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High Court of Australia |
COMMISSIONER OF PATENTS v. MICROCELL LTD. (1959) 102 CLR 232
Patents
High Court of Australia
Menzies J.(1)
Dixon C.J.(2), McTiernan(2), Fullagar(2), Taylor(2) and Windeyer(2) JJ.
CATCHWORDS
Patents - Application - Refusal to accept - Powers and duties of Commissioner of Patents - Claim for new use of known materials in manufacture of well-known articles - Inventive step - Patents Act 1903-1950 (Cth), s. 46.*
HEARING
Melbourne, 1958, October 29, 30;DECISION
December 19, 1958.2. Reinforced plastic material was known before the priority date, viz. 21st August 1952, and had by then been put to many and varied uses. It was generally known that some reinforced plastic materials at least had great tensile strength and elasticity, high impact strength, and considerable resistance to heat. The extent of these qualities had not, I think, been determined. It was also known that it could really be made into tubes and tubes of sorts had been made. All this I gather from the specification and from certain publications referred to in the reasons of the Deputy Commissioner which deal with the properties and uses of reinforced plastic material. On these materials (and, apart from the affidavits to which I will refer later, they are all that I have) I am not, however, in a position to determine whether or not there had been tubes of reinforced plastic material in Australia before 21st August 1952, although I have noticed that it had been used for many purposes that would indicate that this was at least a possibility. (at p234)
3. The inventive step which was said to have been taken was that of using reinforced plastic tubes as self-propelled-rocket projectors and the invention for which patent is sought may be regarded as any tube of reinforced plastic material that is capable of use as a projector for self-propelled rockets. (at p234)
4. The Deputy Commissioner refused acceptance on the ground that the application was not for an invention because what was shown was nothing beyond putting a known material to a new use in making a known article for which the material was suitable because of its known properties, and thus it was in no way a manner of new manufacture. In so deciding the Deputy Commissioner applied the decision of Morton J. (as he then was) in Re L. & G.'s Application (1940) 58 RPC 21 (at p234)
5. Before me it was argued that all that the appellants had to show to entitle them to have their application and amended specification accepted was that the invention was in fact a manner of manufacture and that it was alleged to be new. In support of this contention reference was made to the final words of the definition of "invention" in s. 4, i.e. "and includes an alleged invention" and to statements in some English cases which, it is said, support the conclusion that an application should not be refused if the specification shows a manner of manufacture alleged to be new unless it appears that it has been anticipated or pre-claimed or unless the specification taken as a whole admits there is no invention in the sense of an inventive step. The authorities referred to are the statement of Lord Hewart C.J. in R. v. Comptroller-General of Patents (Ex parte Muntz) (1922) 39 R.P.C. 335, at p. 339, that the word "alleged" in the definition "goes only to the epithet 'new' and does not make that an invention which is not a manner of new manufacture but which the alleged inventor chooses to describe as an invention"; the approval given to this statement in Re Johnson's Patent (1937) 55 RPC 4, at pp 18, 19 and May and Baker Ltd. v. Boots Pure Drug Co. Ltd. (1950) 67 RPC 23, at p 33; and the decision of Sir Stafford Cripps S.-G. in Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185 and its approval in Re Johnson's Patent (1937) 55 RPC 4 where it is said: "The question whether or not a specification discloses a manner of manufacture is one for the Comptroller. The question whether, apart from prior publications and prior claims such as are specifically dealt with in sub-paragraphs (b) and (bb) of sub-section (I) of Section II, the manner of manufacture is 'new' is not one with which the Comptroller is concerned, as has been very clearly pointed out by Sir Stafford Cripps, when Solicitor-General, in Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185, in other words a manner of manufacture alleged to be new is an invention within the meaning of the Act. The truth of that allegation is a matter that can only be enquired into by the Court on a petition for revocation or in an action for infringement. This does not, however, mean that the Comptroller is bound to accept the allegation of the Application that his method of manufacture is new if it is apparent upon the face of the specification, when properly construed, that the allegation is unfounded. In order to construe the Specification properly the Comptroller must, of course, have regard to the meaning that would be attributed to its language by those skilled in the relevant art and for the purpose of ascertaining such meaning is entitled to receive evidence. But, if the Specification when so construed shows that the applicant is claiming a manner of manufacture that he alleges to be new, and the Specification when so construed does not itself show that allegation to be unfounded, evidence directed to establishing want of subject-matter or prior user is not permissible" (1937) 55 RPC, at p 19 It is to be observed that these principles have not precluded the English courts from rejecting applications on the ground that the invention claimed, although a manner of manufacture, is not a manner of new manufacture, Re L. & G.'s Application (1940) 58 RPC 21, but it is not necessary to ascertain the limits that are to be derived from the cases cited and other cases because there is a significant difference between the English and Australian Acts which makes it clear that