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Patent Claims for Analogous Use and the Threshold Requirement of Inventiveness

Published online by Cambridge University Press:  24 January 2025

David J Brennan  and
Andrew F Christie
David J Brennan
Affiliation:
Audio-Visual Copyright Society Limited
Andrew F Christie
Affiliation:
Law School, University of Melbourne
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Extract

Invented by Thomas Edison, the electric light bulb was the subject-matter of United States Patent Number 223,898 granted on 27 January 1880. The electric light bulb has come to be recognised universally as the symbol of invention. Patent claims providing for a compact fluorescent light bulb have, over one hundred years later in the N. V. Philips Gloeilampenfabrieken and Another v Mirabella International Pty Ltd litigation, been held by a court at first instance and two appeal courts to be not claims for a “patentable invention” under s 18 of the Patents Act 1990 (Cth).

Anglo-Australian patent law has been vigilant to deny patentability where, on the face of the specification, a claim is “nothing but a claim for the use of a known material in the manufacture of known articles for a purpose of which its known properties make that material suitable” — referred to herein as an “analogous use” claim.

Type
Research Article
Information
Federal Law Review , Volume 25 , Issue 2 , June 1997 , pp. 237 - 262
Copyright
Copyright © 1997 The Australian National University

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References

l (1992) 24 IPR 1 (Federal Court, Wilcox J), (1993) 44 FCR 239 (Full Court of the Federal Court), (1995) 132 ALR 117 (High Court).

2 Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 251 per the Court (Dixon CJ,McTiernan, Fullagar, Taylor and Windeyer JJ).

3 (1995) 132 ALR 117 at 121 per Brennan, Deane and Toohey JJ.

4 Ibid at 122.

5 (1959) 102 CLR 232.

6 (1959) 102 CLR 252.

7 The right of the Crown to make such a grant was derived from its Common La\\ prerogative to reward services to the State: see Halsbury's Statutes 4th ed, vol 33,1.

8 21Jae 1 c 3.

9 See in particular the discussion in Ccom Pty Ltd v Jiejing Pty Ltd and Others (1994) 28 IPR 48: at 509-510.

10 Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd(“3M”) (1980) 14,CLR 253 at 287-292 per Aickin J (Stephen and Mason JJ concurring).

11 Ccom v Jiejing (1994) 28 IPR 481 at 510. An interesting question beyond the scope of thi1 article is whether all cases of absence of inventive step (or obviousness) can be analysed a1 being claims for analogous uses.

12 Terrell on the Law of Patents (13th ed) at 5.115.

13 Commissioner of Patents v Microcell (1959) 102 CLR 232 at 251.

14 For inventive step, the basis of comparison is found in sections 7(2) and (3), and the Schedule 1 definitions of “prior art information” and “prior art base”.

15 (1838) 3 Hayward's Patent Cases 125. The case involved a patent for a wheel for use in rail carriages. It was alleged that the wheel was known, albeit never used in relation to railways.

16 Ibid at 141

17 Ibid.

18 See, for example, the Digest to Hayward's Patent Cases 1600-1883, which contains reports of cases decided under the Statute of Monopolies. Under the heading “Subject Matter” cases are categorised under seven sub-headings: “Manufacture”; “Combination”; “Process”, “Addition to a known Machine or Process”; “Application of a known Machine, Process 01, Material to a New Purpose”, “Application of a known Machine, Process or Material to ar Analogous Purpose” and “Principle”.

19 Hamilton E. Harwood and Another v The Directors, etc of the Great Northern Railway Compan'!-J (1865) 11 HLC 654 at 667, 11 ER 1488 at 1493 per Blackburn J.

20 (1865) 11 HLC 654, 11 ER 1488.

21 (1865) 11 HLC 654 at 682-683, 11 ER 1488 at 1499 (emphasis added).

22 Interestingly, the Lord Chancellor's statement from Harwood has been cited twice in Higl Court judgments, both times by Griffith CJ, however omitting the “interference to trade” words seem to express the underlying policy of the case: Willmannv Petersen (1904) 2 CLF 1, at 20 per Griffith CJ; Rogersv Commissioner of Patents (1910) 10 CLR 701 at 707 per Griffitl CJ.

23 See Eastman Kodak Co's Application [1970] RPC 548 at 563 per Whitford J.

24 46 & 47 Viet, c 57.

25 7Edw 7, c 29.

26 (1930) 48 RPC 185.

27 This was a hearing by a “law officer” under section 3(3) of the 1907 Act of an appeal from a refusal by the comptroller to accept the application.

28 (1930) 48 RPC 185 at 185-186.

29 Ibid at 186. Arguably, the “duty” spoken of alludes to the “hurt of trade” criterion contained! in section 6 of the Statute of Monopolies.

30 Such as, for example, under section 7 of the 1907 Act.

31 (1930) 48 RPC 185 at 188.

32 See Commissioner of Patents v Microcell (1959) 102 CLR 232 at 246 for an explanation of what was meant by “admission”.

