-- JonathanMo - 14 Sep 2015

What is a patent?

A patent is a legal document that gives an inventor exclusive right to exploit their invention for a specified period of time, and to authorise other parties to do so or exclude them from doing so [PA s.13]. Section 18(1) of the PA defines a patentable invention as:

'Manner of manufacture'

The meaning of 'manner of new manufacture' is thus defined by reference to the Statute of Monopolies, and has been interpreted to require either:

• a product - which can be produced by following the instructions in the patent specification
• a specific use
• a process - which would be protected when used with any product; however, it would not protect a product that could be manufactured by that process but is not
• a product-by-a-process - which would cover only those products made by the process described in the patent specification. Therefore, it would cover the drug, but only when made by a specified process.

A patent application may include claims of two or more of these categories. But whether the patent covers a product, a process, a use or all of these, the invention normally must have a physical embodiment or its application must be capable of leading to one.

The first major Australian case on this issue was National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 (NRDC case). The High Court held (at 276) that 'a "product" in relation to a process is only something in which a new and useful effect may be observed ... the "something" need not be a 'thing' in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or alteration, may be observed.'. In respect of the distinction between a discovery and an invention, it was argued that a discovery in itself is not patentable, but the translation of that discovery into something new and useful supplies the relevant patentability factor. In the NRDC case, the invention was patentable because 'the relevant property of the herbicide was not previously known and the discovery led to a new application resulting in a manner of new manufacture'.

In contrast, see Commissioner for Patents v Microcell Ltd [1959] HCA 71; (1959) 102 CLR 232, in which a patent application for a self-propelled rocket projector comprising a tube of reinforced plastic was refused on the grounds that the invention was merely for a new use, since the tube shape and the properties of the plastic were already known.

'Prior art base'

The 'prior arts base' generally means the common general knowledge of those skilled in the relevant or associated fields or trades.

See Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd [1980] HCA 9; (1980) 144 CLR 253. According to Aickin J:

See also Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; 194 ALR 485:

The Patent Office Practice Note of 1991 provides the following examples of what might constitute evidence as to the state of the common general knowledge - standard texts and handbooks, dictionaries of standard English, selected technical dictionaries, concession in the patent application under examination, various other publications, patent specifications, where those in the field are in the habit of consulting these. There is also a definition of 'prior art base' in the PA, Schedule 1 Dictionary - in summary, information contained in a document or specification.

The prior art base for inventiveness includes documents anywhere in the world, but the ultimate test is still whether a skilled person in the relevant field in Australia would have known about them.

'Novel'

'Novel' generally means the invention should be recent and original, but most importantly it should not already be in the public domain.

The invention must be disclosed in the application in such a detailed way that would enable a skilled technician to make and use it. The novelty of an invention is to be judged against the background of the 'prior art base' relating to the area of technology [PA s.7(1)]. The test for novelty is the 'the reverse infringement test', that is 'the same as that for infringement, and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement ... Thus, for example, the fact that the invention as claimed contains variations from an earlier publication will not preclude anticipation being found unless those variations show ingenuity and inventiveness' (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228 at 235).

But also see Williams v Nye (1930) 47 RPC 289 at 321, where it was held that an invention may draw on existing elements but still be regarded as novel:

See the discussion in Advanced Building Systems v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19; (1993) 26 IPR 171; (1998) 194 CLR 171. Note the 'threshold' test for patentability proposed in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1994) 183 CLR 655, where it is apparent from the face of the application itself that there is no element of inventiveness in the subject matter applied for, the application fails the threshold test and should be refused without further examination.

A description in a publication, even in an obscure journal or report, will be sufficient to destroy novelty providing it is one that is 'publicly available'. See Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 35 ALJR 212 at 218:

Even when similar patent applications are filed in quick succession, so that one secures an earlier priority date, but has not yet been published when the second application is lodged , the PA will still invalidate the second on the ground of lack of novelty (see definition of 'prior art base' in PA Sch 1).

However, certain kinds of prior use are to be disregarded for the purposes of deciding whether there is a lack of novelty or inventiveness [PA s.24]. These include showing the invention at a 'recognised exhibition', publication in a paper read before a 'learned society', and the working of the invention in public within 12 months before the priority date where this was for the purpose of trial of the invention. Disclosure by a third party in breach of a confidential relationship with the applicant will not destroy novelty, provided the information concerning the invention was derived directly from the applicant and the patent application is made within 12 months [PA s.24(1)(b)].

Accordingly, the patent applicant must exercise care on how the invention might be used before the lodgment of the patent application. See Longworth v Emerton [1951] HCA 45; (1951) 83 CLR 539. Prior use can arise as a result of use by totally unrelated parties in circumstances of which the applicant is unaware: see Windsurfing International Inc v Petit [1984] 2 NSWLR 196.

'Inventive step'

While the testing of novelty is essentially a quantitative matter (has sufficient information been previously disclosed so as to anticipate the applicant's invention?), the inventive step requirement demands a more qualitative judgment'; that is, whether the invention, although new, is sufficiently different from what has gone before to embody an inventive step. There is a presumption of inventiveness under section 7(2) and (3) of the PA:

an invention is to be taken to involve an inventive step when compared to the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim [PA s.7(2)].

See Elconnex Pty Ltd v Gerard Industries Pty Ltd [1992] FCA 556; (1993) 25 IPR 173.

It is not necessary for the specification to say everything about the invention if what is not said can be supplied by the skilled worker for himself: see the statement in Rescare Ltd v Anaesthetic Supplies (1992) 25 IPR 119 at 143. The requirement of utility therefore overlaps with the requirement of sufficiency of description.

In the case of an invented product, the non-obvious/inventive step requirement does not require it to be made by a novel method. In the case of an invented process, the patent can cover a non-obvious way of making something already known (that is, previously invented or discovered).

'Useful'

'Useful' generally means some form of industrial application. This does not mean that the invention be commercially useful, but that it produces the result which the inventor has claimed in the application. See RehmPty Ltd v Websters Security Systems (International) Pty Ltd (1988) 11 IPR 289.

Thus mental processes or ideas, theories, scientific formulas or information itself are not sufficiently useful or industrially applicable to be patentable. Similarly, discoveries cannot be patented. See Philips v Mirabela (1994) 183 CLR 655; see also Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 66 FCR 151.

'Secret use'

The requirement of 'secret use' means that a patent application is invalid where the invention has been 'secretly used' by the applicant or by others with authority before the priority date [PA s.18(1)(d)]. An inventor who wishes to exploit their invention secretly will therefore need to rely on breach of confidence rather than patent protection. There are, however, a number of exceptions or permitted secret uses set out in section 9 of the PA, of which the most important is a use other than for the purpose of trade or commerce. See Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079; (2001) 52 IPR 75 at 117; [2001] FCA 1079. The manufacturing of goods alone is not secret use, but selling or accepting an order for the goods would invalidate the patent.