in Australia whether the manner of manufacture claimed is "new" is a question with which the Commissioner must be concerned. In Australia, unlike England, the Act requires an examination for novelty prior to acceptance. The Australian Patents Act 1903-1950, s. 41(b), requires the investigation of an application and a report by an examiner "whether to the best of his knowledge the invention is or is not novel". The extent of this investigation and the sources of information to which resort may legitimately be had by the examiner under s. 41, the Commissioner under s. 46, and upon appeal the Court under s. 47, are matters which were not raised here and I refrain from discussing them. I would observe too that I regard the last words of the definition of "invention" (which have their origin in the Patents Designs and Trade Marks Act 1883, s. 46), as intended to do no more than make clear that when an application is made it can proceed in accordance with the Act without the applicant having to establish as a prerequisite to any step being taken that it is for an invention, i.e. a manner of new manufacture, and that the Commissioner is not bound by the applicant's allegation that his manner of manufacture is new any more than by the allegation that what is claimed is a manner of manufacture. (at p236)
6. Having regard to ss. 41 to 46 of the Patents Act 1903-1950, I have no doubt that there is ample power for the Commissioner to reject an application on the ground that what is claimed as an invention is not new and in a proper case it is his duty to do so but it is a well-established and proper practice that this power is exercised sparingly so that an application should be rejected only in an unmistakable case, because at the point of acceptance or rejection an application is still in its early stages when the materials for final decision are necessarily incomplete and because rejection, subject to appeal, is final whereas acceptance is not. (at p236)
7. The problem in this case is the correct application of these principles and here it is material that the appellants have, without objection, filed two affidavits that are of importance in two ways: firstly and more importantly, because it is deposed by experts that before the priority date reinforced plastic material was thought to have "such poor shock and poor high temperature performance" as to be quite unsuitable for self-propelled-rocket projectors; secondly, in showing that since the priority date experience has shown that reinforced plastic material is so suitable for that purpose that it has entirely displaced the other materials that were formerly in use. (at p236)
8. An examination of the complete specification has left me with the impression that the only inventive step alleged is the discovery that tubes of reinforced plastic material are suitable for self-propelled-rocket projectors. The material was known, the forming of the material into tubes was either known or obvious, the discovery is that reinforced plastic material "possessing a tensile strength of the same order as that of high tensile steel on a weight for weight basis is a very efficient material for use" as projector tubes "for guiding the initial path of a self-propelled-rocket missile". It is on the basis of this inventive step that the claim in its most comprehensive form is for "a self-propelled-rocket projector comprising a tube of synthetic resinous plastic material reinforced with mineral fibres". (at p237)
9. Were it not for the affidavits to which I have referred I would be disposed to agree with the Deputy Commissioner that the application should be refused on the ground he adopted but in face of that evidence that before the priority date no reinforced plastic material was thought to be suitable for making tubes for use as rocket projectors, I cannot be satisfied, as I think I must be satisfied if I am to reject the application, that it was known that reinforced plastic material possessed in the high degree necessary all the properties that have proved it so suitable for the purpose in question. Furthermore, it is not material for me at this stage to satisfy myself about the accuracy of this evidence; it is sufficient that I cannot say with assurance that it was previously known that reinforced plastic material had these qualities. It appears to me that I can properly adapt the language of Morton J. in Re L. & G.'s Application (1940) 58 RPC, at p 24 and on the material before me say that it is possible that the use for self-propelled-rocket projectors of reinforced plastic material, which had not previously been used for that purpose prior to August 1952, was due to theretofore unknown qualities of the material, and I say this notwithstanding that the qualities which according to the affidavits the material was thought to lack are not qualities to which any reference is made in the specification. (at p237)
10. Counsel for the Commissioner did however take up this last point and contend that a specification must be fatally defective if the inventive step depended upon something about which the specification is silent. I do not accept this argument because it is not a necessary element of the discovery that reinforced plastic material is suitable for making projectors that the inventor should appreciate and state why it is so. The important element for present purposes is not what the inventor thought was the reason why reinforced plastic material is suitable for rocket projectors but whether the already known qualities of that material established its suitability for the purpose in question. (at p238)
