Section 18(1) of the Patents Act 1990 (Cth) imposes a threshold requirement that the claimed subject matter be an 'invention' — a claim that is merely a new use of a known product may fail this threshold even if the specific novelty and inventive step requirements of s 18(1)(b) are not in issue.
Later decisions that cite NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd
Decisions cited by NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd
N.V. PHILIPS GLOEILAMPENFABRIEKEN AND PHILIPS LIGHTING PTY LIMITED v MIRABELLA
INTERNATIONAL PTY LTD
F.C. 95/045
Number of pages - 17
[1995] HCA 15; (1995) 183 CLR 655
HIGH COURT OF AUSTRALIA
BRENNAN(1), DEANE(1), DAWSON(2), TOOHEY(1) AND McHUGH(2) JJ
CATCHWORDS
HEARING
CANBERRA, 14-15 March 1995ORDER
Appeal dismissed with costsDECISION
BRENNAN, DEANE AND TOOHEY JJ This appeal has been confined to a single issue relating to the significance under s 18(1) of the Patents Act 1990 (Cth) ("the Act") of a finding of the learned primary judge and a majority of the Full Federal Court(1) to the effect that the subject matter of the patent in suit, as disclosed by the specification when read as a whole, was merely a new use of a particular known product. The critical question involved in the resolution of that issue was identified by the appellants ("Philips") as being whether the requirement of s 18(1)(a) that an "invention ... so far as claimed in any claim ... is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" involves any "residual requirement of newness". For reasons which will appear, we consider that that critical question is more appropriately framed in terms which focus upon s 18(1)'s introductory words "... a patentable invention is an invention that ...". So framed, the question is whether the effect of those words is to introduce a general threshold requirement of "newness" or "inventiveness" which, if not satisfied, will deny patentability to something which is merely a new use of an old product without need to resort to either s 18(1)(a)'s requirement of a "manner of manufacture" or s 18(1)(b)'s requirements of a comparison with a defined "prior art base". The background facts are set out in the judgment of Dawson and McHugh JJ. We shall avoid unnecessary repetition of them.
2. Section 18(1) identifies the essential characteristics of a "patentable
invention" for the purposes of the Act. It provides:
"18. (1) Subject to subsection (2)(2) a patentable invention is an
(a) is a manner of manufacture within the meaning of section 6 of the
Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority
date of that claim:
((i) is novel; and
((ii) involves an inventive step; and
(c) is useful; and(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention."
"'invention' means any manner of new manufacture the subject ofletters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention".
3. In the Federal Court, the learned trial judge and the members of the Full
Court were all agreed that, independently of the specific
provisions of s
18(1)(b) relating to novelty and inventive step, s 18(1)(a) must be read as
containing a threshold requirement to
the effect that what was claimed as a
patentable invention must be a proper
subject of letters patent according to
the principles
which have been developed for the application of s 6 of the
Statute of Monopolies 1623(3). That being so, their Honours considered
that,
notwithstanding the fact that the respondent
("Mirabella") had abandoned its
specific allegation of a failure to satisfy s
18(1)(b)'s requirement that
comparison with the defined "prior art base" discloses novelty and an
inventive step, there was no "patentable
invention"
if the claim in the
specification could be seen to be, in the words used by Dixon CJ, McTiernan,
Fullagar, Taylor and
Windeyer JJ
in Commissioner of Patents v Microcell Ltd
("Microcell")(4), "nothing but a claim for the use of a known material in
the
manufacture
of known articles for the purpose of which its known properties
make that material suitable". The trial judge (Wilcox
J) and the
majority in
the Full Court (Northrop and Lockhart JJ) concluded that the claim disclosed
by the specification in the present
case
was merely such a claim. Burchett J,
in dissent in the Full Court, concluded that it was not.
4. In the argument in this Court, there was much that was common ground.
Indeed, at times, there was difficulty in identifying precisely
where
divergence began and ended. As we followed the argument, it was common ground
that a process might satisfy the comparison
requirements of s 18(1)(b)
notwithstanding that it lacked any quality of inventiveness according to
traditional principle. We have
some difficulty with that
proposition but, for
reasons which will appear, it is unnecessary that we pursue it. It was also
common
ground that s 18(1) must be construed not only in its context in the
Act but in the wider context of traditional patents law, including
the history
of patents legislation and practice. For our part, we
consider it unnecessary
to do more than briefly refer to three
aspects of traditional patents law and
practice which seem to us to
be of particular significance for present
purposes.
5. The first aspect can be stated in the words of an actual proposition of
law for which Microcell(5) stands as clear authority.
It is that a "claim for
the use of a known material in the manufacture of known articles for the
purpose of which its known properties
make that material suitable ... cannot
be subject matter for a patent". Or, to adapt the well-known words of Lord
Buckmaster, when
Solicitor-General, in Re BA's Application(6), a claim which
is "nothing but a claim for a new use of an old substance" is a claim
for
something which lies outside the scope of what is known as an "invention"
under well-established traditional principles of patent
law.
