Monotti, Ann L --- "The Scope of 'Manner of Manufacture' Under the Patents Act 1990 (Cth) after Grant v Commissioner of Patents" [2006] FedLawRw 17; (2006) 34(3) Federal Law Review 461
THE SCOPE OF 'MANNER OF MANUFACTURE' UNDER THE PATENTS ACT 1990
(CTH) AFTER GRANT V COMMISSIONER OF PATENTS
Ann L Monotti[*]
INTRODUCTION
From the time of the Statute of Monopolies 1623, 21 Jac 1, c 3 ('Statute of Monopolies'), the flexible concept of a 'manner of manufacture' was understood to involve some form of limitation which was expressed in the statute as being 'mischievous to the State … or hurt of trade, or generallie inconvenient'.[1] Years of judicial consideration resulted in various classes of subject matter being carved out as unpatentable. Apart from non-contentious material such as discoveries, ideas and principles of nature, these classes included methods of medical treatment for humans, horticultural and agricultural methods, computer programs, presentations of information, plans and business schemes.[2] The classes were relatively clear by 1959 when the High Court in National Research Development Corporation v Commissioner of Patents[3]
was asked to judge the patentability of an invention in an excluded class, namely a horticultural method. The trouble was that there were no consistent rationales to justify the excluded classes and to distinguish patentable from non-patentable subject matter. The High Court faced the quandary squarely, dismissed the proposition that horticultural and agricultural methods are unpatentable as a class and opened the way for future courts to approve the patentability of inventions that fell within this and other formerly excluded classes.[4] In consequence of NRDC, the mere fact that an invention may be called a method for medical treatment, a business method or a plan or scheme, for example, no longer prevents it being properly the subject of a patent.[5]
The present scope for restricting patentable subject matter is limited to the application of the ratio of NRDC (whatever that may be)[6] and to the minimal exclusions in the legislation.[7] These include the proviso to s 6 of the Statute of Monopolies, referred to as 'generally inconvenient', and human beings, and the biological processes for their generation.[8] In the case of innovation patents, plants and animals, and the biological processes for the generation of plants and animals are also expressly excluded.[9] Also excluded are inventions, the use of which would be contrary to law.[10] A further vehicle for exclusion comes from the requirement in s 18(1) and s 18(1A) that the invention is a 'manner of new manufacture', so that a claim for the use of a known material in the manufacture of known articles for a purpose for which its known properties make that material suitable cannot be subject matter for a patent.[11] However, this latter ground is related more to concepts of inventiveness than subject matter per se. In the absence of any of these limitations, patentability of the invention falls to be considered only upon compliance with the novelty, inventive step and utility requirements in s 18.
This article is not concerned with the express exclusions of patentable subject matter that appear in the Patents Act 1990 (Cth). Nor is it concerned with entering the debate about whether we should introduce express exclusions of classes of subject matter into the Patents Act 1990 (Cth) along the lines of the patent laws of countries that are party to the Convention on the Grant of European Patents.[12] There is a lively debate as to the proper scope of patentable subject matter, particularly in the context of inventions in the fields of biotechnology[13] and business methods or systems,[14] but there is no engagement with this debate in this article.[15] Rather, it explores the scope for restricting patentable subject matter through the judicial approach to both the principles for which NRDC is authority and reliance upon matters of public policy.
The vehicle for this exploration is the recent litigation in Grant v Commissioner of Patents.[16] This case involved an invention for structuring a financial transaction designed to protect an individual's assets against the lawful claims of the individual's creditors. The invention was outside the scope of what was generally considered as appropriate subject matter for a patent because it was not within a recognised field of science or technology and involved no technical application. Also, it fell within a general category of inventions that had traditionally been regarded as unpatentable, namely a financial or business scheme or plan. In this case, it was a scheme that took advantage of gaps or loopholes in the laws of Australia which made it even more controversial. An instinctive reaction is to reject this type of invention as unpatentable subject matter and to rely upon the authority of NRDC to reach this conclusion. However, as the litigation unfolded, it became obvious that the principles in NRDC were far from clear.