11. It was further argued for the Commissioner that as it is obvious that all reinforced plastic materials are not suitable for making self-propelled-rocket projectors, e.g. reinforced thermoplastic material, and further that not all tubes made of suitable reinforced plastic materials can be used to project rockets, e.g. tubes of small diameter, a claim for a tube of any diameter made of any reinforced plastic material is too wide and further definition is necessary, and that accordingly, the specification does not adequately describe the invention and so the application was in any event rightly rejected. In answer to this objection counsel for the appellant first of all denied its validity and in the second place relied upon the opening words of the claim "a self-propelled-rocket projector comprising" as limiting the following words "a tube of" reinforced plastic material to tubes which were suitable for that use both by reason of the qualities of the material and the size of the tube and cited The Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd. (1946) 63 RPC 113, at p 137 I am, of course, not prepared to decide that the specification does ascertain and describe the invention as it should and that the claim is not too wide, but, because I think that any final determination of these matters requires knowledge which I lack about both reinforced plastic materials and rockets and because I feel that I cannot upon this appeal achieve the certainty that is necessary, I have decided that I should not reject the application and the amended specification on this ground. It is not enough that I am in doubt about the sufficiency of the specification when that doubt is based upon matters that can be resolved by evidence. (at p238)
12. There is one other matter which was not argued at the hearing but has troubled me and has made me hesitate to decide that this application and amended specification should be accepted. The invention in the sense of the inventive step is, as I have said, the discovery of the suitability of tubes of reinforced plastic material for the purpose of rocket projectors; the invention for which a monopoly is claimed is not for a new use of reinforced plastic tubes but for the tubes themselves. It is at its narrowest for any tube of reinforced plastic material, however made, that is capable of being used to project any self-propelled-rocket and at its broadest, for any tube of such material of any size and of any strength. It appears to me that in either case the claim in respect of such tubes however they may come into existence, may be altogether outside an Act which provides protection for an invention in the sense of a manner of new manufacture and which furthermore requires in the specification a full statement of the manner in which the invention is to be performed. The cases which deny the patentability of a new substance irrespective of the manner in which it is brought into existence illustrate the kind of limitation that such provisions require. I have come to the conclusion, however, that I should not upon this appeal deal with what seems to me an important and difficult question. (at p239)
13. I have for the foregoing reasons come to the conclusion that I should allow the appeal and decide that the application and specification should be accepted. (at p239)
14. From this decision the respondent Commissioner appealed to the Full Court. (at p239)
15. L. Voumard Q.C. (with him W.H. Tredinnick), for the appellant. The invention claimed is the discovery that reinforced plastic may be put to a previously unknown use, viz., as a projector for a self-propelled rocket. The evidence shows that the essential characteristic of a tube for use as a rocket projector is that it should possess resistance to very high temperature and to very high impact force. The specification is silent upon these qualities. If they be essential qualities of the tube, it should be so stated in the specification. In any event the literature upon which the Commissioner relied clearly shows that for some time prior to 1952 reinforced plastic was known to possess the two qualities mentioned. No valid patent could be granted on the specification and, if the Court takes that view, it should support the Commissioner in refusing the grant. (He referred to Sir W.G. Armstrong Whitworth & Co. (Engineers) Ltd. v. Commissioner of Patents (1936) 42 ALR 131; Green v Stevens [1923] HCA 48; (1923) 33 CLR 267, at p 270 and McGregor v Commissioner of Patents (unreported - Starke J., 9th April, 1946.) The applicant has done no more than make use of the known properties of a known material to make a known apparatus. No inventive step is disclosed, and this clearly appears from the material published in Australia prior to 21st August 1952. Prior publication is sufficient to invalidate a patent or to justify the Commissioner in not granting a patent. (He referred to Hudson, Scott & Sons v. Barringer, Wallis and Manners Ltd. (1906) 23 RPC 502, at p 504; Wanganui Sash Co. Ltd. v. Maunder and Beavan (1930) 47 RPC 395, at p 402 and Terrell and Shelley on Patents, 9th ed. (1951) p. 118.) Upon the basis that the specification disclosed nothing not already known, Re L. & G.'s Application (1940) 58 RPC 21 determines this matter in favour of the Commissioner. Any conclusion of Menzies J., that this was a case where the proposed use for a particular apparatus of a known material was due to the discovery of hitherto unknown or unsuspected properties in the material is not justified by the specification, which neither discloses nor refers to any such properties. (He referred to Re I.G. Farben-industrie A.G.'s Patents (1930) 47 RPC 289, at p 323) Though the extent of the qualities mentioned inherent in reinforced plastic may not have been determined at the date of the specification, no particulars are given of the degree of resistance to heat or of strength required so as to show that new properties of any kind were required. The description of the material used in the manufacture is too wide. If the specification could otherwise be subject matter for a patent it might be amended; but that is not the case here. Since there is no new property disclosed, the specification must show a new manner of manufacture, but it claims no new manner of manufacture. It is