6. The second aspect relates to the above-quoted definition of "invention"
contained in the Dictionary set out in Schedule 1 to
the Act. Subject to an
inconsequential verbal variation(7), that definition has appeared in
Commonwealth patents legislation since
the enactment
of the first Commonwealth
Patents Act in 1903(8). It can be traced to the United Kingdom Act of
1883(9). That second
aspect is that it is established by both English and
Australian decisions that the word "alleged" in the
second limb (ie "and
includes
an alleged invention") of the definition "goes only to the epithet
'new'" when the words of the first
limb (ie "any manner of new
manufacture"
etc) are substituted for the word "invention" in the second limb(10).
7. The third aspect of traditional law and practice is related to the second.
It concerns the scope of a threshold question which
arose for the
consideration of the patents office in dealing with an application for a
patent under earlier patents legislation containing
a definition of
"invention" corresponding with that contained in the Act. It is that it was
established that, notwithstanding that
the word "alleged" in the second limb
of that definition qualified the
adjective "new" when applied to the phrase
"manner of new
manufacture" in the first limb, neither the Comptroller under
the pre-1977
English legislation nor the Commissioner under the earlier
Australian legislation was bound to accept an allegation by an applicant
that
the claimed manner of manufacture was new. The "report"
and rejection
provisions of the earlier Australian legislation(11)
produced the situation
that the Australian Commissioner apparently
had a wider discretion than the
English Comptroller to decline
to accept an application(12). However, even
under the earlier English
legislation, the Comptroller was entitled to reject
an application
"if it is apparent upon the face of the specification, when
properly
construed, that the allegation (that the method of manufacture
is
new) is unfounded"(13). The reason why that was so was that, if
it was
apparent on the face of the specification that what was
claimed was not "new",
the specification when read as a whole did
not allege a manner of new
manufacture notwithstanding that it
contained an assertion of newness. Thus,
if it were apparent on the
face of the specification, when properly construed
and understood,
that a subject process was (for example) nothing more than a
new
use of an old product, the specification would itself disclose the
absence
of "an alleged invention" within the second limb of the
definition. When that
was so, the Comptroller or the Commissioner
was entitled to reject the
application for the reason that it
failed to satisfy the threshold test(14).
8. In essence, Philips' argument is that the members of the Federal Court
fell into error by failing to recognise that s 18(1)(b)'s
requirements of
novelty and inventive step (when compared with the identified applicable prior
art base) are exclusive and exhaustive
in so far as inventiveness (whether of
step or idea) is concerned with the result that, if those requirements are
satisfied(15),
it is simply irrelevant that the subject matter of the claim as
identified in the specification lacks the quality of inventiveness
required by
the principles which have been developed for the application of s 6 of the
Statute of Monopolies. Expressed in other
words, Philips' argument is that
the fact that a claimed use is "nothing but ...
a new use of an old substance"
and therefore "outside
the whole scope of what is known as an invention" under
traditional principles
of patent law(16) will not of itself preclude it from
being a proper subject of letters patent under the Act. In our view, Philips'
argument should be rejected. Our reasons for rejecting
it diverge, however,
from the reasons advanced in
Mirabella's primary argument which focused upon
the phrase "manner of manufacture"
in par (a) of s 18(1). The primary focus
of inquiry should, as we have indicated, be upon the opening words ("... a
patentable invention
is an invention
that ...") of that sub-section which
impose a threshold requirement which must be satisfied before one reaches that
contained in
the body of par (a)(17).
9. The effect of those opening words of s 18(1) is that the primary or
threshold requirement of a "patentable invention" is that
it be an
"invention". Read in the context of s 18(1) as a whole and the definition of
"invention" in the Dictionary in Schedule 1,
that clearly means "an alleged
invention"(18), that
is to say, an "alleged" "manner of new manufacture the
subject of letters patent
and grant of privilege within section 6 of the
Statute of Monopolies"(19). In the light of what has been said above about
what is
involved in an alleged manner of new manufacture,
that threshold
requirement of "an alleged invention" will, notwithstanding an assertion
of
"newness", remain unsatisfied if it is
apparent on the face of the relevant
specification that the subject matter of the claim
is, by reason of absence of
the necessary
quality of inventiveness, not a manner of new manufacture for
the purposes of the Statute
of Monopolies. That does not mean that
the
threshold requirement of "an alleged invention" corresponds with or renders
otiose the
more specific requirements of novelty
and inventive step (when
compared with the prior art base) contained in s 18(1)(b). It simply
means
that, if it is apparent on the face of the specification that the quality of
inventiveness necessary for there to
be a proper
subject of letters patent
under the Statute of Monopolies is absent, one need go no further. In that
regard, the position
under s
18(1) remains that indicated in the following
extract from the judgment of Dixon CJ, Kitto and Windeyer JJ in National
Research Development
Corporation v Commissioner of Patents ("the NRDC
Case")(20):
"... in the portion of the definition of invention which includes inthe meaning of the word an alleged invention, the word 'alleged' goes only to the epithet 'new' in the expression 'a manner of new manufacture', and ... accordingly the Commissioner may properly reject a claim for a process which is not within the concept of a 'manufacture'. But the case cited (ie Microcell) shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded: see also Re Johnson's Patent(21). It is therefore open to the Commissioner in a proper case to direct the deletion of a claim for a process which may be seen from the specification, considered as a whole, to be 'outside the whole scope of what is known as invention' because, in the words of Lord Buckmaster, when Solicitor-General, in Re BA's Application(22) it is 'nothing but a claim for a new use of an old substance'(23)."