NRDC AND THE MEANING OF 'MANNER OF MANUFACTURE'
In order to place the discussion of Grant v Commissioner of Patents in a context, it is necessary to provide some explanation of how the concept of 'manner of manufacture' was understood at the time of NRDC. In addition to the restrictions imposed upon this concept through the development of unpatentable classes of subject matter, another general limitation that had no connection with a specific class of subject matter arose from the case of Re Application by GEC.[17] When this latter case was argued, the scope for processes to be patentable was unclear. In an attempt to clarify principles and to remove what might be unnecessary fetters on what might be patentable as a process, Lord Morton proposed guidelines that were based upon the development of the law to that point. He stated that a process would be patentable if it led to the production, preservation from deterioration, restoration or improvement of some vendible product to which the process is applied. He expressly disclaimed any intention that this proposition should become a rule that is applicable in all cases.
Despite the disclaimer, subsequent courts tended to apply these guidelines ('Morton's Rules') as a formula or definition which had the potential to limit the scope of patentable subject matter. The 'rules' were applied inconsistently. Some courts required a tangible product to be involved.[18] Others construed the concept of a 'vendible product' more flexibly to deal with advances in science.[19] When NRDC arose for decision, the time was ripe for the court to take stock, remove fixed formulae and to ask the broader question of whether the process was proper subject matter for a patent. The court was confronted with an invention for a process that used a known chemical for a purpose for which it was not known to be useful — namely eradicating weeds from crop areas. The process fell outside a literal interpretation of Morton's Rules as it did not produce, preserve, restore or improve some vendible product.
The central question for the court was whether the process was a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. The High Court rejected the need to define 'manufacture' and to search for a meaning of the words 'manner of manufacture'. They made it clear that the inquiry relates to the 'breadth of the concept which the law has developed by its consideration of the text and purpose of the Statute of Monopolies.'[20] The nature of the inquiry and the 'right question' appears in the following passage:
Is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?[21] [Passage 1]
The court emphasized that 'this is a very different question'[22] but did not make it clear whether this was the ratio of its decision. They stated that:
any attempt to state the ambit of s 6 of the Statute of Monopolies by precisely defining 'manufacture' is bound to fail. The purpose of s 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound. It would be unsound to the point of folly to attempt to do so now, when science has made such advances that the concrete applications of the notion which were familiar in 1623 can be seen to provide only the more obvious, not to say the more primitive, illustrations of the broad sweep of the concept.[23] [Passage 2]
The High Court then made a number of statements and qualifications to explain the state of development of the principles referred to in Passage 1 at the time of the hearing. The court reviewed various decisions that applied Morton's Rules, and expressed the 'broad idea' that underlies those and other decisions, in the following passage:
the underlying idea seems to be the same as that which Evershed J suggested in Rantzen's Case (1946) 64 RPC 63, 66, where he spoke of the expression 'vendible product' as laying proper emphasis upon the trading or industrial character of the processes intended to be comprehended by the Acts — their 'industrial or commercial or trading character' as Lloyd-Jacob J himself described it in Re Lenard's Application (1954) 71 RPC 190 at 192. The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … — that its value to the country is in the field of economic endeavour.[24] [Passage 3]
They proceeded to explain that the concept of a 'product' in relation to a process in Morton's Rules had come to be understood as:
something in which the new and useful effect may be observed. Sufficient authority has been cited to show that the 'something' need not be a 'thing' in the sense of an article; it may be any physical phenomenon in which the effect, be it creation or merely alteration, may be observed: a building (for example), a tract or stratum of land, an explosion, an electrical oscillation.[25] [Passage 4]
The actual agricultural process under consideration fell within that concept because its effect:
exhibits the two essential qualities upon which 'product' and 'vendible' seem designed to insist. It is a 'product' because it consists in an artificially created state of affairs, discernible by observing over a period the growth of weeds and crops respectively on sown land on which the method has been put into practice. And the significance of the product is economic; for it provides a remarkable advantage, indeed to the lay mind a sensational advantage, for one of the most elemental activities by which man has served his material needs, the cultivation of the soil for the production of its fruits.[26] [Passage 5]
Passage 5 amounts to the application of the guidelines contained within Morton's Rules to the facts of the case, but using paraphrased versions of 'vendible' and 'product' to convey the breadth of the concept of manner of manufacture as expressed in Passages 1 and 3 above.
