Gum v Stevens [1923] HCA 48; (1923) 33 CLR 267 (31 October 1923)

HIGH COURT OF AUSTRALIA

Gum and Another Applicants, Appellants; and Stevens Opponent, Respondent.

H C of A

On appeal from the Supreme Court of Victoria.

31 October 1923

Knox C.J., Isaacs and Starke JJ.

Sproule, for the appellants.

Owen Dixon K.C. and Dixon Hearder, for the respondent,

The following written judgments were delivered:—

Oct. 31

Knox C.J.

The appellants applied for the grant of a patent for an invention for an improved lubricating device for vehicles. This application was opposed by the respondent, but the Commissioner ordered that the patent should be granted. This decision was reversed on appeal to the Supreme Court. Mann J. held that there was no novelty either of idea or of means in the alleged invention. He was satisfied that the patent if granted would obviously be bad, and that therefore the grant ought not to be made. I agree in his conclusion, and have nothing to add to the reasons expressed by him.

In my opinion the appeal should be dismissed.

Isaacs J.

In my opinion the judgment of Mann J. was perfectly correct. I only wish to add a few words on the contention for the appellants that invention is entirely foreign to the question of novelty in this case.

Mr. Sproule put his point very clearly, and relied on that portion of the head-note to McGlashan v. Rabett[1], which says:—"On an application for a patent of an invention it is not open to an opponent under sec 56 of the Trade Marks Act 1903" (meant, obviously, for Patents Act 1903) "to take the objection that the alleged invention does not involve any real exercise of the inventive faculty." We were informed that that statement has regulated the practice in the Patents Office. It is therefore very important to understand the matter. The statement in those broad terms is liable to be misunderstood, but it is quite easy to see how misunderstanding can arise. The words "invention" and "novel" are words of flexible and variable meaning. In British United Shoe Machinery Co. v. A. Fussell & Sons Ltd.[2] Fletcher Moulton L.J. says:—"The word invention is used in at least three 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." Now, there it must not be taken that McGlashan v. Rabett[3] decides that, when "novelty" is under consideration, there must be an absolute exclusion of "invention" in all its senses. "Novelty" or "newness" is also capable of being misunderstood and of being misapplied by reason of its flexibility of meaning. For present purposes it will be sufficient to refer to the case of Tatham v. Dania[4]. There Willes J., delivering the judgment of the Court (Bovill C.J., Willes and Keating JJ.), said[5]:—"I apprehend if a patentee would succeed it is 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 has 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." This is supported by the judgments in Clark v. Adie[6]. There is nothing in the judgments in McGlashan v. Rabett[7] which excludes the consideration of "invention" in the relevant sense when the "novelty" of a new application of an old device is challenged by way of objection to the grant of a patent.

The appeal should be dismissed.

Starke J.

An application was made by Thomas Samuel and Bertram Gordon Gum for letters patent for an "improved lubricating device for vehicles." It was granted by the Commissioner of Patents, but, on appeal to the Supreme Court of the State of Victoria, Mann J. reversed the decision of the Commissioner, and refused the application. And from the decision of Mann J. the applicants have brought an appeal to this Court.

Substantially, the invention claimed by the applicants was a lubricating device for vehicles, which consisted of a valve or nipple inserted in the arm of the axle adapted to pass lubricating material from a grease-gun, syringe, or pump, into lubricating ducts communicating with the lubricating area of the turned portion of the axle. Ducts as a means of supplying lubricant to the bearing surface of the axles of vehicles were known and used prior to the date of the application. Further, a lubricating device for vehicles which consisted of a common form of screw-top grease-cup, adapted to pass lubricating material into ducts communicating with the lubricating area of the turned surface of the axle, was also known. Moreover, as Mann J. says, "there was at the date of the application another well-known force-feeding device known as a grease-gun or syringe, the gun when in use being connected with the grease duct by means of a nipple screwed into the mouth of the duct." And indeed, the applicants in their provisional specification refer to the valve or nipple described by them, as of the ordinary well-known type. The substitution of the valve or nipple claimed by the applicants, for the cup, was therefore an obvious method of carrying out the same object, and by means of a device perfectly well known for lubricating purposes. There is certainly no subject matter in the so-called invention of the applicants.

But the learned counsel who appeared for them rightly said that the grounds of opposition to the grant of a patent did not cover want of subject matter, but want of novelty (Patents Act 1903-1909, sec. 56). And he relied upon the decisions of this Court in Linotype Co. v. Mounsey[8] and McGlashan v. Rabett[9]. But I think these cases have been misunderstood. There is no very clear line of demarcation between subject matter and novelty. In deciding whether there is subject matter for the alleged invention, there are, as is pointed out by Mr. H. Fletcher Moulton in his work on Patents, at p. 17, three questions for consideration: "Firstly, is it a manufacture? Secondly, is it new? Thirdly, is it a new manufacture or, in other words, does it involve invention?" As Griffith C.J. remarked in the Linotype Co.'s Case[10], "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." Consequently, 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.

The invention in the present case was, as already shown, lacking in novelty, and the appeal ought to be dismissed.

Appeal dismissed with costs.

Solicitor for the appellants, B. L. Bodycomb.

Solicitor for the respondent, F. B. Waters.

[1] [1977] FCA 14; (1909) 9 C.L.R., 223.

[2] (1908) 25 R.P.C., 631, at p. 651.

[3] [1977] FCA 14; (1909) 9 C.L.R., 223.

[4] (1869) Griffin's Pat. Cas., 213.

[5] (1869) Griffin's Pat. Cas., at p. 214.

[6] (1877) 2 App. Cas., 315, at pp. 326, 328-329, 333-334.

[7] [1977] FCA 14; (1909) 9 C.L.R., 223.

[8] [1909] HCA 39; (1909) 9 C.L.R., 194.

[9] [1977] FCA 14; (1909) 9 C.L.R., 223.

[10] (1909) 9 C.L.R., at p. 202.