10. It is true that it can be argued that there is internal tension in an
overall legislative scheme which imposes a threshold requirement
of
inventiveness reflecting the effect of the saving clause in s 6 of the Statute
of Monopolies and then proceeds, if that threshold
requirement be satisfied,
to impose more specific requirements
of novelty and inventive step. It seems
to us, however, that there
are several answers to that argument. One is that
there is no
construction of s 18(1) of the Act which is not susceptible of
some
legitimate criticism. Another is that traditional patents law under s 6
of the Statute of Monopolies long recognised cumulative
requirements of an
element of invention (as distinct from, eg, mere discovery
or analogous use)
in the subject matter as described
by the specification and novelty or newness
as disclosed by comparison with
a prior art base(24). The distinctive
requirements of
novelty and inventive step required by s 18 of the Act are
emphasised by their elaboration in s 7. In that regard it may be noted
that
in the 1952 Act one of the grounds for revocation of a patent was that the
invention "was obvious and did not involve an inventive
step, having regard
to
what was known or used in Australia"(25). More important, it seems to us to
be highly unlikely that it was
the legislative intent
that there should be a
significant alteration of the law as explained in Microcell by extending the
ambit
of a patentable invention
so as to include what is "nothing more" than
"the use of a known material in the manufacture of known articles
for the
purpose of
which its known properties make that material suitable"(26). In
that regard, we do not accept the argument on
behalf of Philips
that Microcell
was decided on the question of newness and not on manner of manufacture. It
is true that, in Microcell,
"counsel
for the applicants argued that ... they
were required to show no more than that the specification described a manner
of
manufacture
and that it was alleged to be new"(27). But it is clear that
the decision of the Court was that "(t)he specification
in the present
case
does not, in our opinion, disclose a patentable invention"(28). Rather, the
deliberate retention of the established
definition
of "invention" in the
Dictionary in Schedule 1 strongly supports the view that it was the
legislative intent that the
threshold requirement
of "an invention" would
continue to exclude from a "patentable invention" any claimed process, method
or use
which was not, on the
face of the specification, a proper subject of
letters patent according to traditional principles.
11. As has been indicated, Wilcox J at first instance and Lockhart J (with
whom Northrop J agreed) in the Full Court of the Federal
Court concluded that
the specification, when properly construed, disclosed that the subject matter
of the claim in the present case
was merely the kind of new use of a known
product (phosphors) which had been held in Microcell not to be a proper
subject matter
for a patent. In that regard, Lockhart J(29) quoted the
substance of the following passage from Wilcox J's judgment:
"The present patent does not claim the discovery by the patentees ofany new property of phosphors, making them suitable for use in highly loaded low-pressure mercury vapour discharge lamps. The luminescent qualities of phosphors had long been known. Indeed, it is the applicants' case on sufficiency of description - which I accept - that the luminescent qualities of the relevant phosphors were so well-known that it was unnecessary to identify the phosphors to be selected for STD testing and e.n evaluation. A mere skilled technician would know which to try. Nor does the patent claim that the patentees discovered that phosphors are subject to STD. This inherent characteristic of phosphors was well-known. Similarly, it was known that mercury ions would attack substances with a higher e.n than mercury (1.9) and zinc, which has an e.n of 1.6. (The only explanation of the patents selection of 1.4 as the appropriate e.n limit was to stipulate a figure lower than that of zinc.)"
"I accept the correctness of the submission of counsel for therespondent that what the patentee has done in this case is to choose two desirable characteristics of the known phosphors and to claim lamps using all phosphors, present and future, possessing those characteristics. The evidence of Dr Verhaar, a scientist employed by the first appellant, makes this point in clear terms. The two desirable characteristics of the known phosphors which were admittedly known were: (a) short term initial lumens depreciation, or 'short term decrease', as it is described in certain of the evidence (that is to say in a lamp according to the invention, luminescent material must satisfy the requirement of short term decrease); and (b) a lamp according to the invention must also satisfy the requirement of a higher degree of mercury resistance or long term maintenance. I accept the correctness of counsel for the respondent's submission that the patentee has essentially 'formulated requirements' 'as regards short term decrease and mercury resistance' (to use the words of the specification (at 26) 'formulated requirements') and claimed them as limitations on the luminescent material. I agree with (the learned trial judge's) finding that this is not an invention."
12. In the light of what has been written above, the effect of the above
conclusion of the primary judge and the majority of the
Federal Court, while
it stands, is that s 18(1)'s threshold requirement of "an invention" was not
satisfied and that the patent in
suit was properly revoked pursuant to s
138(3)(b) of the Act on the ground that the alleged invention was not a
"patentable invention".