The complexity of the legal issue combined with this number of significant passages in the judgment, as well as others, makes it difficult to find a clear ratio for the case. For some time after NRDC, it seems that courts viewed the essence of a patentable process to be its 'commercial application'[27] or 'commercially useful effect'.[28] Then, in 1994, the Full Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd[29] coined the phrase 'a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour'[30] in the context of its discussion of the principal passages in NRDC.
The italicized phrase — the 'CCOM Rule' — represents a catchy and easily understandable concept. It is not surprising that some courts have found the phrase an attractive alternative to or paraphrase of the text of NRDC itself. However, there are three principal reasons to reject any suggestion that it provides the meaning of patentable process under the Patents Act 1990 (Cth). First, it represents no more than a re-formulation of Morton's Rules in that 'artificially created state of affairs' takes the place of 'product' and 'field of economic endeavour' replaces 'vendible'. The CCOM Rule is open to the same qualification as applied to Morton's Rules: it operates as a guide rather than a rigid formula. The same comment applies to Passage 5 from NRDC, in that the actual language used in this passage does not establish necessary criteria for a manner of manufacture but merely explains the qualities of the invention before the court. The High Court would not have intended the italicized phrases in Passage 5 to be seen as a definition of manner of manufacture because the court had already denounced the idea of an 'exact verbal formula'.[31]
Secondly, the CCOM Rule does not capture the true intent of the NRDC judgment. It omits any concept of national interest that is integral to the High Court's reasoning. Furthermore, it purports to answer the question that NRDC identified as 'the right question' in Passage 1 above with reference only to this variation on Morton's Rules. Although these latter 'rules' were developed to keep pace with rapid changes in science and technology, they were not necessarily framed to take account of policy of an evolving nature. Rather, they explained the common features among cases that had been decided up to the time of NRDC in the context of the NRDC invention. In asking the question in Passage 1, the High Court envisaged that later courts would go through a similar process to identify the principles which had been developed for the application of s 6 of the Statute of Monopolies at the time of their decision. Those principles could be used to re-formulate the concept of 'vendible' and 'product' in the contemporary context. However formulated, they remain no more than a guideline to answering the question in Passage 1 for the purposes of resolving the invention in dispute.
Thirdly, these criteria of an artificially created state of affairs and a field of economic endeavour do not appear in any one passage in NRDC. They represent a short hand version of qualified concepts that appear in separate passages throughout the judgment. Qualifications include the requirement for an 'industrial or commercial or trading character',[32] that it belong to a 'useful art as distinct from a fine art',[33] that it have some 'utility in practical affairs',[34] that it have some economic 'significance'[35] and that the process must result in something in which a 'new and useful effect may be observed'.[36] These qualifications acknowledge that some restrictions on patentable subject matter are an accepted norm,[37] but the basis for drawing the distinction between patentable and unpatentable subject matter is not clear and may change over time.
Following CCOM, it was usual for judgments to set out the various passages in NRDC so that the application of the CCOM Rule was viewed within that wider context. However, it is now advantageous for inventors to view the criteria in isolation of any qualifications as they seek patents in fields of commercial endeavour that would not be classified within the traditional fields of science and technology. A recent development is to argue that the CCOM Rule or the equivalent phrases in Passage 5 in NRDC provide the sole criteria to establish 'manner of manufacture'.[38] For example, in a recent case before the Deputy Commissioner of Patents that involved an innovation patent for 'a method of releasing equity in real property', the applicant argued that the following is the answer to the essential question 'what is proper subject matter for the grant of a patent?'