33 This outcome, as opposed to the principle enunciated by the Solicitor-General, is criticised in Commissioner of Patents v Microcell (1959) 102 CLR 232 where the High Court stated ai 249-250: “It may well be doubted, however, whether the actual decision ... was in accorc with that principle ... If there is any inconsistency with the other decisions, we would, with respect, prefer the other decisions.”

34 (1940) 58 RPC 21.

35 (1940) 58 RPC 21 at 23.

36 The Superintending Examiner appeared before the Tribunal.

37 (1940) 58 RPC 21 at 23-24 (emphasis added). This passage is cited in Commissioner of Patent: v Microcell (1959) 102 CLR 232 at 248.

38 There was no express power to examine for inventive step.

39 Section 86(3).

40 (1959) 102 CLR 232.

41 Ibid at 233.

42 (1959) 102 CLR 232 at 244. This was by reason of the defined term “invention” being referred to ins 41(b).

43 (1959) 102 CLR 232 at 246-247. This was a proposition drawn from Terrell on Patents (8th ed), 213-214.

44 (1930) 48 RPC 185.

45 (1910) 10 CLR 701.

46 (1910) 10 CLR 701 at 713-714. Although it is implicit in the majority's judgment in Rogers that Isaacs J's view was rejected, the majority judgment in Rogers does not address the point directly.

47 (1995) 132 ALR 117 at 127 per Dawson and McHugh JJ.

48 (1959) 102 CLR 232 at 244-245, citing with approval McDonald and Another v Commissioner of Patents (1913) 15 CLR 713 where at 717 the Court states “it is only in a very clear case,where it is obvious that a patent can not be granted, that the Commissioner should reject an application altogether”.

49 (1959) 102 CLR 232 at 250.

50 Ibid at 249. A good example is in fact provided by the High Court's subsequent decision inNational Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252, discussed immediately below.

51 (1959) 102 CLR 232 at 249.

52 (1959) 102 CLR 252.

53 In construing the powers of the examiner under the 1952 Act, the High Court followed an approach similar to that taken by it in Commissioner of Patents v Microcell in construing the 1903 Act. Section 47 of the 1952 Act required an Examiner to report on an application's compliance with the Act. Reference to “application” in s 47 led to the requirement, under s 34(1), that the application be for a “patent”. Section 6 of the 1952 Act defined “patent” to mean “letters patent for an invention”, and “invention” to mean “any manner of new manufacture ... within section 6 of the Statute of Monopolies”.

54 (1959) 102 CLR 252 at 260. Compare the approach of Isaacs J in Rogers v Commissioner of Patents (1910) 10 CLR 701 at 713-714.

55 The grounds of revocation under the 1952 Act were no longer referred to elliptically as those which were previously available at common law, but rather were expressly enumerated under s 100(1). This had become the position under the UK legislation by amendment to the 1907 Act some twenty years earlier; by section 3 of the Patents and Designs Act 1932 (UK), section 25(2) of the 1907 Act was substituted for 16 express grounds of revocation, together with the precautionary words “any other ground upon which a patent might ... have been repealed by scire facias”. It has been judicially stated that this UK amendment was a codification of those grounds previously considered to have been available at common law: see The Mu/lard Radio Valve Co. Ltd v Philco Radio and Television Corporation of Great Britain Ltd and Others (1936) 53 RPC 323 at 339, where Lord Macmillan stated that the grounds “included all the stereotyped pleas long familiar in patent practice which have now been given statutory recognition”. See also Diplock LJ in Bristol-Meyers Co v Beecham Group Ltd [1974] AC 646 at 679 where his Lordship stated that the listed grounds for revocation “have been consistently treated as intended to do no more than codify ... those grounds of invalidity which had previously been formulated only in judicial decisions”; and Minnesota Mining and Manufacturing Company v Beiersdorf (1980) 144 CLR 253 at 289 per Aickin J.

56 (1959) 102 CLR 252 at 261-268.

57 Ibid at 268-277.

58 Ibid at 268.

59 Ccom v Jiejing (1994) 28 IPR 481 at 514 (Full Court of the Federal Court); NRDC (1959) 102 CLR 252 at 277.

60 (1959) 102 CLR 252 at 268.

61 Ibid at 264-265.

62 (1959) 102 CLR 232 at 250.

63 Ibid at 250.

64 Ibid at 245.

65 (1930) 48 RPC 185 at 186 per Stafford-Cripps S-G.

66 Commissioner of Patents v Microcell (1959) 102 CLR 232 at 248.

67 Ibid at 245.

68 (1936) 42 ALR 131.

69 Ibid at 131-132 per Latham CJ.

70 (1995) 132 ALR 117.

71 (1992) 24 IPR 1 (Wilcox J) and (1993) 44 FCR 239 (Full Court of the Federal Court).

72 (1992) 24 IPR 1 at 16-17 where the trial judge, Wilcox J, sets out claim 1.

73 Ibid at 13.

74 Note the omission of “new” in paragraph (a). Compare the “invention” definition in Schedule 1.

75 Note the inclusion of “new”. Compare section 18(1)(a).

76 For novelty the basis of comparison is found ins 7(1), and the definitions in Schedule 1 of “prior art information” and “prior art base”. For inventive step, the basis of comparison is found in ss 7(2) and (3), and the same definitions of “prior art information” and “prior art base”.

