NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd

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.

Mirabella served a notice of contention under O 70, r 6(5), of the High Court Rules 1952 (Cth) 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.