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Federal Court of Australia |
COURT
IN THE FEDERAL COURT OF AUSTRALIACATCHWORDS
Patents - Patent applications - Opposition to grant - Grounds of opposition - Relationship between invention and novelty in respect of the ground of want of novelty.Patents Act 1952 - ss. 40, 59
Arnott v Dunlop Pneumatic Tyre Co. Ltd. 22 RPC 105
Blakey v. Latham (1889) 6 RPC 184
Britain v Hirsch (1888) 5 RPC 226
British United Shoe Co. v Fussell (1908) 25 RPC 651
British United Shoe Machinery Company Ltd. v A. Fussell & Sons Ltd. (1908) 25 RPC 631
Broadbent v Davies [1916] HCA 22; (1916) 21 CLR 253
C. Van Der Lely NV v Bamfords Ltd. (1963) RPC 61
Cannington v Nuttall (1871) LR 5 HL 205
Clark v Adie (1877) 2 AC 315
Cole v Saqui (1889) 6 RPC 41
Darcy v Allin (1602) Noy R 173; [1669] EngR 186; 1 Web Pat Cas 1; 74 ER 1131
Dennison Manufacturing Co. v Monarch Marking Systems Inc. [1983] FCA 159; (1983) 66 ALR 265
Edison Bell Phonograph Corporation v Smith (1894) 11 RPC 389
Flour Oxidising Co. v Carr & Co. (1908) 25 RPC 428
Gadd v Mayor of Manchester (1892) 9 RPC 516
Gillette Safety Razor Company v Anglo-American Trading Company Ltd. (1913) 30 RPC 465
Graham v John Deere Co. of Kansas City [1966] USSC 22; 383 US 1
Graham Hart (1971) Pty. Limited v S.W. Hart & Co. Pty. Limited [1978] HCA 61; (1978) 141 CLR 305
Griffin v Isaacs (1938) 12 ALJ 169
Griffin v Isaacs (1942) 12 OJP 739
Gum v Stevens (1924) VLR 1
Gum v Stevens [1923] HCA 48; (1923) 33 CLR 267
Harwood v Great Northern Railway Co. [1865] EngR 708; (1865) 11 HLC 654
Henry Berry & Company Pty. Ltd. v Potter [1924] HCA 43; (1924) 35 CLR 132
Hill v Thompson [1818] EngR 2; (1818) 8 Taunt 375
Hills v Evans [1862] EngR 365; (1862) 6 LT 90
Hotchkiss v Greenwood 52 US 615 (1850)
HPM Industries Pty. Limited v Gerard Industries Limited [1957] HCA 47; (1957) 98 CLR 424
Hume Pipe Company (Australia) Limited v Monier Industries Limited (1943) 13 OJP 575
In Hastings' Patent (1561) Noy R 182; 1 Web Pat Cas 6
Lancashire Explosive Co. Ltd. v Roburite Explosives Co. Ltd. (1895) 12 RPC 470
Lane Fox v Kensington Lighting Company (1892) 9 RPC 416
Longbottom v Shaw (1891) 8 RPC 333
McGlashan v Rabett [1977] FCA 14; (1909) 9 CLR 223
Martin Engineering Company v Trison Holdings Pty. Ltd. (1988) 81 ALR 543
May v Higgins [1916] HCA 8; (1916) 21 CLR 119
Meyers Taylor Pty. Limited v Vicarr Industries Limited [1977] HCA 19; (1977) 137 CLR 228
Minnesota Mining and Manufacturing Co. v Beiersdorf Australia Limited [1980] HCA 9; (1978) 144 CLR 253
Montecatini Edison S.p.A. v Eastman Kodak Co. (1971) 45 ALJR 593
Moore and Hesketh v Phillips [1907] HCA 22; (1907) 4 CLR 1411
Morgan & Co. v Windover & Co. (1890) 7 RPC 134
Morris v Young (1895) 12 RPC 455
Muntz's Patent (1846) 2 Web. Pat. Cas 119
Morris v Young (1895) 12 RPC 455
Murray v Clayton (1872) LR 7 Ch App 570
Newton v The Grand Junction Railway Co. [1850] EngR 32; (1846) 5 Exch 331
Nicholl v Swears (1893) 10 RPC 240
Olin Corporation v Super Cartridge Co. Pty. Ltd. [1977] HCA 23; (1977) 51 ALJR 525
Otto v Linford (1882) 46 LT(NS) 35
Plimpton v Malcolmson (1876) 3 Ch D 531
R. v Wheeler (1819) 2 B Ald. 345
Ralston v Smith [1865] EngR 268; (1865) 11 HLC 223
Re Application for Letters Patent by Fabrique Swisse De Crayons
Caran D'Ache SA (1946) 16 OJP 2811
Re Max Muller's Patent (1907) 24 RPC 465
Riekmann v Thierry (1897) 14 RPC 105
Stamp v W.J. Powell Pty. Ltd. [1918] HCA 14; (1918) 24 CLR 339
Sunbeam Corporation v Morphy-Richards (Australia) Pty. Limited (1961) 35
ALJR 212
Tatham v Dania (1869) Griffins Patent Cases 213
The Clothworkers of Ipswich Case (1615) Godb R 252; [1653] EngR 462; 78 ER 147
The Edison Bell Phonograph Corporation Ltd. v Smith (1894) 11 RPC 389
The Wellcome Foundation Ltd. v VR Laboratories (Aust.) Pty. Ltd. [1981] HCA 12; (1981) 148 CLR 262
Universal Oil Products Co. v Monsanto Co. (1972) 46 ALJR 658
Vickers, Sons & Co. Ltd. v Siddell (1890) 7 RPC 292
William Arnott Limited v Peak Frean & Co. Ltd. (1935) 9 ALJ 73
Wilson v Wilson Bros. Bobbin Coy. Limited (1911) 28 RPC 733
Windsurfing International Inc. v Petit (1984) 2 NSWLR 196
HEARING
MELBOURNE Counsel for the Appellant : Mr. N.H.M. Forsyth Q.C. and Mr.
R.M. GarrattCounsel for the Respondent : Mr. R.C. Macaw
Solicitors for the Appellant : Arthur Robinson & Hedderwicks
Solicitors for the Respondent: Freehill Hollingdale & Page
ORDER
The appeal be dismissed.The respondent's costs of the appeal be paid by the appellants.NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
DECISION
The primary question in this appeal, which is brought by leave, from the judgment of the Supreme Court of Victoria (King J.), is whether an invention claimed in a patent specification for an "apparatus for assembling ladder-type frames" lacked novelty before the priority date of the relevant claims, namely, 30 May 1977. A subsidiary question also arises as to whether the complete specification complies with the requirements of s. 40 of the Patents Act 1952 ("the Act").2. The respondent, Bailey Aluminium Products Pty. Ltd., applied for the grant of a standard patent by application number 517200. Opposition was lodged by the appellant, R.D. Werner & Co. Inc., against the grant of the patent. A delegate of the Commissioner of Patents decided on 5 July 1984 that the opposition be dismissed. The appellant then appealed to the Supreme Court of Victoria from the decision of the Commissioner's delegate. The appeal was heard by King J. who dismissed the appeal and ordered the appellant to pay the costs of the respondent of the appeal. The appellant appealed to this Court from the Supreme Court's judgment.
3. The grounds of opposition relied on before the Commissioner were prior publication (para. 59(1)(e) of the Act), obviousness (para. 59(1)(h)) and want of novelty (para. 59(1)(g)). Prior publication was not relied before the Supreme Court or this Court. Obviousness was pressed before the Supreme Court but abandoned before this Court. The principal grounds relied on before the Supreme Court and the only grounds on which the appellant relied in this Court were lack of novelty with the addition of certain contentions under s. 40.
4. It is necessary to begin with an examination of the specification. The
early paragraphs of the specification describe the prior
art in these terms:
"Ladders fabricated from aluminium components are5. This is followed by the consistory clause. The specification then describes by reference to drawings one embodiment of the invention claimed in the specification. This is followed by the preferred embodiment of the invention. Ten Claims are then made but it is common ground that reference need be made only to Claims 1 and 3.
very common. These normally comprise tubular
aluminium transverse members or rungs which extend
between aluminium channel-shaped side members or
stiles. The rungs are adapted to pass through
spaced apertures in the stiles and are provided
with annular flanges inwardly of each end and
which abut against the inside face of the stiles.
The end portions of the rungs may be swaged to
clamp the stiles against the annular flange, or
form (sic) flanged end plugs may be forced through
spaced apertures in the side stile into the
tubular rung. The interference fit between the
plug and the rung provide the necessary
connection. These and other like joints are
hereinafter referred to as compression joints.
Other end connections are also used and various
rung configurations are used depending on the
intended application of the ladder or frame.
While most ladders are made to a relatively
standard width, the overall width does vary. The
present apparatus used to effect the compression
joint connections betwen the stiles and the rungs
is manually controlled and most often includes a
fixed anvil and a movable plunger for applying the
pressure for either the swaging or other
connection operation. For speed of production,
such apparatus are usually adapted to effect the
opposite end connection simultaneously, and
accordingly, because of the use of fixed spaced
anvils the apparatus has to be set up to suit the
width of the particular ladder or frame being
produced. After the apparatus has been set up for
a particular frame width, it is not suitable for
use with similar frames having a different overall
width. Furthermore, such apparatus cannot be
easily modified to suit different end connection
arrangements, or side rails and rungs having
different cross-sectional configurations.
Accordingly, it is an object of the present
invention to provide apparatus for assembling
ladder-type frames which will overcome the above
disadvantages and which will prove reliable and
efficient in operation."
6. The specification in suit (to which I shall refer as the Bailey specification) relates to an apparatus for assembling frames of the kind having transverse members extending between opposite side members, and, in particular, ladder frames comprising a plurality of ladder rungs and a pair of ladder stiles. The Bailey apparatus, as described in the specification, is arranged to form compression joints at opposite ends of each rung to connect each rung to the opposite stile. Each compression joint forming assembly is identical and includes a base member which is slidable on the apparatus frame in a direction generally parallel to the ladder rung. The base member carries an anvil assembly and a swageing head assembly. The anvil assembly is in two parts, the first of which is fixed to the base member for movement with it. The other part, being the upper part, is mounted to the apparatus frame for vertical movement towards and away from the first lower part under the influence of an hydraulic ram and is engageable with the lower part to move with the lower part and slidable base member. The swageing head assembly includes in its preferred form a double acting ram mounted on the slidable base member. The ram has a piston rod or shaft provided at one end, and a swageing tool or die projects from the opposite end of the ram to be engageable with a fixed backstop to cause retraction of the anvil assembly and base member after forming the joint. When all the rams are put in motion the anvil parts come together about the rung and the swageing tools move inwards so that they engage the ends of the rung which act as stops. Further extension of the rams contained in the swageing heads causes outward slidable movement of the base members and the anvil parts so that the anvil parts and swageing tools cooperate to swage the ends of the rung about the ladder stile or rung. After the joints have been formed the swageing head rams are retracted so that the piston rods or shafts on one end of the ram engage the fixed backstops, causing the anvil parts and their associated base members to move away from the ladder stiles. The upper anvil parts are then raised to permit removal of the swaged rung and acceptance of the next rung.
7. Claim 1 of the specification is in the following terms:
"1. Apparatus for assembling frames of the typeClaim 3 is in these terms:
having transverse members extending between side
members and connected thereto at each end by a
compression joint said apparatus including a main
frame for supporting a pair of connection forming
assemblies, each adapted to co-operate with an end
of a respective said transverse member adjacent a
respective said side member, each said connection
forming assembly including support means slidably
mounted on said main frame for movement in a
directly parallel to said transverse member, an
anvil assembly adapted to be located inwardly of
said side member and mounted on said support means
for movement therewith, said anvil assembly being
adapted to support a said transverse member
adjacent its said end; compressing means adapted
to be located outwardly of said side member said
compressing means being mounted on said support
means and including a compressing member movable
relative to said support means and towards and
away from said anvil assembly, the arrangement
being such that in use said compressing member
moves initially inwardly towards said anvil
assembly and said transverse member whilst said
support means remains stationary, said compressing
member subsequently engages with said transverse
member to cause outward sliding movement of said
support means and said anvil assembly whereupon
said compressing member and anvil assembly
co-operate with said end to form said compression
joint."
"3. Apparatus according to Claim 2 wherein said8. The appellant relied upon the prior publication in Australia of United States Patent Specification No. 3,140,540 as the main basis of the contention of lack of novelty. This is known as the Greenman patent. It was published in Australia on 30 October 1964.
ram includes a fluid actuated shaft adapted to be
operatively reciprocated in a direction parallel
to said transverse member, said compressing member
being supported at one end of said shaft and
wherein there is provided a back-stop on said main
frame adapted to co-operate with the end of said
shaft remote from said compressing member, whereby
when said compressing member is retracted from its
operative compression attitude said remote end
will abut gainst said back-stop and cause said
support means and said anvil assembly to be moved
parallel to said transverse member and away from
the respective said side member."
9. It is common ground that the apparatus described in the Greenman specification has in it all but one of the elements of claim 1 of the Bailey specification, namely, that in the Bailey apparatus as defined by Claim 1 of the Bailey specification, the support means for the connection forming assemblies which operate at both ends of the rung are both slidably mounted, whereas in the Greenman apparatus as defined in the Greenman specification one support means for a connection forming assemblies is fixed and the other is slidably mounted.
10. The first question is whether the invention claimed in the patent in suit
lacked novelty before 30 May 1977. The test for want
of novelty is whether an
alleged anticipation is the same in substance as the claim in suit. Aickin J.
said in Meyers Taylor Pty.