79 Wilcox J's judgment noted that “obviousness was not pressed” by Mirabella, the party seeking revocation ((1992) 24 IPR 1 at 4) and Wilcox J found in favour of Philips, the patentee, on novelty (ibid at 38-40).

78 (1992) 24 IPR 1 at 28.

79 Ibid.

80 Ibid at 26, quoting Ricketson, The Law of Intellectual Property (1984).

81 Ibid at 29, citing Valensi and Another v British Radio Corporation Ltd [1973] RPC 337 at 377.

82 (1992) 24 IPR 1 at 30.

83 Ibid.

84 Ibid.

85 Ibid at 32.

86 Ibid.

87 Ibid.

88 Ibid at 35, 36.

89 Ibid at 35.

90 (1993) 44 FCR 239 at 264-265 per Lockhart J (Northrop J agreeing).

91 Ibid at 271.

92 Ibid at 272.

93 Ibid.

94 Ibid at 273-274.

95 Ibid at 285. As already noted, the claim was not limited to a “compact” lamp.

96 Ibid at 281.

97 Ibid.

98 Ibid.

99 Ibid.

100 Ibid at 282.

101 Ibid at 281.

102 Ibid at 282.

103 Ibid at 283.

104 (1992) 24 IPR 1 at 35, 36.

105 Badische Anilin Und Soda Fabrik v Levinstein (1887) 4 RPC 449 at 463.

106 (1980) 144 CLR 253 at 287-292.

107 Under s 7(2) of the 1990 Act, information in addition to that within the common general knowledge of a person skilled in the relevant art may be taken into account in determining whether claimed subject-matter involves an inventive step. In particular, information in a document publicly available anywhere in the world and information made publicly available by the doing of an act in Australia may be considered, so long as it is information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant. See Patents Act 1990 (Cth) s 7(3) and the Schedule 1 definitions of “prior art information” and “prior art base”.

108 (1993) 44 FCR 239 at 271.

109 (1959) 102 CLR 252 at 264-265.

110 Adopting particular approaches to construction for particular circumstances is not/ unfamiliar to the law. Contract law has long applied the principle of contra proferentem ini relation to terms purporting to limit or exclude liability. Similarly, different approaches tc statutory interpretation apply to penal and civil statutes. Further, already in patent law a' particular “purposive” construction of claims has been suggested when dealing with infringement issues: Catnic Components Ltd and Another v Hill & Smith Ltd [1981] FSR 60.

111 (1959) 102 CLR 232 at 245.

112 Presto Gear case and Components Company Ltd v Orme, Evans & Company Ltd (1901) 18 RPC 17 at 23, per Lord Alverstone.

113 (1993) 44 FCR 239 at 264-5, per Lockhart J (Northrop J agreeing).

114 (1995) 132 ALR 117 at 124.

115 (1992) 24 IPR 1 at 31.

116 (1993) 44 FCR 239 at 263.

117 Ibid at 270-271. This accords with the view taken by Hill J in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd and Another (1993) 26 IPR 171 at 189-190 and that taken by a subsequent Full Court of the Federal Court in Ccom v Jiejing (1994) 28 IPR 481 at 509.

118 (1993) 44 FCR 239 at 282.

119 (1995) 132 ALR 117 at 122.

120 Ibid at 123.

121 Ibid at 124.

122 Above at p 17. Also Ccom v Jiejing (1994) 28 IPR 481 at 510.

123 Understood in this way, the opening words of section 18, and the effect of section 18(l)(a could be paraphrased as follows:

“A patentable invention, so far as claimed in any claim;

[Effect of the opening words of Section 18(1)]

must be for an “invention” - that is, it must not disclose an absence of inventive ste on the face of the specification; and

[Effect of Section 18(1)(a)]

must be for a manner of manufacture - that is, it must be within the breadth of th concept developed under s 6 of the Statute of Monopolies (the 'central question' i NRDC).”

124 (1995) 132 ALR 117 at 124.

125 (1996) 34 IPR 256.

126 Ibid at 271.

127 Ibid at 271-272.

128 As at the date of writing, the appeal had not been heard.

129 (1995) 132 ALR 117 at 127.

130 This approach echoes that taken by Isaacs J in Rogers v Commissioner of Patents (1910) 1 CLR 711 at 713-714.

131 (1995) 132 ALR 117 at 126-131.

132 Ibid at 131.

133 For example, a specification may disclose a known use of material which can be shown t make the material suitable for the claimed use, yet the opponent is unable to adduce an (other) evidence to establish this as prior use. It may well be that Mirabella saw itself being in this very position. Mirabella did not press lack of inventive step at trial: Philips Mirabella (1992) 24 IPR 1 at 4. A. Bennett SC, counsel for Mirabella at trial and on bot

134 (1995) 132 ALR 117 at 131

135 Sections 45(1)(b) and 18(1)(b).

136 The former (section 18{l)(a)) referring to a “manner of manufacture” and the latt (Schedule 1) referring to a “manner of new manufacture”.

137 {1995) 132 ALR 117 at 122.

138 Ibid at 245.