T 0206/83 - Prior art disclosure must be enabled - #87

Rank: 87
No. of citatons: 59

In the case underlying T 206/83, the examining division found that claim 1 lacked novelty over an earlier patent application from the same applicant (Art. 54(3)).

The Board observed that it was no question that certain compounds individually disclosed in the earlier application fell under claim 1 of the patent in dispute. The Board stated that there was no dispute either that a compound disclosed in terms of its chemical structure can only be regarded as being "made available to the public" in the sense of Art. 54(2) EPC, if a reproducible method is described in the same document, or otherwise available to the skilled person through its common general knowledge. The prior art must include an enabling disclosure in the sense that the skilled person must be able to make the potentially novelty-desctroying compounds.

The earlier patent application, which disclosed compounds falling under claim 1, also included a method of making those prior art compounds from certain starting materials. It was however not described how the starting materials were made. The Board then went on to investigate whether the skilled person would nevertheless be able to make the starting materials using common general knowledge. The same standards were applied as for the assessment of sufficiency of disclosure (Art. 83 EPC). The Board concluded in the end that more than common general knowledge was needed to make the starting materials, and thus also the claimed compounds which represented the potentially novelty-destroying disclosure. Consequently, disclosure of those compounds without disclosing a method of making them did not destroy novelty of claim 1.

T 206/83 is therefore most often cited for its statement that for the disclosure of a prior art document to be novelty-destroying, the disclosure of that prior art document must be enabled.

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Headnote:

A document (in this case a co-pending European application) does not effectively disclose a chemical compound, even though it states the structure and the steps by which it is produced, if the skilled person is unable to find out from the document or from common general knowledge how to obtain the required starting materials or intermediates. Information which can only be obtained after a comprehensive search is not to be regarded as part of common general knowledge.

 The decision text can be accessed here.