also objectionable upon the ground that it covers all tubes made in the manner proposed. If there be any invention in the subject matter of the specification, it is not sufficiently described therein. Any such invention could consist only in the discovery that reinforced plastic had the essential qualities mentioned and that it was those qualities which made the tube suitable for use as a projector. Since no reference is made in the specification to the fact that these are essential qualities, the specification is not sufficient. (He referred to Clay v. Allcock & Co. Ltd. (1906) 23 RPC 745, at p 750 and Natural Colour Kinematograph Co. Ltd. (in Liquidation) v. Bioschemes Ltd. (1915) 32 RPC 256, at pp 266, 268) If the applicant claims that his invention is any tube of synthetic resinous plastic material reinforced in any way with any mineral fibres, then clearly there is no inventive step, because that covers all sorts of reinforced plastic tubes. If he seeks to limit his invention by reference to the factors of tensile strength and resistance to high temperature, then the opening claim of the specification claims more than the rest of the specification sets out and the grant should not be made. Finally, claim 1 is merely a claim for the tube itself and that is not proper subject matter for the grant of a patent: see Mullard Radio Valve Co. Ltd. v. Philco Radio Corporation (1936) 53 RPC 323, at pp 345, 346 and Adhesive Dry Mounting Co. Ltd. v. Trapp & Co. (1910) 27 RPC 341, at p 352 (at p240)
16. C.I. Menhennitt Q.C. (with him S.E.K. Hulme), for the respondents. The Commissioner is given no right of appeal under s. 47 from the decision of Menzies J. The scheme of the Act contemplates that there shall be an appeal under s. 47 by the applicant alone. Further the section by its operation excludes any appeal by the Commissioner to the Full Court. (He referred to s. 196 of the Income Tax and Social Services Contribution Assessment Act 1936 as amended, and Watson v. Federal Commissioner of Taxation [1953] HCA 98; (1953) 87 CLR 353) The section by implication excludes an appeal from a single Justice to the Full Court, and is further an exhaustive statement of the circumstances of an appeal. The matter was not debated in Commissioner of Patents v. Lee [1913] HCA 22; (1913) 16 CLR 138 In view of the final nature of a refusal to accept the application and specification the Commissioner should refuse only in the clearest case. At the stage of acceptance or refusal to accept it is inappropriate to embark upon a full investigation of the merits of the specification. If there be a genuine controversy at this stage, the application should not be rejected (He referred to Sir W.G. Armstrong Whitworth & Co. (Engineers) Ltd. v. Commissioner of Patents (1936) 42 ALR 131; Gum v Stevens [1923] HCA 48; (1923) 33 CLR 267, at p 270; McDonald v. Commissioner of Patents [1913] HCA 10; (1913) 15 CLR 713, at pp 718, 719; Caldwell v Commissioner of Patents [1916] HCA 52; (1916) 22 CLR 187, at pp 191, 192 and to the difference between ss. 41, 56 and 88, and s. 46.) There is a difference between rejection on the ground of obviousness and rejection on the ground of absence of novelty: H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [1957] HCA 47; (1957) 98 CLR 424, at p 437; Gadd and Mason v Mayor of Manchester (1892) 9 RPC 516, at pp 525, 526; Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185, at pp 187-189; Terrell on Patents 7th ed. (1927), p. 446; Re Sevag's Application (1938) 55 RPC 193, at p 195 The latter is easily demonstrable, but the former is not and for that reason there should be no rejection of the application at this stage. Use of a known substance for an old purpose to which the substance has not previously been put discloses subject matter. The only ground upon which the Commissioner refused to accept the application was that the invention had been anticipated by the literature. (He referred to Rogers v. Commissioner of Patents [1910] HCA 19; (1910) 10 CLR 701, at p 713; Re Johnson's Patent (1937) 55 RPC 4, at p 19 and May and Baker Ltd. v. Boots Pure Drug Co. Ltd. (1950) 67 RPC 23, at p 33) The findings of fact made by Menzies J. should not be disturbed. The invention was the discovery that this material had qualities appropriate to make it useful for this purpose; that was something not previously known. The tube must be both a tube which is used as a projector and which is suitable for that use: it must be a projector not merely a tube. That the tube must be strong enough to project rockets is clearly involved. The literature does not refer to such a case. If there be any doubt about the findings of Menzies J., it is not one which can be resolved at this stage. The following cases support his Honour's findings: see Osram Lamp Works Ltd. v. Pope Electric Lamp Co. Ltd. (1917) 34 RPC 369, at pp 379, 384, 396 and 397; Aktiengesellschaft fur Autogene Aluminium Schweissung v. London Aluminium Co. Ltd. (No. 2) (1922) 39 RPC 296, at p 307; Vickers Sons & Co. Ltd. v. Siddell (1890) 15 App Cas 496, at pp 501-504; Kaye v Chubb & Sons Ltd. (1887) 4 RPC 289, at p 298; Hickton's Patent Syndicate v. Patents and Machine Improvements Co. Ltd. (1909) 26 RPC 339, at pp 347, 348; Hill v Evans (1862) De GF & J 288, at pp 299, 300 [1862] EngR 365; (45 ER 1195, at p 1199); Re C.G.R.'s Application (1924) 42 RPC 320, at p 321 and Re I.G. Farbenindustrie A.G.'s Patents (1930) 47 RPC 289, at p 323 The fact that the invention is a commercial success demonstrates that it is not an obvious step: Non-Drip Measure Co. v. Strangers Ltd. (1943) 60 RPC 135, at pp 142, 143; Samuel Parkes & Co. Ltd. v. Cocker Bros. Ltd. (1929) 46 RPC 241 and Martin and Biro Swan Ltd v H Millwood Ltd (1956) RPC 139 The objection that the invention is not sufficiently described in the specification amounts to no more than a complaint that the reasons why the invention is successful are not stated. We adopt the statement of Menzies J., see Molins v. Industrial Machinery Co. Ltd. (1937) 55 RPC 31 The applicants do not have to explain why it was suitable. The manner in which the invention is to be carried out, the kind of fibres and the particular plastic to be used, the kind of tubes, their shape and assembly are described. That amounts to a description as to the manner in which the invention is to be performed. (at p242)