Since leave to appeal to this Court was granted
solely
to enable the question of the construction of s 18(1)(a) to be
considered,
the propriety of that conclusion is not in issue in this Court.
That means that the appeal must be dismissed.
13. Strictly speaking, it is unnecessary to answer the question whether a
process which could not be a proper subject matter for
a patent according to
traditional principle, for the reason that it is merely a new use of a known
product, can nonetheless be a
"manner of manufacture within the meaning of
section 6 of the Statute of Monopolies" for the purposes of s 18(1)(a).
However, in
view of the fact that the argument in this Court and the judgments
in the Full Court were primarily directed to that
question, it
is appropriate
that we indicate that we consider that the above construction of s 18(1)'s
threshold requirement of "an invention"
goes a long way towards answering it
since it would border upon the irrational if a process
which was in fact but a
new use of an
old substance could be a "patentable invention" under s 18 if,
but only if, that fact were not disclosed by the specification. In
the context
of that construction of s 18(1)'s threshold requirement of an "invention", the
preferable conclusion is that the phrase
"manner of manufacture within the
meaning of
section 6 of the Statute of Monopolies" in s 18(1)(a) should be
understood as referring
to a process which is a proper subject matter of
letters patent according to traditional principle.
Indeed, notwithstanding
the
argument to the contrary advanced on behalf of Philips, that seems to us
to be the clear effect of the
following passage in the joint
judgment in the
NRDC Case(31):
"The word 'manufacture' finds a place in the present Act, not as aword intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: 'Is this a manner (or kind) of manufacture?' It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because 'manufacture' as a word of everyday speech generally conveys that idea. The right question is: 'Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?'"
14. It is true that, as has been mentioned, the NRDC Case was decided under
the 1952 Act. Nonetheless, it is to be assumed that
it was the legislative
intent that the phrase "manner of manufacture" in s 18(1)(a) should be
construed in accordance with earlier
judicial decisions about its content as
used in the saving clause of s 6 of the Statute of Monopolies. In that
regard, it is relevant
to note that the 1984 Report of the Industrial Property
Advisory Committee
on Patents, Innovation and Competition in Australia(32),
which was taken into account in the framing of the Act, recorded that the
concept of "manner of manufacture" had "the advantage of
being underpinned by
an extensive body of decided case
law which facilitates its application in
particular circumstances" while the
explanatory memorandum(33) stated that s
18(1)(a)'s requirement that an invention be a "manner of manufacture" "invokes
a long line
of UK and Australian court decisions". The point
was made by
Lockhart J in the Full Court when he said(34):
"In my opinion the combination of s 18(1)(a) of the 1990 Act and Sch1 thereto (where it defines 'invention') continues in force the notion of 'manner of new manufacture' present in s 100(1)(d) of the 1952 Act"(35).
15. It follows that, in our view, the trial judge and the majority of the
Full Court of the Federal Court were correct in holding
that the effect of the
conclusion that the relevant process in the present case was no more than a
new use of a particular known
product was that it was not a "manner of
manufacture" for the purposes of s 18(1)(a) and, consequently, not a
"patentable invention".
16. The appeal should be dismissed with costs.
DAWSON AND McHUGH JJ The appellants ("Philips") manufacture and distribute in Australia compact fluorescent lamps which save energy and have a long life. They are a development of fluorescent tubes of a familiar kind which have been in use for some time. The first appellant is a Netherlands corporation and the second appellant an Australian subsidiary. The first appellant was granted a patent under the Patents Act 1952 (Cth) for the manufacture of the lamps, the invention being described as a "low-pressure mercury vapour discharge lamp". The inside wall of the patented lamp is coated with phosphors which emit visible light when irradiated with ultraviolet radiation. The phosphors used in the lamp have a low short-term decrease in efficiency when the lamp is turned on and high electro-negativity. The patent specifies the phosphors used.
2. The respondent ("Mirabella") distributes compact lamps in Australia which
are apparently imported from China. Philips claim
that these lamps infringe
the patent granted to the first appellant. They sought a declaration to that
effect and ancillary relief.
Infringement is denied by Mirabella which, by
cross-claim, challenged the validity of the patent and sought its revocation.
Five
grounds were specified in the cross-claim, namely, failure to comply with
the requirements of s 40 of the Patents Act 1990 (Cth) ("the 1990 Act"), want
of novelty, that the subject of the patent was not an invention or manner of
manufacture, obviousness
and lack of utility. Obviousness, or lack of an
inventive step, was abandoned at the trial of the action. The trial judge
found
in favour of Philips upon the issues of novelty and usefulness. Despite
this, the trial judge found that the subject of the patent
was not an
invention or a manner of new manufacture. He ordered the revocation of the
patent. An appeal by Philips to the Full
Court of the Federal Court (Northrop
and Lockhart JJ; Burchett J dissenting)(36) was dismissed.
