Commissioner of Patents v Microcell Ltd.

[8]

Before me it was argued that all that the appellants had to show to entitle them to have their application and amended specification accepted was that the invention was in fact a manner of manufacture and that it was alleged to be new. In support of this contention reference was made to the final words of the definition of invention in s. 4, i.e. "and includes an alleged invention" and to statements in some English cases which, it is said, support the conclusion that an application should not be refused if the specification shows a manner of manufacture alleged to be new unless it appears that it has been anticipated or pre-claimed or unless the specification taken as a whole admits there is no invention in the sense of an inventive step. The authorities referred to are the statement of Lord Hewart C.J. in R. v. Comptroller-General of Patents (Ex parte Muntz) [1] , that the word "alleged" in the definition "goes only to the epithet "new" and does not make that an invention which is not a manner of new manufacture but which the alleged inventor chooses to describe as an invention"; the approval given to this statement in Re Johnson's Patent [1] and May and Baker Ltd. v. Boots Pure Drug Co. Ltd. [2] ; and the decision of Sir Stafford Cripps S.-G. in Re Application of Compagnies Réunies des Glaces [3] and its approval in Re Johnson's Patent [4] where it is said: "The question whether or not a specification discloses a manner of manufacture is one for the Comptroller. The question whether, apart from prior publications and prior claims such as are specifically dealt with in sub-paragraphs (b) and (bb) of sub-section (I) of Section II, the manner of manufacture is "new" is not one with which the Comptroller is concerned, as has been very clearly pointed out by Sir Stafford Cripps, when Solicitor-General, in Re Application of Compagnies Réunies des Glaces [5] , in other words a manner of manufacture alleged to be new is an invention within the meaning of the Act. The truth of that allegation is a matter that can only be enquired into by the Court on a petition for revocation or in an action for infringement. This does not, however, mean that the Comptroller is bound to accept the allegation of the Applicant that his method of manufacture is new if it is apparent upon the face of the specification, when properly construed, that the allegation is unfounded. In order to construe the Specification properly the Comptroller must, of course, have regard to the meaning that would be attributed to its language by those skilled in the relevant art and for the purpose of ascertaining such meaning is entitled to receive evidence. But, if the Specification when so construed shows that the applicant is claiming a manner of manufacture that he alleges to be new, and the Specification when so construed does not itself show that allegation to be unfounded, evidence directed to establishing want of subject-matter or prior user is not permissible" [6] . It is to be observed that these principles have not precluded the English courts from rejecting applications on the ground that the invention claimed, although a manner of manufacture, is not a manner of new manufacture, Re L. & G.'s Application [7] , but it is not necessary to ascertain the limits that are to be derived from the cases cited and other cases because there is a significant difference between the English and Australian Acts which makes it clear that in Australia whether the manner of manufacture claimed is "new" is a question with which the Commissioner must be concerned. In Australia, unlike England, the Act requires an examination for novelty prior to acceptance. The Australian Patents Act 1903-1950, s. 41 (b), requires the investigation of an application and a report by an examiner "whether to the best of his knowledge the invention is or is not novel". The extent of this investigation and the sources of information to which resort may legitimately be had by the examiner under s. 41, the Commissioner under s. 46, and upon appeal the Court under s. 47, are matters which were not raised here and I refrain from discussing them. I would observe too that I regard the last words of the definition of "invention" (which have their origin in the Patents Designs and Trade Marks Act 1883, s. 46), as intended to do no more than make clear that when an application is made it can proceed in accordance with the Act without the applicant having to establish as a prerequisite to any step being taken that it is for an invention, i.e. a manner of new manufacture, and that the Commissioner is not bound by the applicant's allegation that his manner of manufacture is new any more than by the allegation that what is claimed is a manner of manufacture.