Limited v Vicarr Industies Limited [1977] HCA 19; (1977) 137 CLR
228 at 235:
"The basic test for anticipation or want of novelty11. Hence, the test is commonly referred to as the reverse infringement test. This test is reflected in the formulation by Lord Westbury in Hills v Evans [1862] EngR 365; (1862) 6 LT 90 at 93 and in the early Australian cases of McGlashan v Rabett [1977] FCA 14; (1909) 9 CLR 223 per Griffith C.J. at 227-8 and Broadbent v Davies [1916] HCA 22; (1916) 21 CLR 253 per Griffith C.J. at 261-2 and per Isaacs J. at 263. See also Windsurfing International Inc. v Petit (1984) 2 NSWLR 196 per Waddell J. at 222-3.
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 ..."
12. The test was formulated by Aickin J. as one which generally can be applied; but in my opinion it goes too far to find, as counsel for the appellants submitted we should, that the reverse infringement test is merely a preliminary test to determine want of novelty. I am inclined to accept as correct the argument of counsel for the respondent that his Honour formulated the test as one which generally can be applied in order to allow for cases where a question may arise as to the clarity of disclosure of a mere paper publication: see Hills v Evans [1862] EngR 365; (1862) 6 LT 90 at 93; Harwood v Great Northern Railway Co. [1865] EngR 708; (1865) 11 HLC 654 at 681[1865] EngR 708; , 11 ER 1488 at 1498-1499; Flour Oxidising Co. v Carr & Co. (1908) 25 RPC 428 at 457-459 and Olin Corporation v Super Cartridge Co. Pty. Ltd. [1977] HCA 23; (1977) 51 ALJR 525 per Stephen, Mason JJ. at 536. See also Blanco White, Patents for Inventions, 4th ed. (1974), para. 4-102.
13. By applying the test of reverse infringement the question in the present case is whether the alleged anticipation of Greenman would, assuming the validity of the Bailey patent, constitute an infringement of Bailey.
14. The primary contention of counsel for the appellant was that inventiveness or ingenuity is a necessary element in novelty so that an objection to the grant of a patent on the ground of want of novelty necessarily involves an inquiry as to inventiveness. An alternative contention was advanced that, even if inventiveness is not an essential component of novelty, an objection for want of novelty permits an inquiry as to want of inventiveness.
15. It is necessary to consider therefore the extent to which the assertion by an objector to the grant of Letters Patent that the specification lacks ingenuity or inventiveness by reference to an earlier specification can be raised when considering the objection of want of novelty.
16. The Act permits objection to be taken to the grant of a patent on the ground of want of novelty (para. 59(1)(h)) and on the ground of obviousness (para. 59(1)(g)). Obviousness, lack of subject matter or absence of inventiveness or ingenuity are expressions well known to patent law and, broadly speaking, each is interchangeable with the other.
17. These two grounds of objection are in the following terms:
"(g) that the invention, so far as claimed in any18. These grounds of objection are expressed consistently with the language of the corresponding grounds of revocation, namely, lack of obviousness (para. 100(1)(e)) and want of novelty (para. 100(1)(g)), though not in identical terms.
claim, was obvious and did not involve an
inventive step, having regard to what was known or
used in Australia on or before the priority date
of that claim;
(h) that the invention, so far as claimed in any
claim, was, before the priority date of that
claim, otherwise not novel in Australia; ..."
19. Whether novelty and invention are essentially or substantially the same, intrinsically different or overlap in some measure are questions which have attracted much difference of opinion between judges and authors of textbooks and articles. The resolution of these questions lies largely in the history of patent law.
20. The grant of Letters Patent was an exercise by the Sovereign of the royal
prerogative which ultimately came under the control
of the English Parliament
in 1624 by the passing of the Statute of Monopolies (21 Jac. I, C.3). The
statute declared monopolies
in general to be bad except for the declaration of
"new manufactures" by s. 6 which provided:
"Provided also, and be it declared and enacted,21. Section 6 is still the basis of the patent law of the United Kingdom and other countries including Australia. It is declaratory of the common law evolved by the judges in earlier times: see Darcy v Allin (1602) Noy R 173[1669] EngR 186; , 1 Web Pat Cas 1, 74 ER 1131; In Hastings' Patent (1561) Noy R 182; 1 Web Pat Cas 6; The Clothworkers of Ipswich Case (1615) Godb R 252[1653] EngR 462; , 78 ER 147; Frost, Patent Law and Practice, 3rd ed, 1906, Vol I, pp 1-3.
that any declaration, before mentioned, shall not
extend to any letters patent and grants of
privilege ... hereafter to be made of the sole
working or making of any manner of new
manufactures within this realm, to the true and
first inventor and inventors of such manufactures,
which others at the time of making such letters
patent and grants shall not use, so as also they
be not contrary to the law or mischievous to the
state by raising prices of commodities at home, or
hurt of trade, or generally inconvenient. ..."
22. Although many statutes have since been passed dealing with patents for
inventions they have in the main dealt with matters of
administration and
machinery for the grant, extension, revocation, surrender and infringement of
patents. What constitutes a patent
for invention is still generally determined
by s. 6 of the Statute of Monopolies. For example the Act defines an
"invention" by
reference to s. 6 in these terms:
"'invention' means any manner of new manufactureSection 35 of the Act which prescribes the integers of an application for a patent states that:
the subject of letters patent and grant of
privilege within section 6 of the Statute of
Monopolies, and includes an alleged invention."
"(1) An application for a patent -23. A list of relevant statutes in the United Kingdom, up to 1913, was conveniently included by H. Fletcher-Moulton in The Present Law and Practice Relating to Letters Patent for Inventions, 1913, p 2 (note (e)).
(a) shall be in respect of a manner of new
manufacture the subject of letters patent and
grant of privilege within section 6 of the Statute
of Monopolies. ..."
24. It is essential under the Statute of Monopolies, and the Act, that every invention capable of sustaining a grant of letters patent must be new at the time the grant is made. This derives from the terms of the Statute of Monopolies which declares that all letters patent are invalid except those which are for "the sole working or making of any manner of new manufactures". The question to be considered is the meaning of those words which are echoed in the definition of invention in s. 6 of the Act.
25. Before the Statute of Monopolies, the common law required that three conditions be satisfied if letters patent for inventions were to be valid. The same conditions were required by the Statute of Monopolies and are still required by the Act. The three conditions that must be satisfied are (i) the subject of the grant must be a manner of manufacture; (ii) it must be a manner of new manufacture; and (iii) the grantee must be the true and first inventor.
26. The courts have placed a wide interpretation upon the words "manner of
manufactures" in the Statute of Monopolies, which the
definition of invention
in s. 6 of the Act describes as "manner of new manufacture", treating
manufacture as the process of manufacture
rather than its object or the thing
produced by it. An early and useful attempt at definition is that of Abbott
C.J. in R. v Wheeler
(1819) 2 B Ald 345 at 350, 106 ER 392 at 394-395:
"But no merely philosophical or abstract principleHowever, no comprehensive definition of the expression has been or could be attempted by the courts: Blakey v Latham (1889) 6 RPC 184 per Lopes L.J. at 189.
can answer to the word manufactures. Something of
a corporeal and substantial nature, something that
can be made by man from the matters subjected to
his art and skill, or at the least some new mode
of employing practically his art and skill, is
requisite to satisfy this word."
27. The expression extends to the method of making something in a new manner
and to new results of principles or methods carried
into practice. Expressed
another way, it includes an invention which is an addition to prior methods of
manufacture and not the
original manner of manufacture itself. The expression
includes a physical process of producing a thing or a thing for the production
of another thing. An example of the latter is machine for the making of
bricks: Murray v Clayton (1872) LR 7 Ch App 570. There may be a valid patent
for a new combination of materials previously in use for the same purpose or
for a new method of applying
those materials: Hill v Thompson [1818] EngR 2; (1818) 8 Taunt
375 at 401[1818] EngR 2; , 129 ER 427 at 438. As Lord Westbury C.J. said in Ralston v Smith
[1865] EngR 268; (1865) 11 HLC 223 at 246:
"Your Lordships are well aware that by the large28. For a patent to be valid the invention must not only be a "manner of manufactures" within the meaning of the Statute of Monopolies, it must also be a manner of new manufacture, that is it must be novel. This means that the subject matter claimed must be new. It must not be something which has in fact been done or described before, and must not be a particular instance of an old manufacture. The test of novelty was expressed by Lord Hatherley L.C. in Cannington v Nuttall (1871) LR 5 HL 205 at 216 in these words:
interpretation given to the word 'manufacture', it
not only comprehends productions, but it also
comprehends the means of producing them.
Therefore, in addition to the thing produced, it
will comprehend a new machine, or a new
combination of machinery; it will comprehend a new
process, or an improvement of an old process."
"Few things come to be known now in the shape of29. A manner of manufacture to be patentable must involve invention. The word "invention" is not found in the Statute of Monopolies. Indeed, the definition in s. 6 of the Act incorporates by reference the essential integers of the word as defined by the courts since the Statute of Monopolies. The use and meaning of "invention" had been interpreted and applied by the courts even before the Statute of Monopolies was enacted. In Darcy v Allin, supra, it was held that a monopoly may lawfully be granted to any person who brings any new trade into the realm by his own wit or invention. In The Clothworkers of Ipswich Case, supra, it was said that a monopoly may be granted over a new invention. The Statute of Monopolies and subequent statutes incorporate or adopt the requirement that the grantee of letters patents must have exercised inventive ingenuity.
new principles, but the object of an invention
generally is the applying of well-known principles
to the achievement of a practical result not yet
achieved. And I take it that the test of novelty
is this: Is the product which is the result of
the apparatus for which an inventor claims letters
patent, effectively obtained by means of your new
apparatus, whereas it had never before been
effectively obtained by any of the separate
portions of the apparatus which you have now
combined into one valuable whole for the purpose
of effecting the object you have in view."
30. The terms "subject matter", "obviousness", "novelty" or "invention" are also not to be found in s. 6 of the Statute of Monopolies or subsequent statutory definitions in England or this country. Obviousness and novelty are expressions which are used in the Act but in a context to which I shall refer later. A study of the reported cases before and after the Statute of Monopolies discloses that until recently no sharp distinction was drawn between these expressions and that the questions of novelty and inventiveness were generally considered as part of the same essential requirements of a patent. As mentioned earlier, absence of subject matter or obviousness involve the same notion and the terms are often used interchangeably.
31. In one sense, to say that there must be an inventive step is another way of saying that there must be novelty in the subject matter of the claim. To determine whether or not a "manner of manufactures" was new the courts frequently applied the test whether the manner of manufacture was an invention. The absence generally of any, or any real, dichotomy between invention and novelty until comparatively recent times is explicable by the absence of any need to draw any such distinction. However, the concepts of novelty and of invention are intrinsically separate, though they do interact or overlap in some measure and although the distinction between the two is frequently one without any real difference in practice. Nor have the courts been consistent in distinguishing in terminology between novelty and subject matter.
32. It is plain from the cases that the subject matter of most patents is generally something which it is asserted has not been invented before, but represents an advance made on previous knowledge. The subject matter of the patent may, for example, be a combination patent or an addition to or improvement in a previous manufacture, provided the requisite degree of inventiveness can be established.
33. In some cases courts have approached the question whether the alleged
invention is novel by considering what advance on previous
public knowledge is
necessary to constitute an invention and then considering whether that advance
has in fact been made. In other
cases the courts have approached the matter
by considering what advance has in fact been made and then considering whether
that advance
is sufficient to constitute invention. In other cases it is
difficult to determine which of the two approaches has been adopted.
See for
example Gadd v Mayor of Manchester (1892) 9 RPC 516 per Lindley L.J. at 525;
Edison Bell Phonograph Corporation v Smith (1894) 11 RPC 389 per Lord Esher
M.R. at 398; Re Max Muller's Patent (1907) 24 RPC 465 per Parker J. at 479;
Wilson v Wilson Bros. Bobbin Coy. Limited (1911) 28 RPC 733 per
Fletcher-Moulton L.J. at 737; Fletcher-Moulton on Patents, p 22. The courts,
in considering whether invention or subject matter
exists, have historically
often performed the exercise by an enquiry as to novelty, and, in considering
novelty, often considered
the matter with respect to subject matter. See the
judgment of Waddell J. in Windsurfing International Inc. v. Petit (1984) 2
NSWLR 196.
34. There is nevertheless logically a fundamental distinction between the two
requirements for validity of a patent, a distinction
recognised in some of the
earlier cases though not in others, notwithstanding that the two were often
not treated separately. The
tendency in later decisions this century has been
to treat novelty and invention or subject matter as distinct matters: see
Graham
Hart (1971) Pty. Limited v S.W. Hart & Co. Pty. Limited [1978] HCA 61; (1978) 141 CLR
305 per Aickin J. at 330, with whose judgment Barwick C.J. agreed, and Sunbeam
Corporation v Morphy-Richards (Australia) Pty. Limited
(1961) 35 ALJR 212 per
Windeyer J. at 217-218. It must not be forgotten that the two are usually
closely connected in patent cases.