3. Special leave to appeal to this Court was granted, but was confined to a
point of construction of the 1990 Act. The point concerns
the meaning of the
phrase "manner of manufacture" in s 18. That section provides:
"(1) Subject to subsection (2), a patentable invention is aninvention that, so far as claimed in any claim:
((i) is novel; and
((ii) involves an inventive step; and
(c) is useful; and(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's predecessor in title to the invention.
4. It is to be noted that the definition of "invention" speaks of any manner
of new manufacture and does so because that is the
terminology used by the
Statute of Monopolies 1623 which declared all letters patent invalid except
those for "any manner of new
manufactures". Section 18(1)(a), on the other
hand, speaks only of a manner of manufacture when describing a patentable
invention.
The explanation advanced by Philips for the omission of the word
"new" in s 18 is that the draftsman of the section took the meaning
given by
judicial decision to that word in the Statute of Monopolies and made it
explicit in sub-s (1)(b)(i) and (ii) with the consequence
that sub-s (1)(a)
requires a patentable invention to be a manner (or kind) of manufacture only
and sub-s (1)(b)(i) and (ii) requires
it to be new, that is to say, novel and
inventive.
5. Mirabella denies this construction of the section and contends that,
notwithstanding the omission of the word "new" in sub-s
(1)(a) and the
explicit requirements of novelty and inventiveness in sub-s (1)(b)(i) and
(ii), the phrase "manner of manufacture"
in sub-s (1)(a) should be read as
"manner of new manufacture" in conformity with the Statute of Monopolies, thus
leaving a residual
requirement that a patentable invention be new under sub-s
(1)(a) in addition to the requirement under sub-s (1)(b)(i) and (ii) that
it
be novel and inventive. It is understandable that Mirabella should so contend
because of its abandonment at trial of obviousness
or lack of an inventive
step as a ground of invalidity, due apparently to its inability to prove a
prior art base under s 18(1)(b)(ii).
The prior art base, as defined in Sched
1, is the basis of the comparison necessary to establish the lack of an
inventive step.
Mirabella seeks otherwise to show that the invention, whilst
a manner of manufacture, is not a manner of new manufacture.
6. In our view, Philips are correct in their contention. Section 18 does not
purport to define an invention. That definition -
a manner of new manufacture
- is to be found in Sched 1. Section 18 describes a patentable invention and
does so by requiring a
manner of manufacture to exhibit certain qualities.
Two of those qualities - novelty and inventiveness (or lack of obviousness) -
constitute a more explicit and precise expression of what has come to be
conveyed by the word "new" in the phrase "manner of new
manufacture". That is
why the word "new" does not appear in s 18(1)(a). And it is why, under s 45,
where an applicant asks for
an examination of a patent request, the
Commissioner of Patents is relevantly confined to reporting on "whether, to
the best of his
or her knowledge the invention, so far as claimed, satisfies
the criteria mentioned in paragraphs 18(1)(a) and (b)". The result
is that a
patentable invention is a manner of manufacture(38) which is, amongst other
things, new in the sense that, when compared
to the prior art base, it is
novel and involves an inventive step(39). There is no additional requirement
that it be new in some
other sense, for that would defeat one of the purposes
of the section.
7. The prior art base, which forms the basis of the comparison required to
establish novelty and an inventive step (or lack of obviousness),
is defined
in Sched 1. Section 7 explains how the comparison is to be made. The detail
is not important for present purposes. What
is important is that a particular
kind of comparison involving a particular art base is required by s 18(1)(b).
If there were a residual
requirement under s 18(1)(a) that a manner of
manufacture be new, the very matters covered by s 18(1)(b) might be
established without
making the comparison required by that provision and s 7,
thus avoiding the parameters which they so carefully set. It is scarcely
to
be thought that the legislature, in closely defining the context for
consideration of the questions of novelty and inventiveness,
intended that
those or related questions should otherwise remain, and remain at large. Put
another way, if there were some residual
question of newness to be determined
under s 18(1)(a), a comparison would have to be made. What is new can only be
determined by
reference to a previous state of affairs. Having specified the
basis for the comparison required by s 18(1)(b)(i) and (ii), it is
unlikely
that the legislature intended that a question of newness should remain under s
18(1)(a) without specifying any basis for
comparison.
8. The use of s 6 of the Statute of Monopolies to define the meaning of
invention in patent legislation has a long history(40).
The development of
the meaning of the words "manner of new manufacture" has, however, taken place
otherwise than as an exercise
in statutory interpretation. As this Court
remarked in National Research Development Corporation v Commissioner of
Patents(41):
"The inquiry which the definition demands is an inquiry into thescope of the permissible subject matter of letters patent and grants of privilege protected by the section. It is an inquiry not into the meaning of a word so much as into the breadth of the concept which the law has developed by its consideration of the text and purpose of the Statute of Monopolies. One may remark that although the Statute spoke of the inventor it nowhere spoke of the invention; all that is nowadays understood by the latter word as used in patent law it comprehended in 'new manufactures'. The word 'manufacture' finds a place in the present Act (Patents Act 1952), not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed."