17. (WINDEYER J.: But you do know why it is patentable: because it is light and strong.) (at p242)
18. But it would not matter if we did not know: Crane v. Price (1842) 1 Web PC 377, at p 411; Liardet v. Johnson (1778) 1 Web PC 53 (at p242)
19. (DIXON C.J. referred to s. 36 of the Act.) (at p242)
20. (He referred to "Z" Electric Lamp Manufacturing Co. Ltd. v. Marples, Leach & Co. Ltd. (1910) 27 RPC 737, at p 746) The inventive act was the discovery of the suitability of this material for this particular use: the tube must be suitable in two ways, by reason of its shape and structure and by reason of the quality of the material used: Edison and Swan Electric Light Co. v. Holland (1889) 6 RPC 243, at p 280 The claim is not wide or ambiguous; the qualities required are described: The Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd. (1946) 63 RPC 113, at p 137 If necessary we rely on s. 61 of the Act: see Dabscheck v. Hecla Electrics Pty. Ltd. [1936] HCA 49; (1936) 57 CLR 418, at p 422 and s. 47(2) of the Act and Lee v. Commissioner of Patents [1912] HCA 84; (1912) 15 CLR 161, at p 171 The applicants are not claiming a patent merely for a tube, but for a tube suitable for use as a rocket projector by reason of its construction and its material. The appeal should be dismissed. (at p243)
21. L. Voumard Q.C., in reply referred to Fabrique Suisse v. Commissioner of
Patents (unreported, High Court, 17th October 1946).
If the alleged invention
consists merely in the discovery that reinforced plastic has the qualities
that make it fit for use as a
projector, no patent can be granted: Re I.G.
Farbenindustrie A.G.'s Patents (1930) 47 RPC 289, at p 322; Terrell and
Shelley on Patents,
9th ed. (1951), p. 129; Sharp and Dohme Inc. v. Boots Pure
Drug Co. Ltd. (1927) 44 RPC 367, at p 390; Aktiengesellschaft fur Autogene
Aluminium Schweissung v. London Aluminium Co. Ltd. (1922) 39 RPC 296; Losh v
Hague (1838) 1 Web PC 202, at p 208 and The Raleigh
Cycle Co. Ltd. v. H.
Miller and Co. Ltd. (1946) 63 RPC, at pp 141, 157 (On the amendment of the
specification he referred to Broadbent
v. Davies [1916] HCA 22; (1916) 21 CLR 253, at p 262
and on the considerations affecting the Court's view of the case generally
he
referred to Linotype
Co.
Ltd. v. Mounsey [1909] HCA 39; (1909) 9 CLR 194, at p 209)
Cur. adv. vult. (at p243)
September 10, 1959.
THE COURT delivered the following written judgment:-Menzies J. directing him to accept an application and complete specification which he had refused to accept. The application was made under, and is governed by, the now repealed Patents Act 1903-1950. (at p243)
This is an appeal by the Commissioner of Patents from an order made by
2. The complete specification, as amended before its rejection by the Commissioner, is entitled "Self-propelled-rocket Projectors and Process for their manufacture". Self-propelled-rocket projectors are described as "projectors for guiding the initial path of a self-propelled-rocket missile," and the invention is said to be for "improvements in or relating to" such projectors. The specification proceeds: "According to the present invention, a self-propelled-rocket projector comprises a tube of synthetic resinous plastic material reinforced with mineral fibres. The mineral fibres may be glass fibres, either randomly arranged in the resin or in the form of a directionally arranged mat of fibres or in the form of a woven fabric. Other strong mineral fibre reinforcing materials such as asbestos (preferably long fibre asbestos) may alternatively or additionally be employed in conjunction with a synthetic resinous material, particularly with a thermosetting material, e.g. a phenolic-formaldehyde resin. We have found that polyester plastic reinforced with glass fibres which possesses a tensile strength of the same order as that of high tensile steel on a weight for weight basis is a very efficient material for use in this invention. On account of its ease of manufacture and fabrication it may readily be formed into tubular projectors where great strength and lightness are required. The projector may consist of a single tube but preferably consists of an assemblage of tubes. The tubes may be of circular, square, hexagonal, or other cross-section and of the required length and of suitable wall thickness according to requirements. A number of tubes may be built into an integral structure to form a projector adapted to be carried, e.g. on or in an aircraft or as a nacelle". It is not necessary to set out the rest of the body of the specification which refers only to suggested details of manufacture, and admittedly contains nothing that was new at the relevant date. (at p244)
3. Claim 1 is for "A self-propelled-rocket projector comprising a tube of synthetic resinous plastic material reinforced with mineral fibres". There are sixteen other claims, but these again need not be set out, for we do not understand it to be suggested that, if claim 1 ought not to be accepted, there is any other claim that ought to be accepted. In fact most of the others are tied directly or indirectly to claim 1. (at p244)