The Differences Between Novelty and Invention
Novelty
35. The condition that an invention to be valid subject matter for a patent
must be a new manner of manufacture was evolved by the
common law: see In
Hasting's Patent, supra; Darcy v Allin, supra, and The Clothworkers of Ipswich
Case, supra. The condition was
expressly enacted by the Statute of
Monopolies. The principle underlying it is plain, namely, that the grant of a
patent confers
a monopoly upon its holder which involves a surrender of public
rights by the Crown as guardian of the public good. The justification
for the
grant is that the patentee gives what is described in the cases as adequate
consideration in return. A new and useful invention
is regarded by the law as
such consideration. If the invention is new in the sense of not having been
done before, the grantee of
the patent gives a benefit to the public, in
disclosing the content of the invention. The public has been told something
which they
did not know before. But if what is claimed as an invention is not
in fact new the grantee has nothing to give the public; hence
if a patent were
granted the Crown would give all and receive nothing. It follows that an
invention which is already in the public
domain cannot be the subject of valid
letters patent. As Bacon V.C. said in Murray v Clayton (1872) LR 7 Ch App 570
at 574n:
"A petitioner for a patent alleges to the Crown36. Paragraph 59(1)(h) of the Act requires that the novelty be novelty "in Australia", that is novelty within the Commonwealth of Australia and its Territories to which the Act extends. This is the Australian equivalent of the requirement in the Statute of Monopolies that the novelty be novelty within the Realm.
that he has made a new and useful discovery. As a
just reward for such discovery, assuming the
allegation to be true, the Crown grants him the
exclusive use of his invention. If the allegation
turns out to be untrue, the grant becomes void."
37. To be patentable a manner of manufacture must not only be new, it must
also not be something which would naturally suggest itself
to anyone using an
invention already known from the use of that invention: Vickers, Sons & Co.
Ltd. v Siddell (1890) 7 RPC 292 at 305; Blakey v Latham, supra. A manner of
manufacture must for this purpose be something discovered which is not
included in
the already existing stock of public knowledge, and must be the
result of independent invention: Morgan & Co. v Windover & Co. (1890)
7 RPC
134 per Lord Herschell at 137. It cannot be "so easy that any fool could do
it", to use the words of Lord Esher M.R. in Edison
Bell Phonograph Corporation
v Smith, supra, at 398. In determining whether or not an invention is
patentable, the Court does not
enquire too finely or minutely into the degree
of ingenuity involved once it is satisfied that some independent invention has
been
applied. It is sufficient that there has been some substantial exercise
of the inventive faculty. Thus in Muntz's Patent (1846) 2 Web Pat Cas 119,
Lord Brougham observed that:
"Some of the most important inventions that haveSee also Otto v Linford (1882) 46 LT(NS) 35 at 39 where Jessell M.R. said:
been made by the result of experience and
ingenuity, applied to practical subjects, have
been made with the utmost simplicity, to the
greatly increased benefits of mankind."
"It may appear very simple when it is known - most38. Novelty and invention are not two interchangeable expressions for the same condition of validity, nor is either a branch of the other. They are distinct in the sense that they involve different notions and each is an essential integer for a valid patent. But the development of patent law since at least the seventeenth century, before and after the Statute of Monopolies, establishes that the two notions are not wholly distinct. In one sense to say that there must be some element of invention is only another way of saying that there must be novelty in what the grantee claims to have invented. Indeed, the word "invention" itself connotes something that is new. As I said earlier the courts frequently applied the test of invention as a means of determining whether or not a "manner of manufactures" was new. The reason the issues of novelty and intervention overlap to some degree lies in part in the absence of any need for clear dichotomy in the cases that come before the courts, where both questions are typically involved and where both questions usually arise from, if not the same, nevertheless a substantially similar factual base.
great inventions do appear to be very simple when
they are known."
39. The tendency in more recent cases this century has been to regard
invention and novelty as distinct and essential characteristics
or qualities.
Invention means more than novelty. Novelty alone will not sustain a patent.
There must in addition be some difficulty
overcome, some barrier crossed. The
distinction drawn by the courts between the two characteristics is illustrated
by reference
to some of the cases. In Britain v Hirsch (1888) 5 RPC 226
Cotton L.J. said:
"I do not agree with the view that when anything isIn Cole v Saqui (1889) 6 RPC 41 at 44 Lindley L.J. said that the grant of a patent requires that there must "be some ingenuity of that which is new." In Riekmann v Thierry (1897) 14 RPC 105 at 114 (arguendo) Lord Halsbury said at "(a) thing may be new, but unless it has some invention it is not patentable." A similar statement was made by Lord Davey at 121. See also to the same effect Nicholl v Swears (1893) 10 RPC 240; Gadd v Mayor of Manchester, supra, per Lindley L.J. at 524; Lane Fox v Kensington Lighting Company (1892) 9 RPC 416, (1892) 3 Ch 424.
done which has been done before, that is
sufficient to justify a patent being obtained for
it. In my opinion, it must be a question of
whether there is sufficient invention to justify a
monopoly being granted by the Crown in the
particular thing."
40. It was argued on behalf of the appellant that the presence of novelty necessarily requires the presence of invention so that, before the court can be satisfied that an invention is novel, it must be satisfied, not only that the invention is new, but that it possesses the requisite degree of inventive faculty. Reliance was placed upon a number of matters. First, the appellant pointed to the absence in many of the decided cases over the years of any distinction between the two qualities. I have already considered this issue and need say nothing further about it. Reliance was also placed upon certain decisions in this country, especially of the High Court, to which it will be necessary to refer in some depth. Some general observations should be made before dealing with those cases.
41. Until the Act came into operation on 1 May 1954 the grant of a patent could not be opposed on the ground of absence of subject matter or on the grounds of obviousness or lack of invention. That the invention was not novel was however available as a ground of objection under the Patents Act 1903 (s. 56(e)). The position is England was substantially the same where the relevant Acts were the Patents and Designs Act 1932 and the Patents Act 1949.
42. Since the Act came into operation, absence of invention (or obviousness) is not only a ground of revocation, as it has been at all material times, but in addition a ground of opposition. Counsel for the respondent argued that, as the Act specifies each of the two grounds of opposition and revocation, lack of inventiveness and lack of novelty, in separate paragraphs of the relevant sections (paras. 59(1)(g) and (h) as to opposition and paras. 100(1)(e) and (g) as to revocation) this suggested that the two notions are quite distinct. In my view this conclusion is not supported by the legislative history of the Act or of the Patents Act 1949 (UK). The essential distinctions between the two characteristics are the same now as they were before the enactment of the Act in 1954 or indeed before the enactment of its predecessor the Patents Act 1903.
43. There are some differences in language between the relevant provisions of the Patents Act 1903 and the Patents Act 1952, differences which may be material in some circumstances: see, for example, the differences adverted to in Minnesota Mining and Manufacturing Co. v Beiersdorf Australia Limited [1980] HCA 9; (1978) 144 CLR 253 especially in the judgment of Aickin J. commencing at 261 and in particular at 287-293. Such differences are not material for present purposes.
44. It is necessary to consider certain decisions of the High Court which concern novelty and inventiveness which were relied on in argument in support of the appellant's contention that obviousness is an essential integer in novelty or may be considered under a plea of want of novelty.
45. The first case is Linotype Co. Ltd. (In Liquidation) v Mounsey [1909] HCA 39; (1909) 9
CLR 194 which involved an application for a patent for an improved matrix
cleaner for linotype machines. The grant was opposed on the grounds
of want of
novelty and prior publication. In his reasons for judgment Griffith C.J.
referred to the fact that s. 56 of the Patents
Act 1903 (Cth) allowed six
grounds of opposition only, one of which was want of novelty. He noted that
want of subject matter was
not one of those grounds. The Chief Justice said
at 202:
"'Want of subject matter' really means that theHe said at the same page:
alleged invention is not a 'manner of new
manufacture' and involves two questions, whether
it is a manner of manufacture, and whether it is
new."
"Proof of want of novelty is sufficient to supportThe Chief Justice said that both terms had long been in use in patent law and that novelty in s. 56(e) was to be read in the sense in which it had always been used in patent law. His Honour said:
an objection for want of subject matter but it
does not cover the whole ground open under that
objection."
"As applied to the present law it means that theHis Honour went on to say at 206 that it was not necessary in that case to decide whether the absence of invention or ingenuity, as distinguished from substantial identity if the two could be distinguished, could be set up under an objection of want of novelty, but that he was disposed to think that it probably could be set up at any rate where the absence of invention was manifest. His Honour held that the alleged invention was substantially identical with that already known and was therefore not novel and that the objection should be allowed and the application for the patent refused.
alleged invention is substantially identical with
a process or manner of manufacture already known
to be public, or, to adopt the words of Sir R.
Webster in In Re Todds' Application 9 RPC 487,
that the difference is not sufficient to
differentiate that which had gone before from that
which is claimed. This point was properly raised
by a plea that the alleged invention was not new:
Saxby v Gloucester Waggon Co. 7 QBD 305, 75 LTJO
167" (at 202).
46. O'Connor J. said that two questions were raised by the case before the Court. First, whether the applicant's invention differed in any real sense from the previous contrivance and second, if it did, whether the differences involved such an exercise of the inventive faculty as was necessary to constitute a manner of new manufacture within the meaning of the Patents Act 1903. The appellants objected to the second question being raised and contended that s. 56(e) did not empower the Commissioner to determine that issue on an application for registration of a patent. His Honour expressed no opinion on that second question, since he concluded as to the first question that the applicant's alleged invention added nothing to the common stock of knowledge regarding linotypes at the time of the application, and was not novel within the meaning of s. 56(e).
47. Isaacs J. said that in his view the objection to the grant of the patent was that the invention was not new. He referred to the test of novelty laid down by Lord Hatherley in Cannington v Nuttall, supra, to which I referred earlier. His Honour also referred to what Lord Davey said in Reichman v Thierry, supra, at 210, in essence that a mere application of an old contrivance in the ordinary way to an analogous subject, without any novelty in the mode of applying that old contrivance to the new purpose, did not amount to a valid subject matter of a patent. Isaacs J. noted that the grant of a patent required that there be some novelty in the mode of application. His Honour noted that this meant that, in adapting the old contrivance to the new purpose, there must difficulty to be overcome requiring invention or there must be some ingenuity in the mode of making the adaptation. Isaacs J. dealt with the submission that the observations of Lord Davey related entirely to subject matter as distinct from novelty and did not apply to the objection that the invention was not new because it was anticipated. His Honour rejected that submission at pp 211-213, relying upon Arnott v Dunlop Pneumatic Tyre Co. Ltd. 22 RPC 105 in the Scottish courts and on the subsequent decision of the House of Lords on appeal reported at 25 RPC 309.
48. Higgins J., in a dissenting judgment, said at 220-222 that want of novelty and lack of subject matter or inventiveness were two distinct questions in patent law and that a plea of want of novelty did not entitle the opponent to raise the question of absence of subject matter or inventiveness.
49. This case supports the view (Higgins J. to the contrary) that the two characteristics of invention and novelty are not necessarily separate and that in some cases an objection of want of novelty is sufficient to allow an opponent to raise absence of invention, at least in a case where the absence is manifest or there is no substantial inventive faculty involved in differences between the old and the new inventions.
50. McGlashan v Rabett [1977] FCA 14; (1909) 9 CLR 223 followed two or three months after Linotype. It was a case of an application for a patent for an invention described as an improved ballast spreader for use in the construction of the permanent way of railroads. Objection was taken on grounds which for relevant purposes included the ground of want of novelty.
51. Griffiths C.J. stated at 226 what he perceived to have been decided in Linotype in terms which are substantially in accordance with my summary. His Honour said at 228 that the Court should allow the grant of the patent, acting on the principle that it should not refuse to allow the grant of a patent unless it was quite clear that the patent could not stand upon the ground of want of novelty. The Chief Justice said that since it was impossible to say that it had been proved affirmitively that substantially the same combination had ever been in use in the Commonwealth before the relevant date, the patent should be granted. He noted that it by no means followed that the patent would be valid when granted.
52. O'Connor J. said at 229 that the objection and proceedings under s. 56 of the 1903 Act were merely to enable the Patent Office to come to a determination for the purposes of registration, with the purpose that only patents which were prima facie valid should be upon the Register. In his Honour's view, it was best that the patent be registered in cases where the opponent had not discharged the onus cast upon him leaving the question of the existence of sufficient invention to be fought out by the parties in an infringement suit where the whole question could be thoroughly considered.
53. The headnote to McGlashan says:
"On an application for a patent of an invention it54. I doubt the accuracy of the headnote in view of Griffiths C.J.'s application of what he said in Linotype. In my view both cases are explicable on the basis that novelty and invention are different characteristics, though objection on the ground of absence of novelty does allow to a limited extent an examination of the question whether there is a manifest absence of invention or whether the subject of the later application is substantially identical with what is already in the public domain and therefore not novel.
is not open to an opponent under s. 56 of the
Trade Marks (correctly, Patents) Act 1903 to take
the objection that the alleged invention does not
involve any real exercise of the inventive
faculty."
55. Stamp v W.J. Powell Pty. Ltd. [1918] HCA 14; (1918) 24 CLR 339 is the next case. It concerned an application for a patent for an "improved mode of and apparatus for drying and deodorizing nightsoil, slaughter-house refuse and other analogous material". The application was opposed on the grounds of want of novelty and prior publication and the Commissioner of Patents upheld the objection. On appeal to the High Court it was held the opponent had not discharged the onus of showing that there was not a novel invention or that the invention had been described in a prior publication, and that therefore the patent should be granted.
56. The Court applied the earlier decision in McGlashan v Rabett, supra.
Barton J. said in his judgment, with which Gavan Duffy and
Rich JJ. agreed, at
343 that in McGlashan the
"... Chief Justice pointed out that there are manyHis Honour said at 343
objections that run more or less into the question
of novelty; for instance, that there is no
substantial inventive faculty involved in such
difference as there may be between the new
appliance and others already existing."