9. Eventually, the developed meaning of the phrase "manner of new
manufacture" was given a measure of statutory expression. The
Patents Act
1903 (Cth) contained a definition of invention which invoked s 6 of the
Statute of Monopolies but did not set out any
specific grounds for the
revocation of a patent. Section 86(3) merely provided that: "Every ground on
which a patent might at common
law be repealed by scire facias shall be
available as a ground of revocation." However, the Patents Act 1952, which
also defined
"invention" in s 6 by reference to the Statute of Monopolies,
provided in s 100(1) that a patent might be revoked on one or more
of a number
of specified grounds and no other ground. The specified grounds included the
following:
"(d) that the invention ... is not an invention within the meaningof this Act;
(e) that the invention ... was obvious and did not involve aninventive step having regard to what was known or used in Australia on or before the priority date ...
(g) that the invention ... was not novel in Australia on the prioritydate ...
(h) that the invention ... is not useful".
10. The report of the Industrial Property Advisory Committee(42) which
preceded the 1990 Act observed(43):
"Over the last 350 years the courts have interpreted and applied theconcept of manner of manufacture in an expanding and generally non-selective fashion, except for a tendency to focus on manufacturing industry, more or less in accordance with the expansion of technology and industrial activity, and the needs and understanding of the times."
"This concept involves 3 primary tests: the invention must be new,inventive (not obvious), and capable of industrial application. The requirements of novelty and invention are the subject of express grounds of invalidity under section 100 of the Patents Act ... The industrial capability requirement arises from the reference to section 6 of the Statute of Monopolies and the words 'manner of ... manufacture'. This concept involves little more than that an invention must belong to the useful arts rather than the fine arts."
"the present threshold test of patentability by reference to section6 of the Statute of Monopolies and to the expression 'manner of new manufacture' be retained, without specific legislative inclusions or exclusions."
11. It is also to be seen that in the 1952 Act there was a ground of
revocation - s 100(1)(d) - of "not (being) an invention within
the meaning of
this Act", as well as the grounds of obviousness and lack of novelty. That
would seem to be because s 100 does not
itself contain a reference to manner
of manufacture as does s 18(1)(a) of the 1990 Act. The 1990 Act does not
contain any specific
requirement that an invention, in addition to being a
manner of manufacture, be an invention within the meaning of the Act because
that requirement is contained in the phrase "manner of manufacture" in s
18(1)(a) when read with the other requirements of s 18(1).
12. The explanatory memorandum for the Patents Bill 1990 drew a clear
distinction between "manner of new manufacture" and "manner
of manufacture".
The latter expression was said to import
the case law on subject matter as a
threshold consideration, it being implicit
that the question of newness was
dealt with explicitly
by par 18(1)(b) of the Bill, which became s 18(1)(b) of
the 1990 Act. Paragraph
31 of the memorandum read:
"An 'invention' is defined in Schedule 1 by reference to theexpression 'manner of new manufacture' in section 6 of the Imperial Act known as the Statute of Monopolies. The requirement in paragraph 18(1)(a) that an invention, in order to be patentable, must be a 'manner of manufacture' invokes a long line of UK and Australian court decisions. It means little more than that an invention must belong to the useful arts rather than the fine arts."
13. The distinction maintained by s 18 of the 1990 Act between manner of
manufacture and manner of new manufacture was previously
well established in
patent law(47). Unfortunately, the terminology has not always been used
uniformly and sometimes the word "new"
has been regarded as synonymous with
"novel", lack of inventiveness being thought to go to subject matter, or
manner of manufacture.
For example, in Gum v Stevens(48) Starke J said:
"There is no very clear line of demarcation between subject matterand novelty. In deciding whether there is subject matter for the alleged invention, there are, as is pointed out by Mr H Fletcher Moulton in his work on Patents, at p 17, three questions for consideration: 'Firstly, is it a manufacture? Secondly, is it new? Thirdly, is it a new manufacture or, in other words, does it involve invention?' As Griffith CJ remarked in the Linotype Co's Case(49), 'proof of want of novelty is sufficient to support an objection for want of subject matter, but it does not cover the whole ground open under that objection.' Consequently, an objection to the grant of a patent on the ground of want of novelty in the invention is not precluded merely because the same facts may also establish want of subject matter."(50)
14. In RD Werner and Co Inc v Bailey Aluminium(51) Lockhart J remarked that
until recently questions of novelty and inventiveness
were generally
considered as part of the same essential requirements of a patent and that
obviousness and want of subject matter
were often used interchangeably. He
went on to say:
"In one sense, to say that there must be an inventive step is anotherway of saying that there must be novelty in the subject matter of the claim. To determine whether or not a 'manner of manufactures' was new the courts frequently applied the test whether the manner of manufacture was an invention. The absence generally of any, or any real, dichotomy between invention and novelty until comparatively recent times is explicable by the absence of any need to draw any such distinction. However, the concepts of novelty and of invention are intrinsically separate, though they do interact or overlap in some measure and although the distinction between the two is frequently one without any real difference in practice. Nor have the courts been consistent in distinguishing in terminology between novelty and subject matter."