4. Section 41 of the Act requires that, in the case of all complete specifications, an examiner shall report to the Commissioner (inter alia) "whether to the best of his knowledge the invention is or is not novel". This, of course, assumes that the complete specification discloses an invention within the meaning of the Act. Section 46, so far as material, provides: "If the Commissioner is satisfied that no objection exists to the specification on the ground that the invention is already patented in the Commonwealth or in any State or is already the subject of any prior application for a patent in the Commonwealth or in any State he shall in the absence of any other lawful ground of objection accept the application and specification without any condition, but if he is not so satisfied he may . . . (b) refuse to accept the application and specification". The words "any other lawful ground of objection" are very wide, but it is well settled that the Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid. As Menzies J. has pointed out, he will not normally have before him the material necessary for the formation of a concluded opinion. Moreover, whereas refusal of acceptance is final, acceptance is not: the application may be opposed after acceptance on any of the grounds mentioned in s. 56, and, if a patent is granted, its validity is open to attack in proceedings for infringement or for revocation. So, in McDonald v. Commissioner of Patents [1913] HCA 10; (1913) 15 CLR 713 (a case in which the validity of a patent granted on the specification may be thought to have been very doubtful) this Court allowed an appeal from the Commissioner, Griffith C.J. saying: "I think that it is only in a clear case, where it is obvious that a patent cannot be granted, that the Commissioner should reject an application altogether" (1913) 15 CLR, at p 717 (at p245)
5. On the other hand, it is not to be overlooked that the Commissioner has a duty to the public as well as to the applicant for a patent, and, if it appears manifest that a valid patent could not be granted, the Commissioner not merely has power, but is under a duty, to reject the application under s. 46. So, in Sir W.G. Armstrong Whitworth & Co. (Engineers) Ltd. v. Commissioner of Patents (1936) 42 ALR 131, Latham C.J. (Starke, Dixon, Evatt and McTiernan JJ. concurring) said: "Generally an application would not be stopped at this stage, unless it were a clear case as far as the subject-matter is concerned; but where the Court is of opinion that, on the face of it, it is clear that no valid patent could result from the grant, . . . I think the Commissioner may properly be supported in refusing to give the grant. In my opinion, it is much more proper that the Commissioner should do that than that it should be left to the chance of some member of the public being prepared to undertake the not inexpensive task of challenging a patent" (1936) 42 ALR, at pp 131, 132 (at p245)
6. Section 4 of the Act provides that the word "invention", except where otherwise clearly intended, "includes an alleged invention". Taking his stand on this, and citing a passage in the judgment of Lord Hewart L.C.J. in R. v. Comptroller-General of Patents (Ex parte Muntz) (1922) 39 RPC 335, at p 339 counsel for the applicants argued that, in order to entitle them to have their application and amended specification accepted, they were required to show no more than that the specification described a manner of manufacture and that it was alleged to be new. Menzies J. rejected this argument on the ground that s. 41 of the Commonwealth Act of 1903-1950 required the examiner to report whether the invention was or was not novel - a provision which was not found in the English legislation as it existed before 1949. (It may be noted, in passing, that the English Act of 1949 differs widely from the Commonwealth Act of 1952, the former being specific with regard to the matters to be taken into account in deciding whether a specification is to be accepted or not). It is unnecessary, we think, to determine whether the difference between the two earlier Acts is material, because the argument of the applicants is, in our opinion, in any case unsound. In Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185 Sir Stafford Cripps S-G said: "It has never been suggested that there is any inherent power to enquire fully into the question of subject-matter in the sense of quantum of invention" (1930) 48 RPC, at p 187 But he added: "It has, however, never been contended that either the Comptroller or the Law Officer is bound to accept an application or grant a patent where there is admittedly no invention in the sense of an inventive step, for in such a case the admission itself would disentitle the applicant to argue that there was even an 'alleged invention' disclosed. In such a case, therefore, the Comptroller and Law Officer would be bound to refuse the application or grant on the footing that no manner of new manufacture was disclosed" (1930) 48 RPC, at p 188 When the learned Solicitor-General uses the words "admittedly" and "admission", we do not take him as having in mind an express admission contained in the specification. It is most unlikely that an applicant would make such an admission. It must be enough to warrant rejection that it should be clear on its face that the specification discloses no inventive step. And, to quote Sir Stafford Cripps again "In construing the specification the Comptroller and Law Officer are, of course, entitled to take notice of the surrounding scientific facts which would be known to every person skilled in the particular art so far as these are established in evidence or are admitted in argument" (1930) 48 RPC, at p 188 (at p246)
7. The specification in the present case does not, in our opinion, disclose a patentable invention. It seems to us to fall within a class of case to which reference is made in Terrell on Patents, 8th ed. (1934), pp. 213, 214. The passage and the authorities cited for it are not to be found in the 9th edition (1951), but that is obviously because the relevant provisions of the English Act of 1949 are entirely different from those of the Act which was in force in 1934, when the 8th edition was published. The passage reads: "As has already been stated, the Comptroller has jurisdiction, both on application and opposition, to consider whether the invention is a 'manner of new manufacture' within the meaning of s. 93. In the exercise of this jurisdiction, applications have invariably been refused where the invention is merely for a new use of 'an old and well-known substance by itself, without saying more', and in such cases it is not enough for the applicant to show that he has produced a vendible article". (at p247)
