Joos v Commissioner of Patents

The Deputy Commissioner has held that because what is claimed as an invention is a process for treatment of a part of the living human body, the appellant's application must as a matter of law fail; in other words, that what it claims cannot be regarded as an invention within the meaning and operation of s. 6 of the Statute of Monopolies. The question for me at its narrowest is whether this is a tenable view. But it will be unavoidable in the circumstances that, to answer that question favourably to the appellant, I shall have to consider whether a monopoly may be granted by letters patent for a process for treating human hair and nails attached to and growing on the human body. Therefore, in order to consider the precise question before me, I have had to range over the relevant field.

There is no decision of this Court which answers the question whether a monopoly must be refused for a process to treat human hair or nails whilst still attached to or growing upon the human body. At an earlier time, prior to the decision of this Court in National Research Development Corporation v. Commissioner of Patents [1] (the N.R.D.C. Case), it might have been held that the process here claimed as an invention could not be the subject of a monopoly under the Act because its use did not result in, or in the improvement of, a vendible article. It is true that Morton J., as Lord Morton then was, had been able to decide in Chamberlain's Application [2] that a process for waving human hair whilst still on the head was a proper subject of a monopoly: but he had before him evidence that human hair whilst still on the human head was a vendible article frequently sold by women before its removal from the head by and for the purposes of the purchaser. Indeed, counsel for the Patent Office in that case conceded that it was so vendible. But, of course, that did not mean that hair treated in the manner proposed was necessarily sold for reward. However, on views then current, the process, because it resulted in a vendible article or an improved vendible article, was held properly to be the subject of letters patent. But no evidence of that kind is available in the present matter. I must consider this appeal on the footing that the use of the process does not produce or improve a vendible article. But that is not to deny that the process has economic virtue or significance in the relevant sense. I might mention in passing that Lord Morton did not appear to consider the fact that the process in that case involved its application to the human body in order to effect a change in it, a circumstance which would in any case preclude a grant.

1. (1959) 102 C.L.R. 252. 2. Unreported; 23rd February 1942.

However, this Court's decision in the N.R.D.C. Case [1] was a watershed in this respect for it was there decided, and the decision has since been adopted in the United Kingdom, that it is not essential for the grant of a monopoly for a process that the use of the process should produce or improve a vendible article. It is enough that the process has a commercial application. Consequently, as the law now stands, the absence of any evidence in this case that the use of the process would result in the production, improvement, or change in the nature, of a vendible article is in itself not fatal to the appellant's case.

However, I shall need later to deal with an argument put forward on behalf of the Commissioner that the necessity for a commercial application of the process, if it is to be an invention, is lacking in this case.

It was also decided in the N.R.D.C. Case [1] that the proper question to ask when an invention is claimed is not whether it is a manner of manufacture and thereafter whether it is a new manner of manufacture, but rather whether in the developing of concepts of patent law, it is the proper subject for the granting of letters patent under the Act. However, here I am not concerned with the question whether the process itself, apart from its application to the human body, would be appropriate for a grant under the Statute. The sole objection by the Deputy Commissioner to the further progress of the appellant's application is that it is not a proper subject matter for the granting of letters, because it claims a process, as it is said, for the treatment of parts of the human body.

Passages from this Court's decision in Maeder v. Busch [2] were cited to me as establishing or at least as tending to establish that it is not possible to regard a process for treating human hair growing on the head as a manner of manufacture or, to use the expression of this Court in the N.R.D.C. Case [1] , as a proper subject for the grant of a monopoly under the Act. The passages are well known and there is no need to recite them [3] . What is there written is clearly obiter and was unnecessary to the decision of the case. further, Sir Owen Dixon there accepted the view that it was necessary, in order to warrant a grant of letters patent, that a "substance or thing forming a possible subject of commerce or a contribution to the productive arts is to be brought into existence by means of or with the aid of the process" [4] . But, nevertheless, "the question whether a process for treating the hair may be patentable" [5] was left undecided.

1. (1938) 59 C.L.R. 684. 2. (1959) 102 C.L.R. 252. 3. (1938) 59 C.L.R., at pp. 705-706. 4. (1938) 59 C.L.R., at p. 706. 5. (1938) 59 C.L.R., at p. 707.

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.