15. However, what is significant for present purposes is that those who
drafted the 1990 Act clearly enough drew a distinction between
"manner of
manufacture" and "manner of new manufacture" and regarded the latter
expression as embracing both novelty, which involves
anticipation by prior use
or publication, and inventiveness, which is to be determined in the light of
the common general knowledge
in the art.
16. Upon appeal to the Full Court of the Federal Court the questions of
compliance with the requirements of s 40 of the 1990 Act,
want of novelty and
utility were decided in favour of Philips. As we have mentioned, at the trial
Mirabella had abandoned its ground
that the invention was obvious and did not
involve an inventive step, that is to say, its ground under s 18(1)(b)(ii).
That left
the separate ground raised by Mirabella that the patented invention
"is not an invention or manner of manufacture within the meaning
of the
Patents Act 1990". The Full Court upheld the finding of the trial judge in
favour of Mirabella upon this ground. In so doing
it is apparent that
Lockhart J, with whom Northrop J agreed, took the view that, in addition to
the requirements in s 18(1)(b)(i)
and (ii) of novelty and an inventive step,
the phrase "manner of manufacture" in s 18(1)(a) was the equivalent of "manner
of new
manufacture" and required an element of newness in addition to that
required by s 18(1)(b)(ii). He expressly rejected the argument,
advanced by
Philips, that the 1990 Act introduced a distinction between the concepts of
"manner
of manufacture" and "manner of new
manufacture" and expressed the
opinion that "the combination of s 18(1)(a) of the 1990 Act and
Sch 1 thereto
(where it defines 'invention')
continues in force the notion of 'manner of new
manufacture' present in s 100(1)(d)
of the 1952 Act"(52). His Honour referred
to
the finding of the trial judge that there was a lack of invention as
distinct from a
lack of an inventive step or obviousness under
s 18(1)(b)(ii)
(that claim having been abandoned) and said(53):
"Many of the submissions made by counsel for the appellants on thispoint blurred the distinction between the requirement that the invention be a manner of new manufacture and obviousness. The respondent did not press its case at the trial (nor therefore on appeal) on obviousness, no doubt, at least in part, because the respondent could not establish that what is described in the evidence as the Vrenken Article was common general knowledge in Australia.
17. The basis upon which the trial judge found in favour of Mirabella upon
the question of invention was that identified in Commissioner
of Patents v
Microcell Ltd(54), namely, that the claim was for the use of known materials
in the manufacture of known articles for
the purpose of which their known
properties make those materials suitable. Such a claim was said in Microcell
not to be capable
of being subject matter for a patent. But Microcell was
decided under the Patents Act 1903, which contained neither the equivalent
of
s 100 of the 1952 Act nor of s 18 of the 1990 Act. There was merely the
definition of
"invention" in s 4 by reference to "any
manner of new
manufacture". In considering whether there was a patentable invention there
was no need for the Court to distinguish
between " manner of manufacture" and
" manner of new manufacture" nor was there any need
to distinguish between
lack of an inventive
step and subject matter, although it is plain that the
Court did take a broader view
of subject matter in that case than it did
subsequently
in National Research Development Corporation v Commissioner of
Patents, which
was decided under the 1952 Act. In the latter case,
the Court
drew a clear distinction between "invention", which it said was comprehended
in the phrase "new manufactures", and subject
matter, which was limited by the
use of the word "manufacture"(55). If the decision
in Microcell upon the
question of invention
were to be made today, it would be made under the 1990
Act by reference to s 18(1)(b)(ii)
and not by reference to the phrase "manner
of manufacture" in s 18(1)(a).
18. For the reasons which we have given, the Full Court and the trial judge
were in error in their construction of s 18 of the 1990
Act. Because of the
abandonment by Mirabella at the trial of its ground under s 18(1)(b)(ii) and
because of the way in which argument
was conducted upon an erroneous
construction of s 18, the preferable course is to allow the appeal and remit
the matter to the Full
Court for reargument in the light of these reasons.
The reargument should, in our view, extend to the question whether Mirabella
is precluded from arguing that the claim lacks an inventive step or is not
capable of being subject matter for a patent.
19. Mirabella served a notice of contention under O 70, r 6(5) of the Rules
of Court indicating that it wished to contend that the
decision of the Full
Court should be affirmed upon grounds relied upon in its cross-claim which
were not upheld by the Full Court.
The only ground upheld by the Full Court
was that the invention was not an invention or manner of manufacture within
the meaning
of the Patents Act 1990. Upon the question being raised during
argument whether these were matters for cross-appeal (for which special
leave
would be necessary)
rather than for inclusion in a notice of contention,
Mirabella did not seek to pursue them. This course
was adopted without
prejudice
to any right to make application for special leave to appeal from
any decision which might be given
by the Full Court upon the remitter
of the
matter to it. It is, therefore, unnecessary to deal with any of the questions
raised
by the notice of contention.
Footnotes:
1 [1993] FCA 404; (1993) 44 FCR 239; 117 ALR 79.