"... it is not necessary, and at that stage it57. Next came Henry Berry & Company Pty. Ltd. v Potter [1924] HCA 43; (1924) 35 CLR 132 which was an application for a patent for improvements relating to the seasoning of sausage-meat and butchers' small-goods. The objector opposed the application on the ground of want of novelty. On appeal to the High Court it was held by Isaacs ACJ. and Gavan Duffy J., Starke J. dissenting, that on the evidence the process was not a mere use of known devices without any inventive exertion of the mind and that a patent ought therefore to be granted. The argument of counsel for the appellant, the opponent to the application, was that the alleged invention was no more than putting a known liquid flavouring material into sausages.
might not be wise, to say more than that the
objector has not, in my judgment, discharged the
onus laid upon him of establishing that the
combination is not new, and in that regard an
invention ..."
58. Isaacs A.C.J. and Gavan Duffy JJ. in a joint judgment said that the respondents, the applicants for the patent, should succeed without the Court offering anything amounting to a final pronouncement as to the ultimate validity of the patent. Their Honours cited McGlashan v Rabett, supra, and Stamp v W.J. Powell Pty. Ltd., supra, as authority that the opposition under s. 56 was a proceeding intended only to "intercept" a patent which would be clearly invalid on one of the grounds specified in the section. Their Honours indicated that the issue in proceedings under s. 56 was whether the matter was so plain that the application ought to be ended at once and not left to a more deliberate examination on a subsequent proceeding for revocation. Their Honours said that the opposition should fail unless there was shown to be the mere application of an old contrivance to an analogous use and therefore no invention in the relevant sense.
59. Starke J., in dissent, also referred to McGlashan v Rabett and Stamp v W.J. Powell Pty. Ltd.. His Honour said at 141 that a patent would not be granted for the application of a well known article or process or method to a use merely analogous to that to which it has already been applied, unless there was some ingenuity or invention in the adaptation or mode of application which would sustain novelty.
60. In Gum v Stevens (1924) VLR 1 the applicants applied for the grant of
letters patent for an improved lubricating device for vehicles. The
application was opposed
by the objector upon several grounds including want of
novelty under s. 56(e) of the Patents Act 1903. The opposition was decided
by
the Commissioner of Patents in favour of the applicants. The objector appealed
to the Supreme Court, where the appeal was heard
by Mann J., who allowed the
appeal. His Honour said at 4:
"It was argued that the declarations do not61. On appeal to the High Court Knox C.J. agreed with the judgment of Mann J.. Isaacs J. also agreed with Mann J.. His Honour referred to the contention of the appellant that the question of invention was entirely foreign to the question of novelty. Counsel for the appellant had relied on part of the headnote in McGlashan which I set out a little earlier. The court was informed that that statement had regulated the practice in the Patents Office. His Honour said at 7 that the words "invention" and "novel" were words of flexible and variable meaning. He referred to British United Shoe Co. v Fussell (1908) 25 RPC at 651 where Fletcher-Moulton L.J. said:
disclose any actual use of a nipple attached to a
hole in an axle prior to this application; that it
must therefore be 'novel' within the meaning of
sec. 56; and that what I have said above is really
an objection of want of subject-matter, which is
not an objection open to an opponent under that
section.
This familiar argument rests, as has been often
pointed out, upon the assumption that the defence
of 'want of subject-matter', as loosely used in
patent actions to express want of invention, in
some way limits the meaning of novelty as used in
the Patents Act. The requirement of novelty is
the foundation of the grant, and it is not to be
reduced to a mere shadowy requirement by first
assigning a meaning to 'subject-matter', an
expression not found in the Act, and then limiting
the meaning of 'novelty' to that which falls
outside 'subject-matter'."
"The word 'invention' is used in at least threeIsaacs J. said it must not be taken that McGlashan v Rabett, supra, decided that when novelty is under consideration there must be an absolute exlusion of invention in all its senses. His Honour noted that the term 'novelty' or 'newness' was also capable of being misunderstood and of being misapplied by reason of its flexibility of meaning. He said it was sufficient to refer to Tatham v Dania (1869) Griffins Patent Cases 213, where Wills J. who delivered the judgment of the Court (Bovill C.J., Wills and Keating JJ.) said:
senses in connection with these subjects, and
these three senses are quite distinct. First of
all, we say that to support a patent there must be
'invention'. There it means an inventive act.
Then we talk about a person getting a 'monopoly'
for an 'invention'. There it means a thing which
is new, and that has required an inventive act to
produce it. There is also an intermediate sense
in which it is used - that is to say, you
sometimes speak of a patentee's 'invention'
meaning the particular inventive act which this
inventor has performed."
"I apprehend if a patentee would succeed it isIsaacs J. said this was supported by the judgments in Clark v Adie (1877) 2 AC 315. His Honour said that nothing in the judgments in McGlashan excluded the consideration of invention in the relevant sense when the novelty of a new application of an old device was challenged by way of objection to the grant of a patent.
necessary for him to show, not merely newness in
the sense of doing a thing which has not been done
before, but that he must show newness in the shape
of novelty by producing a thing which requires
some exertion of mind that could properly be
called invention. To apply an old tool to a new
material could not be the subject of a patent,
although all mankind had been previously using
another sort of tool which produced a much
inferior effect, and although, therefore, the
application of the other tool had the merit in it
that it produced a useful result in the easier
working of a material to which that tool had not
been applied before; but inasmuch as the tool has
been used for an analogous purpose to that which
all mankind knew it was useful for before,
although the application was new, you would not
say the application was a novelty in the sense of
invention so as to sustain a patent."
62. Starke J. also agreed with the decision of Mann J., and referred to
Linotype Co. v Mounsey, supra, and McGlashan. Starke J. indicated
that in his
view those cases had been misunderstood. He said there was no very clear line
of demarcation between subject matter
and novelty. His Honour referred to
Fletcher Moulton's Law and Practice Relating to Letters Patent for Inventors
(1913) where the
author had pointed out that there were three questions for
consideration in deciding whether there is subject matter for the alleged
invention. First, is the invention a manufacture? Secondly, is it new?
Thirdly, is it a new manufacture or in other words does
it involve invention?
Starke referred to Griffith C.J.'s remark in Linotype, supra, at 202 that:
"Proof of want of novelty is sufficient to supportStarke J. concluded that an objection to the grant of a patent on the ground of want of novelty in the invention was not precluded merely because the same facts might also establish want of subject matter, and found that the invention in that case in fact lacked novelty.
an objection for want of subject matter, but it
does not cover the whole ground open under that
objection."
63. The case of William Arnott Limited v Peak Frean & Co. Ltd. (1935) 9 ALJ 73 concerned an application for letters patent for an invention entitled "An improved method of packing biscuits, cakes and the like". Objection to the grant was taken on three grounds. The Deputy Commissioner refused the application on all grounds. The decision of the Deputy Commissioner was upheld on appeal to the High Court. Dixon J. said that the usual difficulty arose owing to the limits imposed by s. 56 upon the grounds of opposition. He said that the Court in McGlashan and subsequent cases had dealt with the difficulty that the invention had not been shown to be novel, and that the law had been accurately stated by the High Court in Gum v Stevens, supra. His Honour indicated that if the only novelty which could be found was in a step which disclosed no subject matter for a patent, then it was no true novelty at all. His Honour recognised that, as was pointed out in Gum v Stevens, the dividing line between novelty and subject matter was neither clear nor easy to maintain.
64. Griffin v Isaacs (1942) 12 OJP 739; (1938) 12 ALJ 169 was an appeal from a
decision of the Deputy Commissioner of Patents upholding the opposition of the
respondent to the grant to the
appellant of a patent for an improved means of
supporting trousers, skirts and the like. The grant of the patent was opposed
on
the ground that the alleged invention was not novel. Prior publication was
relied on to prove want of novelty. It was not publication
of the very
invention alleged, but of a construction consisting of the upper portion of a
pair of trousers containing an adjustable
self supporting band. It was argued
that the alleged new features in the invention were nothing but unsubstantial
differences between
it and the construction which the opponent had already
made and published beforehand. In the result the High Court held that the
appeal failed, and that the Deputy Commissioner had been correct in deciding
that the alleged invention was not novel. Dixon J.
said at 739 "(i)t would be
surprising if the features of this device either separately or in combination
were novel" and then said
at 740:
"The whole thing suggests rather improvements in65. I see no purpose in referring to the judgments of the other members of the court, Latham C.J., McTiernan and Starke JJ. as they shed no light on the present question.
arrangement and execution of well-known methods
than an inventive step or steps.
But as this is in opposition we are confined to a
consideration of novelty. The decisions of this
Court in McGlashan v Rabett 9 CLR 224; Gum v
Stevens [1923] HCA 48; 33 CLR 267 and Arnott v Peak Frean 9 ALJ
73 have illustrated the difficulty of maintaining
a definite distinction between novelty and subject
matter.
Where variations from a device previously
published consist in matters which make no
substantial contribution to the working of the
thing or involve no ingenuity or inventive step
and the merit if any, of the two things,
considered as inventions, is the same, it is, I
think, impossible to treat the differences as
giving novelty. It may be true that in neatness,
ease of adjustment and commercial attractiveness
the particular publication, relied upon in the
present case, is inferior to the applicant's
arrangment, but, notwithstanding some misgivings
caused by this fact, I think, that when the
principle of the two things is considered closely
the differences which the applicant's device
exhibits are not such as to remove it from the
objection of want of novelty."
66. Hume Pipe Company (Australia) Limited v Monier Industries Limited (1943) OJP 575 followed shortly after Griffin v Isaacs. It concerned an application for a patent for an improved machine for the manufacture of concrete pipes and the like. The application was opposed by the objector on the grounds of want of novelty and prior publication. The appellant appealed to the High Court against the decision of the Deputy Commissioner that the letters patent should issue.
67. Dixon J. said that the applicant's device must depend for its title to a
patent upon the novelty and inventiveness of the particular
means forming the
combination. His Honour said at 578:
"It may be doubted whether the variations exhibitHis Honour then referred to McGlashan, Linotype, May v Higgins, Gum v Stevens, Peak Frean and Griffin v Isaacs. He said that, though the elements in the applicant's combination were all engineering commonplaces and the purpose of the invention was admittedly old, the variations from what proceeded it contributed a different means of producing the result and affected the working of the entirety in such a way that the device could not be said plainly to be destitute of invention or to be a mere mechanical equivalent of previous devices.
the quality of inventiveness, but this question is
not one that is directly raised by a plea of want
of novelty. It is true that it sometimes
indirectly arises because where the invention
claimed cannot be distinguished from what was
already in the possession of the public except by
differentiae which contributes nothing to the
result or to the means for producing it or clearly
involve no ingenuity or invented step the plea of
want of novelty must be considered as established
in substance."
68. The next case to be considered is Re Application for Letters Patent by
Fabrique Swisse De Crayons Caran D'Ache SA (1946) 16 OJP
2811, which concerned
an application for letters patent for an invention entitled "Improvements in
or relating to pencil writing
appliances". The Deputy Commissioner of Patents
cited the passage from Willes J.'s judgment in Tathan v Davis, supra, quoted
by
Isaac J. in Gum v Stevens, supra, at 270 as authority that a patentee must
show
"not merely newness in the sense of doing a newThe Deputy Commissioner found that the application before him did not constitute an invention in this sense and refused to accept the application and specification. On appeal to the High Court, reported at (1946) 16 OJR 2812, Latham C.J. upheld the decision of the Deputy Commissioner and inferentially his process of reasoning including his reliance upon the judgment of Isaacs J. in Gum v Stevens.
thing which has not been done before, but he must
show newness in the shape of novelty by producing
a new thing which requires some exertion of the
mind that could properly be called invention."
69. These are the relevant cases prior to the 1954 Act which concern the
question of the relation between the two characteristics
of novelty and
invention. What emerges from them is not easy to assess. The cases do not
reflect unanimity of view, and I am not
sure that each of the cases can be
reconciled with the others. What can be drawn from them, however, is that in
the opinion of the
Justices of the High Court who heard those appeals:
. there is a line of demarcation between novelty and70. It is important to keep in mind that until the Act came into force in 1954 objection could not be made to the grant of a patent for obviousness. In my opinion, the High Court decisions prior to the 1954 Act explain that it is fundamental to the grant of a patent that the subject of the application be a manner of new manufacture having both novelty and invention. When objection to the grant of a patent on the ground of want of novelty is taken, the courts will uphold the objection if it is a very clear case of absence of invention, or of something which obviously possesses no inventive merit whatsoever. There are sound reasons why a patent should not be granted if it is manifestly without any inventive merit.
invention, but not a very clear one;
. the cases illustrate the difficulty of drawing a
definite distinction between novelty and invention;
. in considering an objection to an application for a
patent on the ground of want of novelty it is permissible to
take into account whether the alleged invention appears to be
wholly lacking in subject matter or invention or is a clear
case of manifest absence of invention or a case of an
invention which is so obviously trivial as to contribute
nothing of worth to common general knowledge. In the words
of Lindley L.J. in Blakey's Case, supra, at 189, in a robust
passage cited with approval by Starke J. in Henry Berry & Co.
Pty. Ltd. v Potter , supra, at 142, an objection to an
application for a patent based on lack of novelty, in so far
as it involves lack of ingenuity, may be sustained if the
patent "is a very rubbishy patent, and mischievous".
