manner of Manufacture
212 Section 18(1A) of the Act provides that an invention is a patentable invention for the purposes of an innovation patent if the invention as claimed is "a manner of manufacture within the meaning of section 6 of the Statute of Monopolies". "Invention" is defined in Schedule 1 as "[a]ny manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention" (emphasis added).
213 Relying on Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 ('Microcell'), National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 ('National Research'), N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 ('Mirabella'), Advanced Building Systems Pty v Ramset Fasteners (Aust) Pty Limited (1998) 194 CLR 171 ('Ramset'), Bristol-Myers, and Merck, SNF submitted that the invention as claimed in the Patents in suit was not, relevantly, a manner of manufacture. These authorities (discussed below) show that this submission can only properly be understood as a submission that the alleged invention was not, on the face of the specification, an alleged manner of new manufacture properly the subject of letters patent according to traditional principles: see, for example, Mirabella at 665.
214 In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 ('Lockwood No 2') at 211 [106], the High Court said that Microcell stood -
… for a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification "on its face" shows the invention claimed is not a manner of new manufacture. This may arise, for example, from admissions concerning novelty. The decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or discrete "threshold" test.
215 In Dura-Post, Stone J and I discussed some of the authorities, to which SNF refers, stating (at 246 [31]):
We accept … that Microcell stands for "a narrow proposition that a Commissioner of Patents, or his or her delegate, may refuse an application for patent protection where a specification 'on its face' shows the invention claimed is not a manner of new manufacture": see [Lockwood 235 CLR 173 at [106]] per Gummow, Hayne, Callinan, Heydon and Crennan JJ; Mirabella 183 CLR at 663-664 per Brennan, Deane and Toohey JJ; and Merck 154 FCR at 51-53 per Heerey, Kiefel and Dowsett JJ. As their Honours there said in Mirabella, "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".
216 In relation to a standard patent, the majority in Mirabella explained (at 663-664) the manner of manufacture requirement in s 18(1)(a) of the Act in the following way:
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 Sch 1, that clearly means "an alleged invention", that is to say, an "alleged" "manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies". 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 s 18(1A) of the Act]. 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. (Emphasis added.)
The majority went on immediately to cite in support of this passage part of the judgment of Dixon CJ, Kitto and Windeyer JJ in National Research at 261-262.
217 Subsequently, in Ramset at 191-192, the majority discussed the significance of Mirabella, observing that Mirabella:
… came on appeal to this Court on a grant of special leave confined to the construction of s 18(1)(a) of the 1990 Act. But it was decided upon a construction of the introductory words of s 18(1), namely "a patentable invention is an invention that". Reference to the definition of "invention" in the Dictionary which constitutes Sch 1 to the 1990 Act was held to have imported into the introductory words the requirement that a manner of new manufacture for the purposes of the Statute of Monopolies should appear on the face of the specification. …
In [Mirabella], the appellant failed in its attempt to establish that although a claimed use was nothing but a new use of an old substance this could still be a proper subject of letters patent under the 1990 Act where this character of the claimed use was apparent on the face of the specification. (Citations omitted.)
See also Bristol-Myers at 536 [30] and Merck at 52 [63].
218 The observations of Black CJ and Lehane J in Bristol-Myers at 536 [30] concerning what the specification reveals as "known" are especially helpful. For this reason, I set them out:
In our view, in the light of the authorities to which we have referred, [Mirabella] stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field -- then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court … would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part "of the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in [Mirabella]. If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell. It is also, with respect, the only approach which does not, in practical terms, render s 18(1)(b)(ii) otiose. (Citations omitted.)
Bristol-Myers involved a standard patent, and this passage reflects that fact. The present case concerns innovation patents, and regard must therefore be had to s 18(1A), especially s 18(1A)(b)(ii) and s 7(4) (rather than s 18(1)(b)(ii) and s 7(2)).
219 The Ciba respondents argued that, in considering the authorities regarding "manner of manufacture", the court should also bear in mind that there are key differences between the legislative regime for innovation patents and standard patents. The Ciba respondents submitted that the court should take account of the provisions governing innovation patents, the different role of common general knowledge and the lower threshold for patentability in the case of an innovation patent, where an innovative step is required, as opposed to an inventive step in the case of a standard patent. The Ciba respondents argued that the Parliament cannot have intended to lower the threshold, without also relevantly altering the manner of manufacture test.
220 Having regard to the matters to which the Ciba respondents referred, I accept that, in the case of an innovation patent, the test should be "whether on the face of the specification of the innovation patent there is an admission that there is no innovative step". I accept, as the Ciba respondents submitted, that, in the present case, this meant that "in relation to specific prior art documents referred to in the specification there is an admission that any difference does not amount to a substantial contribution to the working of the claimed invention".
221 There is no admission to be found on the face of the specifications of the Patents in suit that, in relation to a specific prior art document mentioned in the specification, the invention does not differ in any way that does not make a substantial contribution to the working of the invention. Nor, if I am wrong about the test, is there an admission on the face of the specification that the invention as claimed is not a manner of new manufacture in any other sense.
222 SNF argued that the high molecular weight polymers (i.e, polymers with a high intrinsic viscosity value) referred to in the Patents in suit were known before the priority date as having properties that made them, to quote SNF, "suitable for fluidising suspensions of particulate material for pumping through pipelines and dewatering suspensions": see SNF's closing written submissions at p 53. SNF stated that this was fully disclosed in publicly available documents, which were referred to and described in each of the specifications of the Patents in suit. SNF went on to argue that:
Judging such matters from the perspective of a skilled addressee possessed of the common general knowledge in the field … it will be clear that these descriptions and incorporated documents disclose all the following matters:
a. processes for improving settling/sedimentation/rigidification of materials were known;
b. such processes occurring during transfer while retaining fluidity;
c. the addition during transfer of polymers (the process referred to as "secondary flocculation");
d. the addition during transfer of aqueous solutions/liquids of water soluble polymers (among others);
e. where the intrinsic viscosity is high;
f. processes in which the materials treated are various. Eg red mud or other tailings from mineral processing.
223 This approach is, so it seems to me, misconceived. Overlapping between the Patents in suit and the documents or acts to which the specifications of the Patents in suit refer does not make out this ground. None of the specifications contains any relevant admission with respect to a prior publication or any matter of common general knowledge. There is no statement in the specifications of the Patents in suit that any of the prior publications or acts mentioned in them discloses the invention as claimed in the Patents in suit. Indeed, after recounting the prior art, each specification identifies a need to "further improve" rigidification and clarity of released water, stating that an objective of the invention is to find a more suitable method of treating mining waste in order to provide better release of liquid and more effective means of disposal. In any event, each of the claims goes well beyond a recital of the use of high molecular weight polymers for "fluidising suspensions of particulate material for pumping through pipelines and dewatering suspensions".
224 In so far as SNF argues that the Patents fail to achieve their promised benefits, such an argument can only be relevant to its utility objection. As the Ciba respondents put it, "[a]n advance over the art is apparent on the face of the specification; the manner of manufacture objection must fail".