2 Section 18(2) provides that human beings, and the biological processes for their generation, are not patentable inventions.
3 Compare the Federal Court judgments in the present case with CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 51 FCR 260 at 294-295; [1994] FCA 1168; 122 ALR 417 at 450.
4 [1959] HCA 71; (1959) 102 CLR 232 at 251.
5 [1959] HCA 71; (1959) 102 CLR 232 at 251. Microcell was a case under the Patents Act 1903 (Cth) ("the 1903 Act").
6 (1915) 32 RPC 348 at 349, quoted with approval by this Court in Microcell [1959] HCA 71; (1959) 102 CLR 232 at 247 and National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at 262 (a case under the Patents Act 1952 (Cth) ("the 1952 Act")).
7 A parenthetical identification of the "Statute of Monopolies" contained in the 1903 Act (and the 1883 English Act) was subsequently omitted.
8 See the 1903 Act, s 4 and the 1952 Act, s 6.
9 46 and 47 Vict c 57, s 46.
10 See, in particular, R v Comptroller-General of Patents; Ex parte Muntz (1922) 39 RPC 335 at 339; In re Johnson's Patent (1937) 55 RPC 4 at 18-19; National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at 261-262.
11 See, in particular, the 1903 Act, ss 39, 40, 41 and 46(b) and the 1952 Act, ss 47, 48 and 49.
12 See Microcell (1959) 102 CLR 232 at 244-246.
13 See In re Johnson's Patent (1937) 55 RPC 4 at 19.
14 See, generally, Terrell on Patents, 8th ed (1934) at 213-214; Microcell (1959) 102 CLR 232 at 246-247; National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at 261-262.
15 Note, however, that s 138(3) effectively reverses the onus so that, in a case such as the present, it is placed on the party seeking revocation of the patent.
16 See National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 at 262.
17 This approach to the construction of s 18(1) was raised in the course of argument in this Court and adopted by Mirabella as a subsidiary argument.
18 See the final words of the definition.
19 See the first part of the definition.
20 [1959] HCA 67; (1959) 102 CLR 252 at 261-262.
21 (1937) 55 RPC 4 at 19.
22 (1915) 32 RPC 348.
23 (1915) 32 RPC 348 at 349.
24 See, eg, Gadd and Mason v The Mayor etc of Manchester (1892) 9 RPC 516 at 525-526; Sharp and Dohme Inc v Boots Pure Drug Co Ltd (1928) 45 RPC 153 at 170-173.
25 s 100(1)(e).
26 See (1959) 102 CLR 232 at 251.
27 See (1959) 102 CLR 232 at 245.
28 See (1959) 102 CLR 232 at 246 and generally.
29 [1993] FCA 404; (1993) 44 FCR 239 at 264; [1993] FCA 404; 117 ALR 79 at 104.
30 [1993] FCA 404; (1993) 44 FCR 239 at 265; [1993] FCA 404; 117 ALR 79 at 104-105.
31 [1959] HCA 67; (1959) 102 CLR 252 at 269.
32 See at 41.
33 See par 31 at page 7.
34 [1993] FCA 404; (1993) 44 FCR 239 at 263; [1993] FCA 404; 117 ALR 79 at 102.
35 Section 100(1)(d) of the 1952 Act provided that one of the grounds upon which a patent might be revoked was "that the invention ... is not an invention within the meaning of this Act".
36 NV Philips v Mirabella [1993] FCA 404; (1993) 44 FCR 239; 117 ALR 79.
37 Made applicable by s 3.
38 s 18(1)(a).
39 s 18(1)(b)(i) and (ii).
40 See Patents Act 1903 (Cth), s 4; Patents Act 1952 (Cth), s 6; Patents Act 1990 (Cth), Sched 1.
41 [1959] HCA 67; (1959) 102 CLR 252 at 269.
42 Patents, Innovation and Competition in Australia, a report to the Minister for Science and Technology, 29 August 1984.
43 Patents, Innovation and Competition in Australia at 40.
44 Patents, Innovation and Competition in Australia at 39-40.
45 Patents, Innovation and Competition in Australia at 41.
46 See Official Journal of Patents, Trade Marks and Designs, vol 56, no 47, 18 December 1986 at 1470.
47 See Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185 at 188.
48 [1923] HCA 48; (1923) 33 CLR 267 at 272.
49 Linotype Co Ltd v Mounsey [1909] HCA 39; (1909) 9 CLR 194 at 202.
50 See also Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 35 ALJR 212 at 217-218.
51 (1989) 25 FCR 565 at 572; 85 ALR 679 at 686-687.
52 NV Philips v Mirabella [1993] FCA 404; (1993) 44 FCR 239 at 263; [1993] FCA 404; 117 ALR 79 at 102.
53 NV Philips v Mirabella [1993] FCA 404; (1993) 44 FCR 239 at 265; [1993] FCA 404; 117 ALR 79 at 105.
54 [1959] HCA 71; (1959) 102 CLR 232 at 251.
55 Commissioner of Patents v Microcell Ltd [1959] HCA 67; (1959) 102 CLR 252 at 269.