71. In the Second Interim Report of the Departmental Committee to the
President of the Board of Trade on the Patents and Designs Acts,
April 1946,
Cmd. 6789 (UK) the Committee said that:
"To grant a patent, even though it may be72. In Dennison Manufacturing Co. v Monarch Marking Systems Inc. [1983] FCA 159; (1983) 66 ALR 265 Fox J. interpreted Dixon J.'s judgment in Griffin v Isaacs, supra, as permitting an objection on the ground of want of novelty to encompass evidence of absence of ingenuity or inventive step as limited to what are commonly called "workshop improvements" (at 274). In other words it is only when you have a very clear case of what is in effect a mere workshop improvement that there is an absence of invention sufficient to support an objection on the ground of want of novelty. "Workshop improvement" is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity. Mechanical equivalence is another expression to the same effect. King J. in his reasons for judgment in the present case agreed with Fox J.'s interpretation of Griffin v Isaacs.
subsequently revoked, for something which quite
obviously possesses no inventive merit whatever,
is prima facie contrary to public policy and
contrary to the purpose of the patent law, whose
object has always been to encourage genuine
inventions without imposing undue restraint upon
normal industrial development ... people are
deterred by the risk of legal proceedings for
infringement from attempting to manufacture
articles forming the subject of a patent, however
obvious it may be that the patent is invalid.
Even a successful defence to an action for
infringement may involve so serious an expense to
the defendant as to deter him from challenging the
patent. Thus, an obviously invalid patent may act
as a formidable deterrent, discourage a
manufacturer from pursuing research, or from
adopting improvements in methods of manufacture
which involve nothing more than the application of
the normal technique and skill of those
experienced in the art.
Moreover, the present system tends to encourage
the proprietor of a valuable patent to take out
subsequently a number of subsidiary patents for
trifling improvements or modifications of his
invention, thereby obtaining an unjustifiable
extension of the period of protection. It is also
a common practice for a patentee who possesses
subsidiary patents, however trifling, to require
an applicant for a licence under the principal
patent, to take a licence also under the
subsidiary patents, and to agree not to question
the validity of any of the patents involved
(paras. 74-75)."
73. Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1979) 144 CLR 253 was referred to in argument. That case concerned an action for infringement of a patent, where the defendant denied infringement and counter-claimed for revocation of the patent on the ground of obviousness (para. 100(1)(e) of the Act). The High Court held that the test for obviousness in relation to a combination patent is whether it would have been obvious to a non-inventive skilled worker in the field to select from the range of publications the particular combination subsequently chosen by the opponent with the advantage of hindsight, and whether it would have been obvious to that worker to select the particular combination of integers from those selected for publication. The leading judgment was given by Aickin J. who disapproved certain observations by Williams J. in HPM Industries Pty. Limited v Gerard Industries Limited [1957] HCA 47; (1957) 98 CLR 424 at 437-8, which were to the contrary of the approach adopted by the Court in the Minnesota Mining Case. Barwick C.J., Stephen, Mason and Wilson JJ. each agreed with the reasons for judgment of Aickin J.. Although certain observations were made by the High Court in Minnesota Mining with regard to novelty, those observations do not bear upon the issues in the present case.
74. In my opinion the High Court decisions since Linotype Co. Ltd. (In Liq.) v Mountsey are not authority for the proposition that lack of inventiveness may be raised under a claim of want of novelty on an objection to grant of a patent, except in a clear case where the invention claimed obviously possesses no inventive merit whatever. Hence the argument of the appellant in this case that it is open to it to raise the whole question of absence of invention under cover of an objection on the ground of want of novelty is untenable.
75. Although the High Court decisions which I have reviewed above were made
with respect to the Patents Act 1903, the principle for
which they are
authority and which I have mentioned in the last paragraph is in my view
applicable under the present Act. The principle
is consistent with the view
that the objections of novelty and of obviousness are fundamentally different
in character though they
to some extent overlap. That the Act, when it
assumed substantially its present form in 1952, permitted objection to the
grant of
a patent on the ground of obviousness to be raised for the first time
under Australian patent law, and that the earlier High Court
decisions were
made in the absence of that right does not diminish the correctness of the
principle that obviousness may be raised
under an objection for want of
novelty only where the improvement obviously lacks any inventive merit, that
is where the improvement
is a mere workshop improvement. Nor does the
structure of the Act lend support to the contention that obviousness and want
of novelty
are totally separate grounds of objection. This contention is
answered by the history of the development of the grounds of objection
available under s. 59 of the Act. It is relevant also to note that such
history is reflected in the language of para. 59(1)(h) of
the Act which allows
a ground of objection:
"(h) that the invention, so far as claimed in anyThe word "otherwise" must relate back to at least one of the paragraphs that precedes it, and plainly enough relates back to the immediately preceding paragraph (g). Hence the Act itself reflects the historical absence of a completely separate division between invention and novelty.
claim, was, before the priority date of that
claim, otherwise not novel in Australia ..." (my
emphasis).
76. I turn now to the question whether the differences between the disclosures in the Greenman specification and in the Bailey specification plainly disclose no inventive merit whatever or, expressed another way, answer the description of mere mechanical equivalents or workshop variations.
77. Applying the reverse infringement test, if the feature which distinguishes the Bailey specification from the earlier Greenman specification is an essential element of the invention claimed in the Bailey specification then, as it is not present in the Greenman specification, there would be no infringement by it of the Bailey specification. On the other hand, if the difference between the two specifications plainly involved no inventive advance over the prior art constituted by the Greenman specification, then the difference would be a non essential integer so that there would be an infringement of the Bailey specification. Putting the matter another way, the question is whether the substitution in the Bailey specification of two connection forming assemblies on slidable mountings for one such assembly on a slidable mounting and one connected to a stationary frame, obviously demonstrates no inventive step.
78. It was argued on behalf of the appellant that there is no essential difference between the two mechanisms and the way they operate because both are based on the movement of two swageing heads with relation to one another. The appellant submitted that it is irrelevant that in one case one connection forming assembly is mounted on a slideable base and in the other is not. It was argued that no advantage was gained and no problem overcome by adopting the apparatus of Claim 1 in the Bailey specification over and above the prior art disclosed in the Greenman specification.
79. The learned primary Judge held that in his view the most important consideration was whether each apparatus operated essentially in the same way, so that one was clearly a mere mechanical equivalent or a mere workshop variant of the other. His Honour pointed out that there was no doubt that the invention in Claim 1 of the Bailey specification had the same aim as the Greenman apparatus. He carefully reviewed the evidence of the relevant witnesses, in particular the expert witness called by the appellant, Professor Joubert, and the expert witnesses called by the respondent and in particular Professor Phillips.
80. Strong reliance was placed by the appellant, before his Honour and this Court, upon the evidence of Professor Joubert who said that the functional parts of the invention claimed in Claim 1 of the Bailey specification and the invention described in the Greenman specification move relative to each other in the same way; that it required only an elementary understanding of mechanics to realise that, if a machine operates by the interaction of two parts A and B, then mechanically the same result can be achieved by causing the two parts to move together as by holding A stationary and moving B towards it; and that this has been well known since at least the seventeenth century.
81. His Honour concluded that the differences in mechanical operation of the two pieces of apparatus stem from Greenman's description of an apparatus with one moveable connection forming assembly and the description in Claim 1 of the Bailey specification of an apparatus with two such assemblies. His Honour said that such differences in the operation of the machinery confirmed the view that prior publication of the Greenman apparatus did not clearly disclose a workshop variation or a mechanical equivalent of the invention claimed in Claim 1 of the Bailey specification. His Honour held that the prior publication of the Greenman specification did not deprive the relevant claims of the Bailey specification, in particular Claim 1, of novelty.
82. In my opinion the evidence does not prove that the Bailey patent quite obviously possesses no inventive merit whatever. The essential difference between the disclosures in the Greenman and Bailey specifications discloses some inventive step; something more than a mere workshop variation or mechanical equivalent. In my opinion no ground has been established for interfering with these findings by the trial Judge. Indeed, I respectfully agree with them.
83. There remains the argument of the appellant based upon s. 40 of the Act.
This point evolved from ground 11 of the Notice of Appeal
which states:
"11. The learned Judge erred in law in notAs I read this ground of appeal, it asserts insufficiency of description in the Claims; but insufficiency was not a ground relied upon either before the Commissioner or the Supreme Court. Counsel for the appellant informed us that it was sought to raise by this ground of appeal, not insufficiency of instruction in the Bailey specification, but the point that the claims did not define the invention as required by s. 40 in the sense that there was an absence of definition in the claims. This argument cannot be gleaned from ground 11 even by the most liberal interpretation of its language. Nor was an application for leave to amend the grounds of appeal made to this Court.
holding that a specification for a claimed
invention which does not disclose and does
not claim the element which allegedly
confers novelty on the claimed invention
does not fully describe the invention (as
required by s. 40 Patents Act 1952 (Cth))
and is accordingly invalid."
84. The primary Judge, when dealing with an argument of the appellant based on
s. 40, said in his reasons for judgment that he was
prepared to consider the
s. 40 points:
"... insofar as they arise under the specification85. The Claims in the Bailey specification, in particular Claim 1, define the invention with reference to the moving assemblies and their mode of operation. Complaint was made by counsel for the appellant that the description did not specify or detail the advantages which would accrue from the use of the invention. It is not necessary that the claim should state in detail those advantages: Universal Oil Products Co. v Monsanto Co. (1972) 46 ALJR 658 per Gibbs J. at 662; and British United Shoe Machinery Company Ltd. v A. Fussell & Sons Ltd. (1908) 25 RPC 631 per Vaughan Williams L.J. at 651-3. The appellant's argument on this ground fails.
itself, and require no evidence to develop or
refute them. On this basis (counsel's)
submissions may be generally summed up as being
that the invention claimed in claim 1 is wider
than the invention described in the
specification."
86. I would dismiss the appeal with costs.
I agree with the judgment of Gummow J.
This is an appeal, by leave, from the decision of a Judge of the Supreme Court of Victoria (King J.). There was before the Supreme Court an appeal from a decision of a delegate of the Commissioner of Patents dated 5 July 1984. The delegate dismissed an opposition pursuant to s. 59 of the Patents Act 1952 ("the Act" or "the present Act") to the grant of a standard patent upon Application No. 517,200. The applicant for the grant was Bailey Aluminium Products Pty. Ltd., the respondent both in the Supreme Court and in this Court. The opponent was R.D. Werner Co., Inc., the appellant both in the Supreme Court and in this Court.
2. Application No. 517,200 was accompanied by a Complete Specification entitled "Apparatus for Assembling Ladder-Type Frames". The priority date of the claims was 30 May 1977. The Complete Specification is described, and claims 1 and 3 are set out in the judgment of Lockhart J. and I shall not repeat what is there set out.
3. Although described in the Act as an appeal, the proceedings in the Supreme Court were, as is well understood, proceedings in the original jurisdiction of the Supreme Court and the powers of the Supreme Court in that regard were regulated by s. 150 of the Act.
4. In the hearing before the delegate of the Commissioner, the grounds of opposition relied upon in argument were that the invention as claimed had been published in Australia before the priority date (sub-s. 59 (1) (e) of the Act), that the invention as claimed was "otherwise not novel in Australia" (sub-s. 59 (1) (h) and obviousness (sub-s. 59 (1) (g)). In the Supreme Court, points were also taken (under sub-s. 59 (1) (i)) that the Complete Specification did not comply with the requirements of s. 40.
5. Before this Court, there was some contention as to the availability to the appellant of grounds under s. 40 upon which it sought to rely. The Court heard full argument on issues under s. 40, reserving the question of the extent to which they were open to the appellant. I agree with what is said by Lockhart J. on this aspect of the appeal.
6. On the appeal to this Court, no reliance was placed upon obviousness. King J. had held against the appellant, inter alia, on the ground that it had not shown the material relied upon had become part of the common general knowledge in Australia at the relevant date in 1977, a fatal objection to any reliance upon the ground of obviousness: Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253.
7. It is well established that a grant should not be refused in respect of any claim in a complete specification upon the ground of lack of novelty or obviousness unless it appears to the Court clear that the ground of objection has been made out: Montecatini Edison S.p.A. v Eastman Kodak Co. (1971) 45 ALJR 593 at 595-596. That concern also finds legislative expression in the requirement in sub-s. 148 (2) of the Act for leave in cases such as the present to appeal to the Full Court of this Court.
8. On the appeal to this Court, the appellant relied strongly upon the prior
publication in Australia of United States Patent Specification
No. 3,140,540,
described as the "Greenman Patent". This specification describes an apparatus
for assembling metal ladders. It was
published in Australia by being laid
open to public inspection in the Patent Office Library on 30 October 1964. It
is important
to bear in mind that the appellant did not challenge the finding
of King J. that what is disclosed by this specification had not
become part of
the common general knowledge in Australia on 30 May 1977, the relevant
priority date. The appellant submitted that
claim 1 of the respondent's
Complete Specification (and the pendent claims) was for an invention
previously published in Australia
(sub-s. 59 (1) (e)) or otherwise not novel
(sub-s. 59 (1) (h)), because claim 1 was, to use the words of the appellant's
written
submissions:
(a) merely a case of analogous use of the9. In the Supreme Court, King J. in the course of expressing his conclusions as to similar submissions that had been made to him, said:
Greenman invention; or alternatively
(b) merely a case of workshop improvement to the
Greenman invention; or alternatively
(c) involved no additional exertion of mind that
could properly be called invention.