8. A number of authorities are cited for these propositions. It is desirable to refer to two or three of those in which the decision has been given on a refusal to accept. In Re A.F.'s Application (1913) 31 RPC 58 the claim was for the use of a well-known substance as an insecticide, such use being new. The application was refused, and the refusal was upheld on appeal to the Law Officer. Sir Stanley Buckmaster S.-G. (as he then was) said: "It is an old and well-established principle that the mere discovery of a new use of a particular known product is not what is meant by invention within the meaning of the Patents Acts . . . I can nowhere find any case that throws doubt on the proposition that where by the alleged invention no new product is obtained, no new method of manufacture suggested nor an old one improved, the discovery cannot be protected by a grant of Letters Patent . . . I agree with much of Mr. Colefax's criticism as to the limitation placed upon the powers of the Comptroller at this stage of an application, but they do not relieve the Comptroller of the duty of determining that an article for which a Patent is sought is outside the whole scope of what is known as invention" (1913) 31 RPC, at pp 58, 59 In Re B.A.'s Application (1915) 32 RPC 348, the same learned Law Officer said: "In the present case there is nothing but a claim for a new use of an old substance. It cannot be disguised that that is its purpose, and I still say that I regard it as one of the well-established principles of Patent Law that when once a substance is known, its methods of production ascertained, its characteristics and its constituents well defined, you cannot patent the use of that for a purpose which was hitherto unknown" (1915) 32 RPC, at p 349 (at p247)
9. In Re D. Co.'s Application (1921) 38 RPC 397, Sir Ernest Pollock S.-G. (as he then was) quoted what had been said by Lord Buckmaster in Re B.A.'s Application (1915) 32 RPC, at p 349 in the course of upholding the comptroller's refusal to accept a claim for the use of a well-known substance as a fuel for certain internal combustion engines, such use having been unknown before. Sir Ernest Pollock then said: "Mr. Whitehead quite candidly says that cyclohexane is a well-known substance. What is suggested is that it was not known that it would be useful as a suitable fuel for these super-duty engines, but agreeing with Lord Buckmaster's statement in this case, and the principle that he lays down, that you cannot patent the use of a well-known substance for a purpose for which it was hitherto unknown, it seems to me that the claim here is merely for the use of this well-known substance as a fule. Discovery it may be, but invention it is not" (1921) 38 RPC, at p 399 Lord Buckmaster's statement of principle was again quoted by Sir Thomas Inskip S.-G. (as he then was) in Re C.G.R.'s Application (1924) 42 RPC 320, at p 321 (at p248)
10. The last case which it is necessary to mention is the case on which the Commissioner specifically relied in giving his reasons for declining to accept the applicant's specification. That is the case of Re L. & G.'s Application (1940) 58 RPC 21 In dismissing an appeal against a refusal of acceptance Morton J. (as he then was) said: "The result is, in my view, that the matter claimed is merely the use of a known material, having its surface oxidised by a known treatment, in the manufacture of known articles, for the reason that this material, so treated, possesses a known property rendering it useful for this purpose" (1940) 58 RPC, at p 23 It is interesting to note his Lordship's reference to, and approval of, part of the argument which had been presented by Mr. Oates, the Superintending Examiner. He said: "Mr. Oates informed me that the Patent Office regard this case as one of considerable importance. He submits that the mere fact that an Applicant says 'I make a particular article of a particular known material, and no prior document mentions the making of that particular article of this material' does not make that Applicant the inventor of a manner of new manufacture. Mr. Oates' argument continues: 'At the time stainless steel was invented we had a flood of applications for the manufacture in stainless steel of all sorts of articles. I submit it would be almost in restraint of trade if a man could come along and say: "Because no one else has mentioned such and such an article I am going to make it of stainless steel and get a patent for it"'" (1940) 58 RPC, at pp 23, 24 The example of stainless steel seems very apposite to the present case. If stainless steel and its properties were known, and many kinds of articles had been made of it, it would not be possible for a man to claim a monopoly for making kitchen sinks of stainless steel merely because he was the first man who ever thought of doing this. The suggestion that he could seems, not unnaturally, to have almost horrified Mr. Oates. Morton J., a little later referred to the practice of the Patent Office in such matters, and said that he saw no reason why it should not be continued. The reference to the practice is this: "Mr. Oates says that there is an established practice in the Office to refuse to grant a Patent in cases of this nature. He says, however, that the practice is subject to certain variations, and he gave the following examples: (1940) 58 RPC, at p 24 where a change or variation in the construction of the apparatus is rendered necessary by reason of the use of a particular kind of material not previously used for that purpose; (1930) 48 RPC 185 where the use for a particular apparatus of a known material not previously used for that purpose is due to a hitherto unknown or unsuspected property of the material; (1930) 48 RPC, at p 188 where the adaptation of the known material to the particular peice of apparatus leads to a new departure in the technique of the production of the apparatus" (1940) 58 RPC, at p 24 (at p249)