[27]

Section 4 of the Act provides that the word "invention", except where otherwise clearly intended, "includes an alleged invention". Taking his stand on this, and citing a passage in the judgment of Lord Hewart L.C.J. in R. v. Comptroller-General of Patents (Ex parte Muntz) [4] counsel for the applicants argued that, in order to entitle them to have their application and amended specification accepted, they were required to show no more than that the specification described a manner of manufacture and that it was alleged to be new. Menzies J. rejected this argument on the ground that s. 41 of the Commonwealth Act of 1903-1950 required the examiner to report whether the invention was or was not novel - a provision which was not found in the English legislation as it existed before 1949. (It may be noted, in passing, that the English Act of 1949 differs widely from the Commonwealth Act of 1952, the former being specific with regard to the matters to be taken into account in deciding whether a specification is to be accepted or not). It is unnecessary, we think, to determine whether the difference between the two earlier Acts is material, because the argument of the applicants is, in our opinion, in any case unsound. In Re Application of Compagnies Réunies des Glaces [1] Sir Stafford Cripps S.-G. said: "It has never been suggested that there is any inherent power to enquire fully into the question of subject-matter in the sense of quantum of invention" [1] . But he added: "It has, however, never been contended that either the Comptroller or the Law Officer is bound to accept an application or grant a patent where there is admittedly no invention in the sense of an inventive step, for in such a case the admission itself would disentitle the applicant to argue that there was even an "alleged invention" disclosed. In such a case, therefore, the Comptroller and Law Officer would be bound to refuse the application or grant on the footing that no manner of new manufacture was disclosed" [2] . When the learned Solicitor-General uses the words "admittedly" and "admission", we do not take him as having in mind an express admission contained in the specification. It is most unlikely that an applicant would make such an admission. It must be enough to warrant rejection that it should be clear on its face that the specification discloses no inventive step. And, to quote Sir Stafford Cripps again "In construing the specification the Comptroller and Law Officer are, of course, entitled to take notice of the surrounding scientific facts which would be known to every person skilled in the particular art so far as these are established in evidence or are admitted in argument" [2] .

[34]

The last case which it is necessary to mention is the case on which the Commissioner specifically relied in giving his reasons for declining to accept the applicant's specification. That is the case of Re L. & G.'s Application [2] . In dismissing an appeal against a refusal of acceptance Morton J. (as he then was) said: "The result is, in my view, that the matter claimed is merely the use of a known material, having its surface oxidised by a known treatment, in the manufacture of known articles, for the reason that this material, so treated, possesses a known property rendering it useful for this purpose" [3] . It is interesting to note his Lordship's reference to, and approval of, part of the argument which had been presented by Mr. Oates, the Superintending Examiner. He said: "Mr. Oates informed me that the Patent Office regard this case as one of considerable importance. He submits that the mere fact that an Applicant says "I make a particular article of a particular known material, and no prior document mentions the making of that particular article of this material" does not make that Applicant the inventor of a manner of new manufacture. Mr. Oates' argument continues: "At the time stainless steel was invented we had a flood of applications for the manufacture in stainless steel of all sorts of articles. I submit it would be almost in restraint of trade if a man could come along and say: "Because no one else has mentioned such and such an article I am going to make it of stainless steel and get a patent for it" " " [4] . The example of stainless steel seems very apposite to the present case. If stainless steel and its properties were known, and many kinds of articles had been made of it, it would not be possible for a man to claim a monopoly for making kitchen sinks of stainless steel merely because he was the first man who ever thought of doing this. The suggestion that he could seems, not unnaturally, to have almost horrified Mr. Oates. Morton J., a little later referred to the practice of the Patent Office in such matters, and said that he saw no reason why it should not be continued. The reference to the practice is this: "Mr. Oates says that there is an established practice in the Office to refuse to grant a Patent in cases of this nature. He says, however, that the practice is subject to certain variations, and he gave the following examples: (1) where a change or variation in the construction of the apparatus is rendered necessary by reason of the use of a particular kind of material not previously used for that purpose; (2) where the use for a particular apparatus of a known material not previously used for that purpose is due to a hitherto unknown or unsuspected property of the material; (3) where the adaptation of the known material to the particular piece of apparatus leads to a new departure in the technique of the production of the apparatus" [1] .

Commissioner of Patents v Microcell Ltd. - [1959] HCA 71 - HCA 1959 case summary — Zoe

At a glance

Court

Decision date

Before

Source

Judgment (42 paragraphs)

Parties

Cited By (3)