It is apparent that the apparatus described10. (Some reservations were expressed in submissions to us as to the respectability of the lineage of the "doctrine" concerning the relationship between want of novelty and infringement which was said first to have been propounded by Aickin J. in the passage set out in the above extract from the judgment of King J. It is true that Pollock C.B., speaking at a time before the development of the distinction between novelty and obviousness and before the introduction into specifications of claims in modern form, denied that the same criterion was to be applied to the question of infringement as to that of lack of novelty: Newton v The Grand Junction Railway Co. [1850] EngR 32; (1846) 5 Exch 331 at 334; [1850] EngR 32; 155 ER 144 at 146. But reflection will suggest that the so-called "Gillette defence" - that the alleged infringement is "not novel" - which was propounded by Lord Moulton in 1913 (Gillette Safety Razor Company v Anglo-American Trading Company Ltd. (1913) 30 RPC 465 at 479-480) was in truth a development of that principle later described by Aickin J. in 1977. Thus, what His Honour said in 1977 would have been well understood long before that.)
in Greenman has in it all but one of the
elements of Claim 1 of the specification in
suit. This element is that both connection
forming assemblies include support means
slidably mounted on the main frame for
movement in a direction parallel to the
transverse members of the frame being
assembled. There is no suggestion in the
specification in suit that one such assembly
may be used. Nor is there any suggestion in
Greenman that two such assemblies may be
used. The test for lack of novelty
propounded by Aickin, J. in Meyers Taylor
Pty. Ltd. v Vicarr Industries Ltd. [1977] HCA 19; (1977)
137 CLR 228 at 235 is as follows:-
"The basic test for anticipation or
want of novelty 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."
In Dennison Manufacturing Co. v Monarch
Marking Systems Inc. [1983] FCA 159; (1986) 66 ALR 265 at
284 Franki, J. said that it seems clear from
what Aickin, J. said in Minnesota Mining &
Manufacturing Co. v Beiersdorf (Aust.) Ltd.
[1980] HCA 9; (1980) 144 CLR 253 at 298 that his Honour
was saying that in a case of alleged paper
anticipation of a combination patent based
on a prior patent specification the latter
specification must disclose all the integers
in the combination. No doubt, both judges
were making allowances for immaterial
variations in accordance with the doctrine
of mechanical equivalents. If the elements
I have contrasted are respectively an
essential element of the invention claimed
in Claim 1 of the specification in suit and
of the apparatus described in Greenman, it
seems that the invention claimed is not
deprived of novelty by Greenman.
11. Later in his judgment, King J. said:
(I)n my view, one way of putting theKing J. then concluded that prior publication of the Greenman apparatus did not clearly disclose a workshop variation or a mechanical equivalent of the invention claimed in claim 1 of the respondent's specification. This was sufficient to dispose of what is now ground (b) in the appellant's written submissions and probably of ground (a). But there remained the argument that in any event, claim 1 "involved no additional exertion of mind that could properly be called invention" and so failed for want of novelty. It is this which raises the important question of law debated before us.
question immediately before me is to ask
whether the substitution of two connection
forming assemblies on slidable mountings
for one such assembly was clearly only a
workshop variation. In view of the
relationship referred to above by Aickin, J.
between lack of novelty and infringement a
corresponding test would be to ask whether
the single connection forming assembly on a
slidable mounting, together with the
assembly on a fixed mounting, in Greenman,
would be, for the purposes of infringement,
clearly only a mechanical equivalent of a
form of the invention claimed in Claim 1 of
the specification in suit.
12. King J. was referred by the appellant to the decisions of the High Court in William Arnott Ltd. v Peak Frean & Co. Ltd. (1935) 9 ALJ 73; Griffin v Isaacs (1938) 12 ALJ 169; 12 OJP 739; and Hume Pipe Company (Australia) Ltd. v Monier Industries Ltd. (1943) 13 OJP 575. The appellant had relied in particular upon remarks in the judgments of Dixon J. in those cases; it was submitted that it followed from what had been said by Dixon J. that unless in the claimed invention there is, over the prior disclosure relied on, an advance of a kind that makes a real difference capable of supporting an invention, a lack of novelty is not avoided because of some difference between the two. The appellant contended before King J. (and this was repeated before us) that there was not in the invention of claim 1 of the appellant's Complete Specification an inventive content over and above that in the Greenman specification nor any benefit over and above that in the Greenman specification, gained by using two movable heads instead of one and that, in consequence, there was lack of novelty so that the opposition to grant should succeed.
13. It is to be noticed that the three High Court decisions to which I have
referred were all decisions in respect of oppositions
to grant, under s. 56 of
the Patents Act 1903 ("the 1903 Act"). Such oppositions were conducted before
the Commissioner, with an
"appeal" to a Court, as with the present Act.
Section 56 set out five grounds of opposition. The fifth and sixth were as
follows:
56. . . .Section 56 did not specify obviousness or want of subject matter as a ground of opposition to grant. Higgins J took the view that this was the deliberate choice of the legislature and not an oversight: The Linotype Co. Ltd. (In Liquidation) v Mounsey [1909] HCA 39; (1909) 9 CLR 194 at 221. However, much later, in the first of the trilogy of High Court cases upon which the appellant strongly relied, William Arnott Ltd. v Peak Frean & Co. Ltd. (supra), Dixon J. is reported as having stated that "the usual difficulty arose owing to the limits imposed by s. 56 upon the grounds of opposition". The report continues as follows (at 73):
(e) That the invention is not novel or has
been already in possession of the
public with the consent or allowance of
the inventor;
(f) That the invention has been described
in a book or other printed publication
published in the Commonwealth before
the date of the application or is
otherwise in the possession of the
public.
His Honour referred to the contention byCounsel for the respondent submitted to this Court that to the extent that these pre-1952 Australian cases suggested that manifest want of invention might deprive a claimed invention of novelty and thereby deny a grant, they were explicable by reluctance of the Court to permit grant of a monopoly for an invention that might forthwith after grant readily be revoked for obviousness. In my view, there is much force in that submission.
counsel for the appellant that the precise
combination described to the Court had not
been shown to have been actually practised
in its definite form, and, therefore, that
the opposition should fail because it had
not been shown that the invention was not
novel within s. 56 (e) ... If the only
novelty, which could be found was in a step
which disclosed no subject matter for a
patent, it was no true novelty at all. As
had been pointed out in Gum v Stevens
((1923) [1923] HCA 48; 33 CLR 267), the dividing line
between novelty and subject matter was
neither clear nor easy to maintain. His
Honour thought the argument in support of
this appeal rested upon a claim for novelty
in respect of subject matter which really
did not exist.
14. In dealing with the effect of the 1903 Act, it should be noticed that not
only did the statute not specify obviousness as a ground
for opposition to
grant, but also that in dealing with revocation the statute simply provided,
in sub-s. 86 (3), that:
Every ground on which a patent might at(Revocation proceedings (unlike opposition proceedings) were commenced before a Court.) Thus, in proceedings both by way of opposition to grant and for revocation, the 1903 Act (unlike the 1952 Act) did not in terms draw any dividing line between novelty and obviousness or subject matter. Hence, that dividing line to which Dixon J. referred as neither clear nor easy to maintain was not one to which the statute required regard to be had. It was true, of course, that in proceedings for revocation, it would be necessary to have regard to the grounds upon which patents might be repealed at common law. But s. 86 of the 1903 Act carried over into the statutory regime any lack of definition between novelty and subject matter which was found in the common law.
common law be repealed by scire facias shall
be available as a ground of revocation.
15. The situation was markedly changed by the introduction of the present
Act. Sub-s. 59 (1) includes nine grounds of opposition.
The fifth and
seventh grounds deal with prior publication and obviousness. Sub-s. 59 (1)
(e) provides:
that the invention, so far as claimed in anySub-section 59 (1) (g) provides:
claim, was published in Australia before the
priority date of that claim.
that the invention, so far as claimed in anyThe eighth ground (sub-s. 59 (1) (h)) is that "the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia".
claim, was obvious and did not involve an
inventive step, having regard to what was
known or used in Australia on or before the
priority date of that claim.
16. Lack of novelty is the result of the invention having been made available to the public in Australia, by written or oral description, by use, or in any other way. It will be observed that sub-s. 59 (1) (h) speaks of the claimed invention as being "otherwise not novel" (emphasis supplied). This suggests that although the term "novel" is not elsewhere used in sub-s. 59 (1), nevertheless one or more of the other listed heads of objection are species of the genus identified as want of novelty. I have set out sub-s. 59 (1) (e); prior publication by documentary description is a well recognised head of want of novelty. So also is publication in claims of earlier Australian patent specifications, a subject dealt with in sub-s. 59 (1) (d) and perhaps now having a life of its own; see Hills v Evans [1862] EngR 365; (1862) 6 LT (NS) 90 at 93. As Mr. Bannon QC observes in "Australian Patent Law" 2' 2' 125, 126, publication by way of dissemination of knowledge and public user of a process or mechanical device have at times been differentiated. I have already set out paras. (e) and (f) of the 1903 Act which illustrate the point; see also Moore and Hesketh v Phillips [1907] HCA 22; (1907) 4 CLR 1411 at 1414-1415 per Griffith C.J.
17. When, in considering the terms of the present Act, one moves from
opposition to grant to revocation after grant, it will be seen
that whilst
obviousness and want of novelty are separately dealt with in sub-s. 100 (1)
(e) and (g) respectively, and whilst prior
claiming is dealt with in sub-s.
100 (1) (f), there is no special treatment of prior publication per se, in
contrast to that in sub-s.
59 (1) (e). This difference is reflected in the
language of sub-s. 100 (1) (g):
that the invention ... was not novel inThere was no occasion, given the different frame-work of sub-s. 100 (1), to use, as in sub-s. 59 (1), the expression "otherwise not novel". But obviousness is a ground spelled out in both sections. Hence the force of "otherwise" in sub-s. 59 (1) cannot be to treat obviousness as a species of want of novelty.
Australia ...
18. In Graham Hart (1971) Pty. Ltd. v S.W. Hart & Co. Pty. Ltd. [1978] HCA 61; (1978) 141
CLR 305 at 330, Aickin J. (in a judgment with which Barwick CJ agreed)
referred to the "fundamental difference" between novelty and obviousness.
Earlier, in Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961)
35 ALJR 212 at 217-218, Windeyer J. identified the distinction in logic
between the two concepts as one that existed under the old law as it
had
developed, and expressed the view that the 1952 Act continued, in express
terms, to observe it. After referring to the "formerly
well established"
distinction in patent law between want of novelty and want of subject matter
or lack of inventiveness Windeyer
J. said:
These were separate grounds of attack on the19. The necessary measure of disclosure in an alleged documentary anticipation was stated by Lord Westbury L.C. in Hills v Evans (supra) at 93, in a passage analysed as follows by Lord Reid in C. Van Der Lely NV v Bamfords Ltd. (1963) RPC 61 at 71-72:
validity of a patent. And the distinction
was logically precise. When want of novelty
was asserted, the thing or process claimed
as an invention was assumed to be an
invention that is the product of the
inventive faculties; but it was said that
it was not now at the date of the patent,
having been earlier invented and disclosed
to the public. When want of subject matter,
or lack of inventiveness, was asserted the
thing or process claimed as an invention was
assumed to be a new thing or process not
previously disclosed to the public; but it
was said that it was not really an invention
and thus not a proper subject matter for the
grant of a patent. One important result of
the distinction was that, when want of
novelty was relied upon, particulars had to
be given of the earlier disclosure alleged
to destroy the novelty of the patent,
whether that earlier disclosure was by prior
user of the thing or process or by a
documentary publication. Since the question
was, "is it new or has it been earlier
disclosed?", it was immaterial whether or
not it had become known to many people or to
few people. A description in an obscure
publication would suffice to destroy
novelty, provided that it was a publication,
that is to say that the document whether or
not it was read generally by the public, had
been available to the public: and similar
considerations applied to publication by
user. On the other hand, when want of
inventiveness was relied upon, the question
was whether the new thing or process was
obvious, or whether it had required an
exercise of the inventive faculties to
produce it. And, as that question was to be
taken as relating to a person skilled in the
art to which the invention related, it had
to be determined in the light of the common
general knowledge in that art. What matters
were common general knowledge could be
proved by competent witnesses: and
particulars did not have to be furnished of
publications where the documentary or by
user the contents or results of which had at
the relevant date become part of the stock
of common general knowledge of the art.
There are two branches of this statement.20. It is for the reasons that appear in this passage that a workshop improvement by ordinary methods of trial and error may still be called for without the document losing its character as an anticipation; likewise with the substitution of a mechanical equivalent for an inessential integer. This is the way in which King J. approached the case. But to appreciate these matters does not mean (and King J. did not take it to mean) that under an objection for want of novelty "obviousness" is being relied on when one categorises the alleged invention as a mere workshop improvement on an item or items of prior art; the alleged invention is bad simply because, within the sense of Hills v Evans (supra), there is sufficient disclosure in the prior art to deprive it of novelty.
The first is that "a person of ordinary
knowledge of the subject would at once
perceive and understand and be able
practically to apply the discovery without
the necessity of making further
experiments." The appellants maintain that
even if the skilled man could perceive in
the photograph all the integers in claim 1
he could not apply the discovery without
making further experiments. But Lord
Westbury must have meant experiments with a
view to discovering something not disclosed.
He cannot have meant to refer to the
ordinary methods of trial and error which
involve no inventive step and are generally
necessary in applying any discovery to
produce a practical result. That view
appears to have been generally accepted, and
I need only refer to the speech of Lord
Maugham in No-Fume Limited v. Pitchford
(1935) 52 RPC 231. The other requirement
is that "the information given by the prior
publication must for the purposes of
practical utility be equal to that given by
the subsequent patent." There may be cases
where the skilled man has to have the
language of the prior publication translated
for him or where he must get from a
scientist the meaning of technical terms or
ideas with which he is not familiar, but
once he has got this he must be able to make
the machine from what is disclosed by the
prior publication.