it is sufficient that the invention involves 'an end produced' or a 'state of affairs' which is artificially created, in the sense that it is a result that did not naturally exist in the recognised field of [economic] endeavour prior to the development of the invention.[39]
The scope of patentable subject matter is almost limitless if this reflects the correct principle and philosophy. There is no international obligation for Australia to make patents available for all inventions. The obligation contained in article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights[40] is restricted to 'any inventions … in all fields of technology, provided that they are … capable of industrial application.' The phrase 'fields of technology' imports some restriction on the field of endeavour (even if its meaning is not clear), and we should not remove that restriction without careful consideration of the consequences. When the High Court framed its essential question to be whether 'this is a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies'[41] it expressly envisaged that courts in the 21st century would take account of the changed environment at that time. Although it was important to expand patentable subject matter and remove artificial fetters on patentable subject matter at the time of NRDC, there is no consensus that we should continue to expand the scope of patentable subject matter into all fields of endeavour so as to remove the remaining fetters on patentable subject matter. The continuing debates on whether methods of medical treatment, business systems and genes should be patentable subject matter demonstrate that there is no universal acceptance of an approach that would accept that anything under the sun invented by man is patentable. In the immediate past, it has not been clear whether there are limits on patentable subject matter or, if limits exist, what the appropriate principles are that apply in 2006 for identifying those limits. These questions were in focus in the litigation involving Stephen John Grant and the Commissioner of Patents.
GRANT V COMMISSIONER OF PATENTS
Initially, the case came before the Deputy Commissioner of Patents ('DCP') for decision following several examination reports that contained objections inter alia to the subject matter of the invention in Innovation Patent 2003100074 ('the Patent'), granted on 19 March 2004. The DCP rejected the invention as unpatentable subject matter.[42] Appeals against this decision by the patentee to the Federal Court[43] and the Full Federal Court[44] were all unsuccessful.
The case concerned an invention for a method for structuring a financial transaction designed to protect an individual's assets against the lawful claims of the individual's creditors. The invention involved no application of technology in any manner or form. Claim 1 of the Patent was as follows:
An asset protection method for protecting an asset owned by an owner, the method comprising the steps of:
(a) Establishing a trust having a trustee,
(b) The owner making a gift of a sum of money to the trust,
(c) The trustee making a loan of said sum of money from the trust to the owner, and
(d) The trustee securing the loan by taking a charge for said sum of money over the asset.[45]
The innovation patent was granted after the formalities check[46] and was later subjected to substantive examination upon request of the applicant.[47] One of the grounds upon which the examiner objected to the patent was that the invention was not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. He objected that the patent was for no more than a 'mere scheme or plan for doing business'.[48] Following several adverse examination reports, the applicant asked to be heard[49] and the hearing took place on 21 May 2004.[50]
THE DECISION OF THE DEPUTY COMMISSIONER OF PATENTS
The applicant's attorney rejected the proposition that the invention was a mere scheme or plan, the characteristic of which was the lack of any means of putting it into effect. Instead, he argued that the method in Claim 1 was a manner of manufacture because it produced an artificially created state of affairs with economic utility.[51] The argument was based upon Passage 4 from NRDC which reformulated Morton's Rules in terms to this effect. The attorney argued that the 'absence of any technology in any manner or form … [was] not relevant.'[52] Essentially, this is the CCOM Rule without the context of any other passages in NRDC. The DCP appears to have accepted this approach to the ratio in NRDC. He considered that the method was clearly of economic utility because 'professional advisers … mak[e] … full use of the law'[53] to 'look after their clients' assets'.[54] However, he concluded that the invention '[did] not result in an "artificially created state of affairs" … [and was] not … a manner of manufacture'.[55]
The trail of his reasoning shows how hard it is to find a logical rationale to reject an invention within the framework of the CCOM Rule. He concluded that the invention '[did] not involve any discovery of a law of nature, or involve the application of technology in [any] … form to perform the process … claimed'[56] so as to 'result in an artificially created state of affairs'.[57] His approach focused upon the distinction between the application of a 'discovery of … law[s] of nature'[58] which can result in an artificially created state of affairs and 'a discovery in relation to the laws of Australia [that is] … useful in the affairs of the populace.'[59] He concluded, using a reasoned approach and a policy approach, that the latter did not result in an artificially created state of affairs.[60] The reasoned approach assumes that 'the legislature [is taken to] … enact … the law in full knowledge of all its consequences',[61] including the consequences of discovering and applying any loopholes in those laws. Therefore, 'the [resulting] state of affairs was already present in the laws of Australia',[62] even if it was not actually known. This may be an ingenious way in which to exclude the invention from patentability, but it is not entirely convincing. At face value, there seems to be an artificially created state of affairs that arises from use of the method, namely that financial rights and obligations have changed. It is difficult to find a principled reason to reject this subject matter when the assessment considers only these criteria.