11. In the first passage quoted above from the judgment of Morton J. emphasis must, of course, be placed on the word "merely", as it must be placed on the word "mere" in Lord Buckmaster's statement of the principle. Many valid patents are for new uses of old things. But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before. (at p249)
12. The case of Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185 has been cited above for the statement of principle by Sir Stafford Cripps which is to be found in it (1930) 48 RPC, at p 188 Morton J. said that he applied that statement of principle in Re L. & G.'s Application (1940) 58 RPC, at pp 23, 24, and he does appear to us to have applied that statement of principle. It may well be doubted, however, whether the actual decision in the Compagnies Reunies Case (1930) 48 RPC 185 was in accord with that principle. The substance of the claim in that case was for the use of a "substantially unbreakable" glass, manufactured according to known methods, for the windscreens and windows of vehicles. This would seem very difficult to distinguish from Mr. Oates' stainless steel cases and from the claim in question in the L. & G. Case (1940) 58 RPC 21 It is to be noted that Sir Stafford Cripps, at the end of his decision in Re Application of Compagnies Reunies des Glaces (1930) 48 RPC 185 said: "I realise that in coming to this decision I may appear to have gone contrary to some of the decisions in the books, and, in so far as I may have done so, I must respectfully state that I differ from them" (1930) 48 RPC, at p 189 If there is any inconsistency with the other decisions, we would, with respect, prefer the other decisions. (at p250)
13. Here the specification does not on its face disclose more than a new use of a particular known product. To use Lord Buckmaster's words, no new product is obtained, and there is no new method of manufacture suggested or an old one improved. Tubular self-propelled-rocket projectors were at the relevant time well-known articles of manufacture. Synthetic resinous plastics reinforced with mineral fibres, and in particular polyester plastics reinforced with glass or asbestos fibres, were well-known materials. These things are to be gathered from the specification itself, which contains no suggestion of novelty in relation to the article to be manufactured or the material to be used. It further appears from matter published in Australia as early as 1946 that the reinforced plastic materials referred to in the specification had been used in the manufacture of a wide variety of articles. The properties of those materials were known generally, and in particular it was well known that they possessed that combination of great strength and lightness wherein, according to the specification itself, lies their virtue for the purpose in hand. The matter published in 1946 refers to their "extraordinary strength in relation to weight" - they are "stronger for their weight than steel" - and to their high tensile strength - another quality which the specification regards as a virtue for the purpose in hand. It was well known too that they possessed high impact strength and high resistance to heat. In these circumstances we do not think it can be said, merely because it does not seem previously to have occurred to anyone to make a rocket projector out of reinforced plastic, that any inventive idea is disclosed by the specification. It follows that this appeal must be allowed. (at p250)
14. It is clear that his Honour - he has indeed said so in terms - would have taken the same view of the case as is expressed above, if it had not been for two affidavits put in evidence by the applicants. These affidavits make two points. The first is that before the date of the application plastic material was generally thought to have "such poor shock and poor high temperature performance" as to be quite unsuitable for self-propelled-rocket projectors. The second is that later experience has led to the adoption of reinforced plastics for the making of rocket projectors to the practical exclusion of other materials. His Honour thought that these facts were sufficient to bring the case within the second of the three classes of case mentioned in the passage from the judgment of Morton J. in Re L. & G.'s Application (1940) 58 RPC, at p 24 which has been quoted above. (at p251)
15. The facts stated in the affidavits are, of course, relevant, and such facts have sometimes been decisive in cases of doubtful subject matter. But here the case seems so clear without them that we feel unable to attach any real weight to them. It may be true that it was generally thought at the relevant time that reinforced plastics had "poor shock and high temperature performance", but the matter published in 1946 shows that it was known that they possessed high impact strength and high resistance to heat, and the specification contains not the slightest hint or suggestion that the use of reinforced plastics for rocket projectors has been made possible by the discovery of some "hitherto unknown or unsuspected property of the material". We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do. (at p251)
16. This appeal should, in our opinion, be allowed. The order appealed from should be discharged, and in lieu thereof it should be ordered that the appeal of the applicants to this Court be dismissed. (at p251)
ORDER
Appeal allowed with costs. Discharge order of Menzies J., and in lieu thereof order that appeal of respondents from the Commissioner of Patents to the High Court be dismissed with costs.
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