21. The law of the United States has followed a broadly similar pattern. The Patent Act 1952 (35 USCA) makes patentability depend upon three explicit conditions: novelty, utility and "nonobviousness". The requirements of novelty and utility appeared in earlier statutes commencing with the Act of February 21, 1793, c. 11, 1 Stat. 318. Section 103 of the 1952 statute makes patentability depend, in addition to novelty and utility, upon the "non-obvious" nature of the subject matter sought to be patented, to a person having ordinary skill in the pertinent art. Section 103 has been described as stating for the first time in statutory form a condition which had existed for more than a century, but only by reason of judicial decisions, particularly Hotchkiss v Greenwood 52 US 615 (1850). Under these decisions, and pursuant to the new s. 103, an invention which is new in the sense that the same thing has not been made before may still not be patentable if the difference between the new thing and what was known would have been obvious at the time to a person skilled in the art: Graham v John Deere Co. of Kansas City [1966] USSC 22; 383 US 1 at 12-17 (1965), Walker On Patents, 3d. Ed., Vol. 2, 2'6.1-6.3.
22. As the law has developed in Australia, it is generally accepted that the distinction between lack of novelty (or "anticipation") and obviousness (or "want of subject matter" or "lack of inventiveness") is of crucial importance in assessing the effect upon validity of prior written disclosures. The 1952 Act imposes specific requirements as to the giving of particulars of previous publications and user: sub-s. 166 (2). Lack of novelty may not be shown by reading several documents together so as to make a mosaic of extracts from them. (A question may arise as to the use that may be made of internal cross-references between documents: Martin Engineering Company v Trison Holdings Pty. Ltd. (1988) 81 ALR 543 at 551.) A prior publication may be an anticipation and so destroy novelty even though the material so published has not entered the common general knowledge in Australia. On the other hand, where obviousness is alleged, regard may be had to the collective effect of various publications, but only if what they convey has become part of the common general knowledge in Australia: Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9; (1980) 144 CLR 253; The Wellcome Foundation Ltd. v VR Laboratories (Aust.) Pty. Ltd. [1981] HCA 12; (1981) 148 CLR 262 at 270. The publication in Australia of the claimed invention in (to put it broadly) earlier specifications pre-dating the priority date by not less than fifty years does not, of itself, render the claimed invention invalid (sub-s. 158 (1) (a)), but if the subject matter of the disclosure has entered the body of common general knowledge in Australia, it may be relied on to assist a case of obviousness.
23. Therefore, the respondent urges, a requirement that the difference
between a claimed invention and a particular piece of prior
art should involve
an inventive step before novelty is shown, would produce an extraordinary
result. An invention could be found
to be not novel because it was not
inventive, by reference to a mere paper publication, which did not form part
of the common general
knowledge in Australia and thus was not available to be
used in an attack for want of inventiveness. The respondent submits, with
considerable cogency, that in Minnesota Mining & Manufacturing Co. v
Beiersdorf (Australia) Ltd. (supra) at 298, Aickin J. clearly
proceeded on the
basis that prior publication falling short of anticipation was an insufficient
ground of revocation unless the prior
publication was indicative of common
general knowledge and so established the objection of want of invention or
obviousness. In
the passage in question, Aickin J. (with whom the other
members of the Court agreed) said:
I am satisfied that the Salditt patent did24. In Windsurfing International Inc. v Petit (1984) 2 NSWLR 196 at 225-226, Waddell J, after reviewing the authorities, discussed a submission that Griffin v Isaacs (1938) 12 ALJ 169, "merely enables a court to treat as not novel something which has only trivial differences from what has been published previously". His Honour observed that in the various decisions to which Dixon J. referred in Griffin v Isaacs (supra), the step required to be taken from the material previously published to reach the invention claimed was simple and obvious, although, in Waddell J's opinion, it could not be said that the differences were merely trivial. His Honour concluded of these decisions that:
not deprive the invention of novelty
because, although it discloses some of the
integers of the combination it does not
disclose all of them. Because the
information contained in the Salditt
specification was not common general
knowledge in Australia at the relevant time
I do not need to examine it in relation to
obviousness.
They may be regarded as a series of25. In the present case King J. took the view that, in effect, Griffin v Isaacs (supra) and the associated High Court cases, today stood for no more than the proposition that where the alleged anticipation disclosed all the essential integers of the claimed invention, the conclusion as to lack of novelty which would follow therefrom was not avoided and the claimed invention was not saved, merely because there were differences which might be described as mere mechanical equivalents or workshop variations. This conclusion is at issue with that reached by Waddell J in the passage cited above.
instances in which, having regard to the
evidence before the court, it was held that
there were no substantial differences
between the previously published material
and the invention claimed or no differences
which required any ingenuity or inventive
step and hence the invention claimed could
not be regarded as novel.
(Emphasis supplied)
26. In my view, in seeking to resolve this conflict of authority, it is essential to bear in mind that what is before the Court is the construction of the present Act (drawing as it does in terms a distinction between want of novelty and obviousness) not the terms of the 1903 Act or the terms of the legislation as it has existed from time to time in the United Kingdom. Under the earlier Australian and British legislation the line between novelty and distinctiveness as grounds of revocation or repeal was by no means as clear as it is today in Australia.
27. The terms of the present Act represent the culmination of an evolutionary
process in the development (by statute and case law)
of the patent laws both
in this country and in the United Kingdom. Some of the earlier history was
outlined by Aickin J. in Minnesota
Mining & Manufacturing Co. v Beiersdorf
(Australia) Ltd. (supra) at 289-291. It was not until the Patents and Designs
Act 1932 (UK)
(22 and 23 Geo. V, c. 32), s. 3, that obviousness was identified
in terms as a ground of revocation. It was not even then a ground
of
opposition to grant in the United Kingdom. In Martin Engineering Company v
Trison Holdings Pty. Ltd. (1988) 81 ALR 543 at 550, I dealt briefly with the
evolution of the modern practice in relation to applications for grant. I do
not repeat what is
there set out. However, it is to be noted that before
1883, any ground was available for the purpose of opposition which would have
been available to destroy validity of the patent once granted. Thus, prior
publication might be relied upon; but the ground of opposition
had to be
proved, it was said, "beyond the shadow of a doubt": Hindmarch, "Patent
Privileges", 1846, at pp 534-535; Terrell, "Letters
Patent For Inventions",
1st Ed., p 116. Although sub-s. 11 (1) of the Patents Designs and Trade Marks
Act 1883 (UK) (46 and 47 Vict.,
c.57) provided for the hearing of oppositions
to grant, the grounds available were limited as follows:
(O)n the ground of the applicant havingIn 1888, sub-s. 11 (1) was amended by the addition at the end thereof of the words "but on no other ground". Lack of novelty was introduced only in the United Kingdom in 1907 and then in a narrow sense. Accordingly, in Australia, s. 56 of the 1903 Act, in permitting lack of novelty as a ground of objection to grant, was in advance of the British legislation. Griffith C.J. pointed this out in The Linotype Co. Ltd. (In Liquidation) v Mounsey [1909] HCA 39; (1909) 9 CLR 194 at 202.
obtained the invention from (the opponent),
or from a person of whom he is the legal
representative, or on the ground that the
invention has been patented in this country
on an application of prior date, or on the
ground of an examiner having reported to the
comptroller that the specification appears
to him to comprise the same invention as is
comprised in a specification bearing the
same or a similar title and accompanying a
previous application.
28. However, the question remains as to whether in 1903 there was drawn, either in Australia or Britain, any clear distinction between concepts of obviousness and lack of novelty as distinct grounds for revocation. In that regard, sub-s. 26 (3) of the Patents Designs and Trade Marks Act 1883 (UK) dealt with revocation in similar fashion to that which was adopted with sub-s. 86 (3) of the 1903 Australian Act; that is to say whilst the writ of scire facias had been abolished, the grounds upon which that remedy might have been had were preserved without elaboration.
29. Section 6 of the Statute of Monopolies of 1623 (21 Jac. I, c.3) preserved the prerogative to grant letters patent "of the sole working or making of any manner of new manufactures within this realm to the true and first inventor and inventors of such manufactures which others at the time of making such letters patent ... shall not use, so as also they be not ... generally inconvenient". Novelty thus was from the outset expressly required. There also had to be a manner of manufacture and a "true and first inventor". This expression was interpreted as including the "true and first importer" into the realm of an invention made abroad by a third party and copied by the importer (see Plimpton v Malcolmson (1876) 3 Ch D 531 at 555; Halsbury's Laws of England, 1st Ed., Vol. 22, pp 132-134; Bannon, "Australian Patent Law' 2' 11). Section 34 of the present Act makes it clear that this is not the law in Australia.
30. The position concerning novelty and obviousness, as it appeared in 1913
to Mr. H. Fletcher Moulton when publishing his "Letters
Patent for
Inventions", appears in the following passages from pp 17 and 21-22:
There are therefore these three questions to31. The passage which I have emphasised serves to illustrate what was then not as apparent as it has since become. As the law is now understood, novelty may be destroyed by a prior publication regardless of whether that publication became part of the fund of common general knowledge; in such a case, the question is not whether the invention later claimed represents an advance on "previous knowledge" in the sense of what was known and understood by those ordinarily conversant with developments in the particular field. On the other hand, if the activity which is relied upon as constituting prior publication also entered into the fund of common general knowledge, then, even today, it is readily to be seen how in a given case the concepts of lack of novelty and obviousness may overlap. The point was made by Windeyer J. in Sunbeam Corporation v Morphy-Richards (Australia) Pty. Ltd. (1961) 35 ALJR 212 at 218:
be considered in deciding whether the
alleged invention forms subject-matter for
letters patent. Firstly, is it a
manufacture? Secondly, is it new? Thirdly,
is it a new manufacture or in other words,
does it involve invention? This third
question by itself is often referred to as
the question of subject-matter ...
Although it might seem that the question of
novelty and the question of invention are
separate, they are usually very closely
connected in every patent case, and, in
fact, it will not be found that any
consistent distinction in terminology has
been observed by the Courts between novelty
and subject-matter in its restricted sense.
It will readily be seen that the distinction
is often one without any real difference.
In nearly every case the exact thing
patented has never been proposed before, and
the dispute is usually as to the extent of
the advance made on previous knowledge. In
such case the question, is the alleged
invention new, might be said to be solved by
the Court determining what advance on
previous knowledge would be necessary in
that case to constitute an invention and
then deciding if such advance had in fact
been made, while the question of subject-matter
would be decided by first determining
what advance had been made and then
considering whether such advance were
sufficient to constitute invention, and it
is usually very doubtful which process has
been adopted by the Court.
Consequently, in dealing with subject-matter
many decisions which are in form decisions
as to novelty will have to be considered.
(Emphasis supplied)
The distinctions between public, that isHowever, the fundamental point is that as the law has developed and the statutes have changed, it would be to distort the generally understood meaning of lack of novelty to introduce into it concepts of common general knowledge.
published, knowledge, which is relevant to
novelty, and common knowledge, which is
relevant to inventiveness, were always
easier to preserve in logic than in
practice. This is especially so in
scientific inventions, intricate mechanical
arrangements, chemical processes, electrical
and electronic devices and so forth. In
these fields the persons skilled in the art
are not just skilled artisans. They are
often trained engineers and scientists, who
are well versed in the periodical literature
of their subjects. Moreover, a description
of a particular thing or process is a
disclosure not only of the process or thing
in the exact form described, but of the same
thing or process in other forms the result
of the substitution of obvious chemical or
mechanical equivalents. So that the issues
of want of novelty and want of inventiveness
often overlapped in cases concerning
mechanical and chemical patents: see Gum v
Stevens [1923] HCA 48; (1923), 33 CLR 267, at p 272, per
Starke J.
32. The evolution of the distinction between novelty and obviousness appears
from the detailed discussion in the second edition of
Edmunds on "The Law and
Practice of Letters Patent for Inventions", published in 1897. The learned
author (at 83) referred to the
remarks of Lord Esher MR in The Edison Bell
Phonograph Corporation Ltd. v Smith (1894) 11 RPC 389 at 398 as indicating
that the expression "want of subject matter" conveyed an idea distinct from
"want of novelty". Lord Esher MR
had declared:
What is the meaning of want of subject-matter?Mr. Edmunds also referred to what was said in Gadd v Mayor etc. of Manchester (1892) 9 RPC 516 at 523-524 per Lindley L.J., and Lancashire Explosive Co. Ltd. v Roburite Explosives Co. Ltd. (1895) 12 RPC 470 at 477 (per Lord Herschell), 480 (per Smith LJ), as indicating the same view, albeit in less robust terms. Further, in Morris v Young (1895) 12 RPC 455 at 460, in the House of Lords it was pointed out, arguendo, that while particulars of novelty were required to be given under the relevant rules of Court, this was not required in respect of particulars of subject matter. The learned author then (at 84) expressed the view:
It is not the same thing as want of
invention, or rather I should say as want of
novelty: it is not the same thing as want
of utility, but, where you cannot maintain
either of those propositions which would be
sufficient to destroy the patent, it is
something else, which some one or other, at
some time, has invented as an idea for
destroying patents. And what is it? It
really comes to this, that although the
invention is new - that is, that nobody has
thought of it before - and although it is
useful, yet, when you consider it, you come
to the conclusion that it is so easy, so
palpable, that everybody who thought for a
moment would come to the same conclusion;
or, in more homely language, hardly
judicial, but rather businesslike, it comes
to this, it is so easy that any fool could
do it. Well, I look, as I say, upon that
objection, when all others have failed,
generally with amused contempt. It can be
made out, but hardly ever. When you find
that which I have stated, it is hard to
think that people would be buying and
selling a thing - and that has been
sometimes the whole thing - and yet the
objection should be taken that it is wanting
in subject-matter.
There is reason to believe that Lord Esher'sThe learned author then embarked upon a detailed analysis of the case law in three periods, that up to 1857, that from 1857 to 1884, and that since 1884. In respect of the period up to 1857, he drew the conclusion (at 89) that:
dictum conveys a true impression, and that,
in fact, want of invention or ingenuity, so
far as it is distinct from the defence of
want of novelty, is a modern defence to an
action for infringement, and was introduced
as a brake upon too rapid progress of
patents for analogous uses.