Reference was made in the N.R.D.C. Case [2] to Maeder v. Busch [1] and to the treatment of disease of the human body. But that was no more than a passing reference not intended to be definitive.

1. (1959) 102 C.L.R. 252. 2. (1938) 59 C.L.R. 684.

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.

The long-standing practice of the Patent Office of the United Kingdom expressed in the Patent Office Manual of Practice paragraph 101.34 is that "processes for the treatment of human beings are regarded as incapable of protection under the Patents Act ". In that pronouncement, treatment was not limited to the sense which, in my opinion, it ought relevantly to have; nor was the treatment in any sense confined to a relationship to disease. Consequently, until some time after the decision of Chamberlain's Application [2] , processes for cosmetic treatment of human hair on the head appear to have been regarded as incapable of forming the subject matter of letters patent. The source decision for the view and practice of the Patent Office seems to have been Lord Buckmaster's decision in C. and W.'s Application [1] . The ground of that decision was that treatment of the human body for a diseased condition - the process in question was one to remove metal from the body, in particular lead from a body suffering lead poisoning - had no reference to trade and commerce; and thus, on prevailing views, not properly the subject of a monopoly. But Lord Buckmaster affirmed the view of the Patent Office that the application for letters should be refused because it related simply to medical treatment. It is apparent that the expression in the Manual of the Patent Office is significantly, indeed, radically, wider than the expression used by Lord Buckmaster which, to my mind, went no further than to exclude from monopoly processes for medical treatment of diseases of the human body.

1. Unreported; 23rd February 1942. 2. (1914) 31 R.P.C. 235.

It is interesting to observe in passing how the authors of Terrell on the Law of Patents in the successive editions have treated Lord Buckmaster's decision since it was reported. The first such edition was the sixth. At p. 31 of that edition it was said:

It is still a common thing for the Patent Office to receive requests for Patents for ingenious notions which cannot be classed as manufactures under any interpretation of the word, such, for example, as schemes for arranging correspondence, new systems of musical notations, a method for extracting metal from the human body, the use of a well-known substance as a manure for increasing the fertility of the soil, and many others. (C. and W.'s Application cited in footnote.) Inasmuch as these applications rarely result in the grant of a patent validity is seldom attacked in the courts on the ground that the alleged invention lacks subject matter in the sense of having no relation to a manufacture whatever. No mention was made of the decision in the seventh edition but in the eighth, at p. 214, appears the following: The grant of a patent will also be refused if the subject of the application is merely a discovery, scheme, or method which cannot be said to involve a "manufacture". Thus, patents have been refused for a process of extracting lead from the human body. (C. and W.'s Application cited in footnote.) The ninth and tenth editions, at p. 13, say: It is still common for the Patent Office to receive applications for patents for ingenious ideas which cannot be classed as "manufactures" under any interpretation of the word, such, for example, as a process for extracting lead from the human body. (C. and W.'s Application cited in footnote).

However, the eleventh edition published in 1968 says, at p. 17, under a caption "Biological Processes":

A method of treating disease of the human body is not a manner of manufacture. (C. and W.'s Application cited in footnote.)

In the twelfth edition published in 1971, there appears this note under the caption "Medical and Biological Processes" at p. 17:

A method of medical treatment of the human body is not a manner of manufacture, e.g. a method for treating disease of the human body. (C. and W.'s Application cited in footnote.)

These last comments on the decision are, in my opinion, accurate if they are regarded as stating that the method of treating disease is not properly the subject of letters patent. Whether or not, in this area, the latter statement is identical with the former need not to be discussed. But, in my opinion, at the most, no more can be taken from, and no more should be built upon, the decision than the latter statement.

However, since the decision in Chamberlain's Application [1] the Patent Office of the United Kingdom has accepted applications for processes for cosmetic treatment of human hair on the head. Further, there have been most important decisions by the Tribunal bearing on the question before me.

Thus, in Organon Laboratories Ltd.'s Application [2] , an application relating to a package containing pills for use in an alleged improvement in the prevention of conception was allowed to proceed. That the package and its directions were so related was an important consideration, as I view the Tribunal's reasons, for allowing the application to proceed. The fact that pills contained in the package were to be used to produce changes in the human body was not regarded as in any sense standing in the way of the success of the application, though the question whether the method of contraception involved could itself be the subject of letters patent was not raised.

