Caldwell v Commissioner of Patents [1916] HCA 52; (1916) 22 CLR 187 (19 September 1916)

HIGH COURT OF AUSTRALIA

Caldwell Appellant; and The Commissioner of Patents Respondent.

H C of A

19 September 1916

Griffith C.J., Barton and Rich JJ.

Schutt, for the appellant.

Starke, for the Commissioner of Patents, respondent.

Griffith C.J.

I think that there is enough in this case to show that the applicant should be allowed to proceed with his application. He claims to have invented a contrivance which will solve a problem which up to the present has been thought to be insoluble. It is said that thirty years ago someone invented a very similar contrivance, which however did not embody the element of combining two wheels in one. The problem of a workable contrivance had remained unsolved. When a man says he has discovered a means of doing something which people have for many years been unsuccessfully trying to do I think that it is a very strong thing to say to him "you have invented nothing and you shall not have a patent." I do not think that in a case of that sort the matter ought to be stayed at this stage. To direct the application to be received merely gives the applicant an opportunity of establishing that he has invented something in respect of which he should receive a patent.

I therefore think that the Commissioner should have accepted the application and specification.

Barton J.

On the whole I agree, although I have some doubts.

Rich J.

Having regard to Brunton's specification and to common knowledge, I doubt whether it would require inventive ingenuity to combine the various elements for the purpose in view: Mercedes Daimler Motor Co. Ltd. v. F.I.A.T. Motor Cab Co. Ltd.[1]. As, however, my learned brethren think that at this stage the matter should not be stopped, I will raise no further objection.

Appeal allowed. Commissioner directed to accept the application and specification.

Solicitor for the appellant, Louis Waxman.

Solicitor for the respondent, Gordon H. Castle, Crown Solicitor for the Commonwealth.

[1] 32 R.P.C., 393, at p. 413.