In saying this it is not intended to convey
the idea that the courts have gone beyond
the terms of the Statute in supporting the
plea. There seems ample reason for saying
(assuming novelty), that when there is a
want of ingenuity, the manufacture is not
one which can be patented under the
exception entertained in sect. 6 of the
Statute of Monopolies. If for no other
reason, a manufacture which falls within the
category of those which (to use Lord Esher's
expression) any fool could make, would not
be patentable, because it would be
"mischievous to the statute ... or generally
inconvenient". Moreover, it has long been
considered that the monopoly is the result
of a bargain with the Crown, the
consideration for which given by the
patentee is the increase to the general
knowledge contributed by him. Such
consideration would fail were the patentee
to disclose nothing but what any member of
the community, acquainted with the industry
in question would certainly be able to do
for himself.
(W)hilst many (cases) show that analogousIn respect of the period between 1857 and 1884, Mr. Edmunds concluded (at 89) that:
user of a known object is not sufficient to
enable the discoverer to get a patent (not
because of want of novelty, but because
there is no new manufacture given to the
public), the Judges were straining to
support patents for meritorious discoveries,
and were breaking in upon the old rule. On
the other hand, there was an anxiety to
protect the public against monopolies where
the alleged inventions were not of any real
merit. Amount of invention has so far not
consciously become a matter of serious
consideration.
During this period it will be found thatIn reaching this conclusion the learned author considered such decisions as Harwood v Great Northern Railway Co. [1865] EngR 708; (1865) 11 HLC 654; 11 ER 1488 and Hayward v Hamilton (1879-81) Griff P C 115, the latter indicating that whilst in 1879 a plea of "no invention" was considered as a different plea from that of want of novelty, Brett LJ (as Lord Esher then was) could not remember a case where the two had been separated. Mr. Edmunds then turned to the evolution of the case law since 1884, considering such decisions as Morgan & Co. v Windover & Co. (1890) 7 RPC 131; Gadd v Mayor etc. of Manchester (supra) and Longbottom v Shaw (1891) 8 RPC 333. He expressed his conclusions (at 95-96) in five propositions:
novelty, merit, and amount of invention are
all considered in determining whether there
is good subject-matter. At first the
tendency was to confound them more or less
together; later "novelty" becomes distinct
whilst merit, and ingenuity remain linked
together, ingenuity being in the nature of a
test of merit; and finally we reach the
modern idea, that an analogous application
is good subject-matter, if it be ingenious,
and not otherwise. Ingenuity, at first the
test of merit, becomes finally a matter of
importance in itself.
(1) Formerly "ingenuity", as distinct from33. By 1921, when the 6th edition of Terrell's "Letters Patent for Inventions" was published, there had been drawn a clear distinction in the treatment of novelty and want of subject matter; see Chapters 3 and 4 of that work. At pp 38 and 39, the distinction between the two is drawn by quotation from the judgment of Lindley LJ in Gadd's Case (supra) at 515. It is also to be noted that in the 6th edition, at pp 43-47, there is a discussion of decisions such as Harwood v Great Northern Railway Co. (supra); Morgan & Co. v Windover & Co. (supra) and Riekmann v Thierry (1896) 14 RPC 105, but that this is in the course of dealing with want of subject matter, not lack of novelty. These decisions are all referred to in the first group of High Court cases dealing with the word "novel" in s. 53 (e) of the 1903 Act.
"novelty", was not a requisite to validity.
(2) But a patent could not be granted for a
new use of an old contrivance (Losh v Hague
(1837) 1 WPC 200). (3) This was found to be
detrimental to public policy, and when a
really advantageous use for an old object
was discovered, the Courts struggled to
support it; see e.g. Crane v Price (1842) 1
WPC 393. It may be questioned whether, in
in principle, this was correct. No new
manufacture was produced. (4) Under this
state of the law many discoveries would be
admitted to patent rights which were not
within the spirit of sect. 6 of the Statute
of Monopolies, and a test between the good
and the bad was needed. Novelty and Merit
were usually the touchstones, and Ingenuity
was proof of either. Hence meritorious
discoveries of analogous uses, especially
when the novelty of the use was marked and
the difficulty of arriving at it great, were
protected, others were rejected. This is
the state of affairs between 1857 and 1880.
Finally (5) Ingenuity or invention is of
itself taken as the test of merit that will
support a patent for an analogous use. From
"analogous users" ingenuity, as a requisite,
has spread to every class of alleged
invention.
If this be true, it follows that "ingenuity"
is a requisite to be treated distinct from
novelty, but one which has been added to
patent law by modern Judges. It is a
counterpoise, so to speak, to the admission
of "analogous use" on the subject-matter of
a patent. It is justified by the words of
sect. 6 of the Statute of Monopolies, and is
now firmly fixed in our law.
34. The High Court cases in question are The Linotype Co. Ltd. (In
Liquidation) v Mounsey [1909] HCA 39; (1909) 9 CLR 194; McGlashan v Rabett [1977] FCA 14; (1909) 9 CLR 223;
May v Higgins [1916] HCA 8; (1916) 21 CLR 119; Gum v Stevens [1923] HCA 48; (1923) 33 CLR 267 and Henry
Berry & Company Pty. Ltd. v Potter [1924] HCA 43; (1924) 35 CLR 132. In Gum v Stevens
(supra) at 272, Starke J, in an observation later quoted with approval by
Windeyer J. in Sunbeam Corporation v
Morphy-Richards (Australia) Pty. Ltd.
(1961) 35 ALJR 212 at 218, said that "an objection to the grant of a patent on
the ground of want of novelty in the invention is not precluded merely
because
the same facts may also establish want of subject matter". Starke J. also
observed that there was "no very clear line of
demarcation between subject
matter and novelty". In The Linotype Co. Ltd. (In Liquidation) v Mounsey
(supra) at 202, Griffith C.J.
said:
Sec. 56 allows opposition to the grant of a35. Griffith C.J. then went on to refer to various English decisions including Harwood's Case (supra) and Morgan & Co. v Windover & Co. (supra). Isaacs J referred to Riekmann v Thierry (supra); his Honour dealt (at 210-211) with a submission that the observations in that case related entirely to subject matter as distinct from novelty, and did not apply to the objection under s. 56 that the invention was not new because it was anticipated. He seems to have treated anticipation as synonymous with lack of novelty. O'Connor J. (at 206) said that the question of whether s. 56 (e) of the Patents Act empowered the Commissioner to determine on an application for registration the issue of whether the difference between the invention claimed and an earlier publication involved such an exercise of inventive faculty as to constitute a "manner of new manufacture", was "exceedingly arguable". However, on the view he took of the facts, it was not necessary for him to decide the question.
patent on any of six grounds and no others,
two of which are (e) want of novelty, and
(f) prior publication. What is commonly and
conveniently called want of subject-matter
is not one of them. "Want of
subject-matter" really means that the
alleged invention is not a "manner of new
manufacture", and involves two questions,
whether it is a "manner of manufacture", and
whether it is new. An objection that the
alleged invention is for an idea only
without any means specified for giving
effect to it would fall under the first
head. The objection that it was already in
use or had been already patented would fall
under the second. Proof of want of novelty
is sufficient to support an objection for
want of subject-matter, but it does not
cover the whole ground open under that
objection. Both terms have long been used
in patent law. In my opinion the word
"novel" in sec. 56 (e) is to be read in the
sense which it has always been used in
patent law. As applied to the present case
it means that the alleged invention is
substantially identical with a process or
"manner of manufacture" already known to be
public, or, to adopt the words of Sir R.
Webster in In re Todd's Application 9 RPC
487, that the difference is not sufficient
to differentiate that which has gone before
from that which is claimed. This point was
properly raised by a plea that the alleged
invention was not new: Saxby v Gloucester
Waggon Co. 7 QBD 305.
36. Higgins J. dissented. He took the view (at 218-219) that a plea of want of inventiveness was distinct from a plea of want of novelty, and in support of that proposition his Honour cited the authorities collected in Frost on Patents, 3rd Ed., 1906, Vol. 1 at pp 403-404, and in Edmunds on Patents (1897) 2nd Ed., p 389. As I have said, Higgins J expressed the view (at 221) that in drawing s. 56 of the 1903 Act as it did, the Parliament indicated an intention that issues as to the presence or otherwise of inventiveness should not be determined on the "preliminary skirmishes" involved in deciding applications for grant; his Honour said he could not bring himself to think that the objection of want of inventiveness might be taken under two separate pleas "not novel" and "want of subject matter".
37. Later, in Gum v Stevens (supra) at 270, Isaacs J said that as used in s. 56 (e) of the 1903 Act, "novel" was a word of flexible and variable meaning and that when the novelty of a new application of an old device was challenged by way of objection to the grant of a patent, there was nothing which excluded the consideration of "invention" in the relevant sense, namely whether there had been an inventive act necessary to produce the invention relied upon.
38. The result of the High Court cases was to preserve within the meaning of
the term "novel" as it appeared in s. 56, elements of
what, it was becoming
increasingly clear in the United Kingdom authorities, was the distinct concept
of want of subject matter or
obviousness. In the events that have happened,
it is unnecessary and futile to speculate whether the view of Higgins J was
indeed
the better view as to the correct construction of s. 56 of the 1903
Act. What is important is that the earlier cases explained the
observation by
Dixon J. in Hume Pipe Company (Australia) Ltd. v Monier Industries Ltd. (1943)
13 OJP 575 at 578:
It is evident I think, that the applicant'sFor that proposition his Honour cited McGlashan v Rabett [1977] FCA 14; (1909) 9 CLR 223, The Linotype Co. Ltd. (In Liquidation) v Mounsey [1909] HCA 39; (1909) 9 CLR 194 and May v Higgins [1916] HCA 8; (1916) 21 CLR 119. In the last-mentioned case, Isaacs J (at 122) in the course of dealing with a case that evidently arose under s. 56, spoke of the inventive ingenuity necessary to support the novelty of a combination patent.
combination discloses a clear mechanical
difference of operation and construction.
It may be doubted whether the variations
exhibit the quality of inventiveness, but
this question is not one that is directly
raised by a plea of want of novelty. It is
true that it sometimes indirectly arises
because where the invention claimed cannot
be distinguished from what was already in
the possession of the public except by
differentiae which contributes nothing to
the result or to the means for producing it
or clearly involve no ingenuity or inventive
step the plea of want of novelty must be
considered as established in substance.
39. In Griffin v Isaacs (1938) 12 ALJ 169 at 170, Dixon J. said:
The whole thing suggests rather improvements40. The Report of a Committee under the Chairmanship of Sir Arthur Dean, appointed in 1950 to review the 1903 Act, was issued in 1952. In dealing with what became s. 59 of the 1952 Act, the Committee said (para. 65):
in arrangement and execution of well-known
methods than an inventive step or steps.
But as this is an opposition we are confined
to a consideration of novelty. The
decisions of this Court in McGlashan v
Rabett [1977] FCA 14; 9 CLR 223, Gum v Stevens [1923] HCA 48; 33 CLR 267
and Arnott v Peak Frean 9 ALJ 73 have
illustrated the difficulty of maintaining a
definite distinction between novelty and
subject matter.
Where variations from a device previously
published consist in matters which make no
substantial contribution to the working of
the thing or involve no ingenuity or
inventive step and the merit if any of the
two things, considered as inventions, is the
same, it is, I think, impossible to treat
the differences as giving novelty.
Clause 59 broadens the grounds of oppositionIn an unattributed article "The Patents Act 1952" (1953) 27 ALJ 2 at 3, it is said:
and states them in language consistent with
the language of the corresponding grounds of
revocation. Want of invention, or the fact
that an invention is obvious, is now made a
ground of opposition; this gives
legislative effect to the view taken by the
High Court of the position under the
existing Act.
The Committee states that legislative effectGriffin v Isaacs and the Present Act
has been given to the view taken by the High
Court under the existing Act that want of
invention or the fact that an invention is
obvious, is a ground of opposition. The
reference is apparently to cases such as Gum
v Stevens [1923] HCA 48; (1923) 33 CLR 267 and William
Arnott Ltd. v Peak Frean & Co. Ltd. (1935) 9
ALJ 73.
41. The difficulties to which Dixon J. had referred disappeared with the 1952
Act. The grounds of opposition have been widened.
A distinction is drawn in
the terms of the legislation between novelty and obviousness, both as to
opposition and as to revocation.
The present legislation is properly to be
regarded as meeting what was a somewhat anomalous situation that evolved in
the interpretation
of the 1903 Act. In my view, in construing the grounds of
opposition under the present Act it is not an element in the objection
on the
ground of lack of novelty that whilst there was no anticipation in the
necessary sense, nevertheless the difference in the
two is to be disregarded
because to come from the alleged anticipation to the alleged invention would
not have involved the exercise
of inventive ingenuity in the light of common
general knowledge. It follows that I agree with the approach taken by King J.
to this
issue.
Conclusion
42. The question then is whether the differences in the present case between the disclosure in the Greenman specification and the claimed invention might properly be described as mere mechanical equivalents or workshop variations. His Honour held against the appellant on these issues. In this respect the decision raises issues as to the particular application of legal principles, rather than the content of those principles.
43. I agree with what Lockhart J. has said upon the question of whether the differences between the disclosures of the Greenman specification and the invention claimed by the respondent answer the description of mere mechanical equivalents or workshop variations and I agree that no ground has been shown for interfering with the findings on these issues of the learned trial Judge.
44. Accordingly, I would dismiss the appeal with costs.
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