Joos v Commissioner of Patents

Joos v Commissioner of Patents - [1972] HCA 38 - HCA 1972 case summary — Zoe

[11]

In the course of what was written at the pages of the report to which I have referred, certain assumptions were made. It is very questionable, in my opinion, whether they are wholly sustainable since the decision in the later case. Part at least of the premises on which the observations were made was that surgery or other processes for treating the human body were of their nature essentially non-economic. The national economic interest in the product of good surgery - and therefore in the advancement of its techniques - if in no other respect than the repair and rehabilitation of members of the work force, including management in that grouping, is both obvious and may be regarded as sufficiently proximate, in my opinion, as to be capable of satisfying the economic element of an invention, if other elements are present and no impediments exist to the grant. One has only to recall the economic impact of workers' compensation, invalid pensions and repatriation costs to recognise that proximity. I would make two further comments on these passages: firstly, that the distinction which I have come to think is relevantly radical between a process for treating the diseases of the body and a process for improving the cosmetic appearance of the body was not fully drawn; and secondly, that in so far as any distinction was drawn, a comparison was made between two surgical processes, for example, an abdominal operation and a face lift. Little difference was seen between these. But, with great respect, the wrong antitheses were chosen. Significant, if not indeed, in my opinion, radical, difference may be seen between an abdominal operation and a permanent wave of the hair; and between a face lift and a hair wash with a solution to alter the strength and elasticity of the hair; and between a skin graft and the painting of the nails with a substance to harden them for cosmetic purposes. These differences are not merely in degree but, in my opinion, in kind. Thus, to my mind, the views tentatively expressed in Maeder v. Busch [1] are much weakened if the assumptions are disclaimed; one of them is now seen to be clearly wrong according to the Court's own decision, there being no need for a vendible or improved vendible product, and the others more than doubtful having regard to the at best questionable validity of the illustrative antithesis chosen.

[14]

It seems to me, therefore, that I may begin my consideration of the question in this appeal, namely, whether it is obvious that a grant could not be made on this application, at the point which is reached by the Court's decision in the N.R.D.C. Case [1] . Having regard to what that case decides, the only matter for consideration in this appeal is whether a process, otherwise appropriate for the grant of a monopoly under the Statute, must be held not to be a proper subject for a grant simply because it is a process for "treatment" of a part of the human body. For the purpose of deciding this question it may be granted that a process for the treatment of the human body as a means of curing or preventing a disease, correcting a malfunction or removing or ameliorating an incapacity is not a proper subject matter for the grant of a monopoly under the Act. It is not essential to the decision of this matter to controvert that proposition or to discover and express its basis in law. But I think it significant that the concession is limited to the medical treatment of disease, malfunction or incapacity. Important in that connexion is the consideration that the concept of treatment, where medical treatment is spoken of, is not satisfied, in my opinion, by any application of a substance to the human body or part of it. Those who apply chemical preparations to the skin to prevent sunburn in climates which enjoy sunshine and moderate air temperatures can scarcely be regarded either as, in a relevant sense, treating their bodies or as undergoing treatment. On the other hand, the application to the skin of an ointment designed and effective to remove keratoses from the skin would be an instance of medical treatment. To be treatment, in the relevant sense, it seems to me that the purpose of the application to the body whether of a substance or a process must be the arrest or cure of a disease or diseased condition or the correction of some malfunction or the amelioration of some incapacity or disability. With that sense of "treatment", I see no difficulty in conceding, for the purpose of the decision of this case, that a process for the medical treatment of a part of the human body is not a proper subject of letters patent.

[32]

I need now to turn to the second of the arguments placed before me on behalf of the Commissioner. It was said that whilst the decision of this Court in the N.R.D.C. Case [1] made it plain that the claimed process, in order to be an invention, need not by its use result in the production or improvement of a vendible article, this Court did emphasize the need for the claimed process to have a commercial application. The argument was, in short, that hairdressing was not of that economic or commercial significance which would make the claimed process a process having a commercial application. It seems to me that there is involved in this submission a misconception of what is meant by the need for the invention to be in the commercial field. It is not, in my opinion, that the process must be employed in trade or commerce or some activity which is usually considered to be part of industry or business. It is said in the N.R.D.C. Case [1] , "the underlying idea seems to be the same as that which Evershed J. suggested in Rantzen's Case [2] where he spoke of the expression "vendible product" as laying proper emphasis upon the trading or industrial character of the processes intended to be comprehended by the Acts - their "industrial or commercial or trading character" as Lloyd-Jacob J. himself described it in Re Lenard's Application [3] . The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Re Virginia-Carolina Chemical Corporation's Application [4] ) - that its value to the country is in the field of economic endeavour." In my opinion, that economic value will not always be directly supplied by the nature of the activity which would utilise the process. In the N.R.D.C. Case [5] , it was the economic advantage to be had from a reduction of weed in grain crops, though both for the profit of the grower and for the economic advantage of the community, which provided the relevant commercial significance. In this case, the processes are to be used in what cannot be described otherwise than as a commercial activity of hairdressing, a sector of activity which accounts, I imagine, for a great deal of employment. I could not assign the skill of the hairdresser to the area of the fine arts and have little difficulty in placing it in the area of the useful arts. In my opinion, it is an activity in the field of economic endeavour and has commercial significance as those expressions ought to be understood in relation to the grant of patents. Therefore, it could not be said, in my opinion, that the application should not be allowed to proceed because clearly it had no commercial significance in the relevant respect.

At a glance

Court

Decision date

Source

Judgment (33 paragraphs)

Parties

Cases Cited (1)