rubber Co [1972] RPC 457 at 485 486 and citing various other cases, his Honour said ( Alphapharm [2008] FCA 559 at [161] ): "What does "enabling disclosure" mean in the context of a product claim? It means that the earlier disclosure must point unmistakeably to the (+)-enantiomer of citalopram, as distinct from the racemate, as a drug desirable to obtain." I take "as distinct from" to mean "separately from" not "instead of" or "as opposed to". This does not include any separate requirement of enablement in accordance with SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323 and is consistent with my opinion.