More recently, in July 1971, the Tribunal decided an appeal in an application by Schering Aktiengesellschaft for a monopoly for a method of contraception by the administration of a particular gestagen in a defined dose. The reasons given by the Tribunal in that case, which I have found most helpful in my consideration of the present case, canvassed the Patent Office Practice to which I have referred and a number of decisions to which I have no need to refer. Their Lordships constituting the Tribunal seemed content for the purposes of the case before the Tribunal, to allow that the practice of the Office in refusing a patent for a process for the medical treatment of the human body was sustainable though lacking in any demonstrable logical basis; but in doing so their Lordships appear to favour a narrow view of what constituted treatment and to consider that the description "medical" imported the element of disease therapy into the concept of medical treatment of the body. The Tribunal held that an application containing a claim for a method of contraception by the administration to the human female of a gestagen, as defined in the specification, should be allowed to proceed, their Lordships expressing the view, "Although it seems that patents for medical treatment in the strict sense must be excluded under the present (Patents) Act, the claims the subject of the application do not appear to fall within this prohibition". (See Re Schering Aktiengesellschaft's Application [1] ).

The situation so far as the decisions go is, therefore, that there is no decision binding on this Tribunal which denies that a process for the cosmetic treatment of the human body cannot lawfully be the subject of letters patent under the Act. But patents for such processes, for example, permanent waving, have been granted by the Patent Office of the United Kingdom. Further, a method of assisting hearing by insertion of a radio receiver in a tooth was not regarded as a form of medical treatment and an application in respect of the method was allowed to proceed. (See Puharich and Lawrence's Application [2] ). Finally, in Re Schering Aktiengesellschaft's Application [3] to which I have referred, an application claiming a method of contraception by administration of a substance to the human body was allowed to proceed, contraception not being regarded as a form of disease therapy.

1. [1965] R.P.C. 395. 2. [1971] 3 All E.R. 177.

Whilst the decisions of the Tribunal of the United Kingdom are not binding on this Tribunal, there is no reason to think that the law with respect to the grant of letters patent for inventions should be any less liberal in Australia than that which obtains in the United Kingdom; and, although there is no imperative that it should be, the desirability of such law being the same in both countries is readily acceptable.

In my opinion, if it be accepted that process claims for medical treatment of human disease, malfunction, disability or incapacity of the human body or of any part of it cannot satisfy the requirements of an invention under the Act, the class of such claims should be narrowly defined. I can find no warrant in public policy or in the decided cases for including in that class processes and methods for improving, or at any rate for changing, the appearance of the human body or of parts of it. Such cosmetics processes and methods are, in my opinion, not of a like kind with medical prophylactic or therapeutic processes or methods.

There may, of course, be many borderline instances of processes for use upon the human body or parts of it in respect of which a decision as to whether the process constitutes medical treatment or not may prove difficult. But I do not have here such a borderline case. The process with which I am presently concerned is clearly not a method of treatment of a disease, malfunction, disability or incapacity of the human body or of any part of it. In fact, it does not purport to deal with living tissue of the body; the hair to which the solution is to be applied being dead, though its attachment to the body is by or through the follicles which may be regarded as part of the living tissue. The process here is clearly cosmetic, in high contradistinction to a prophylactic or therapeutic medical process. In my opinion, it does not fall within the class of medical treatment which, for the purposes of this case, may be taken to be an inappropriate subject to the grant of letters patent. As I have mentioned earlier, I am not concerned in this case to discover and express a basis for excepting such a class of process claims. If I had to do so, as at present advised, I would place the exception, if it is to be maintained, on public policy as being, in the language of the Statute of Monopolies, "generally inconvenient", not limiting what may fall within those words to things of a like kind to those described by the preceding words. Thus, after due consideration, I have reached the conclusion that it cannot properly be said that the appellant's application cannot be granted simply because its claims are for a process for application to the human body. They are not, in my opinion, claims for a manner or method of medical treatment of the human body within the narrow exception to patentability to which I have referred.

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.

1. (1959) 102 C.L.R. 252. 2. (1959) 102 C.L.R., at p. 275. 3. (1946) 64 R.P.C., 63, at p. 66. 4. (1954) 71 R.P.C. 190, at p. 192. 5. [1958] R.P.C. 35, at p. 36. 6. (1959) 102 C.L.R. 252.