The policy approach derives from the fundamental importance of law to the proper function of society. The DCP did not:
believe that it is open (or proper) for the Commissioner of Patents to grant monopoly rights over certain aspects of Australian law. The law is for the populace at large; it is not for the use of one individual to the exclusion of all others who desire to follow the law.[63]
The DCP could have based this argument in the language of the proviso to s 6 of the Statute of Monopolies as being 'mischievous to the state, or generally inconvenient'[64] but chose not to do so. The difficulties with the reasoned approach caused Charles Lawson to comment:
Whatever the justifications for preventing the patenting of aspects of the law, the reasoning in Grant's Application highlights the necessity for a practical and generally applicable 'public interest' exemption.[65]
The applicant appealed from the decision and sought an application under s 101F(4) of the Patents Act 1990
(Cth) to overturn the DCP's revocation of the patent.
THE DECISION IN THE FEDERAL COURT
Her Honour Branson J took a totally different approach and rejected the proposition that the High Court was prescribing a manner of manufacture to be a process that has as its end result an artificially created state of affairs of economic significance.[66] In her view, this language was to be understood 'in the context of the subject matter under consideration in [the NRDC Case].'[67] It was not to be seen as a definition of manner of manufacture.[68] By taking this stance, it meant that her Honour avoided the issue of whether the invention resulted in an artificially created state of affairs — one that was inherently problematic. There is no suggestion in NRDC that these modified Morton's Rules set out in Passage 5 and subsequently articulated in the form of the CCOM Rule were to assume the character of a definition or binding principle.
The controversial aspect of the reasoning concerns her Honour's identification of the ratio decidendi in NRDC. Of the numerous passages that courts generally cite when they discuss NRDC, Passages 1, 3 and 4 above have the appearance of binding principles. The issue is whether they are all part of the ratio, or whether Passage 1 alone or in combination with Passages 3 and/or 4 is binding. Her Honour took the view that Passage 1 alone expresses the ratio and referred to Passage 3 for guidance as opposed to a binding principle.[69] She did not mention Passage 4. She focused upon the 'true question'[70] in Passage 1, namely: '[i]s this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies?'[71]
She sought inspiration for principles from outside the text of NRDC and derived the relevant principle to apply to this invention from 'the theoretical justification for the grant of a patent, that is, the assumed value of inventive ingenuity to the economy of the country.'[72] This is the principle that 'an invention should only enjoy the protection of a patent if the social cost of the resulting restrictions upon the use of the invention is counterbalanced by resulting social benefits.'[73]
She identified value to the country as a social benefit — as noted in the NRDC decision in Passage 3 above. As this invention had '[no] value to the country',[74] but was merely 'of value … to those whose assets are ultimately protected — and possibly to their professional advisers'[75] — the invention was not proper subject matter. The successful operation of the invention would deny payment to an important section of society, namely the creditors. The necessary counterbalancing of social benefit against social cost was absent. She concluded that this invention failed this test because 'the invention … [would] not advance the public interest but … [would] merely advance private interests.'[76]
Her Honour proceeded to identify another area where social costs and benefits were unbalanced to provide further support for her conclusion that this was unsuitable subject matter for a patent. This lay in the fact that performance of the invention would not advance the public interest as set out in the Bankruptcy
Act 1966
(Cth). She commented as follows:
Moreover, the law of Australia assumes that the public interest is served by individuals paying their debts as and when they fall due. The Bankruptcy
Act 1966
(Cth) reflects a legislative policy that creditors may ultimately have recourse to a debtor's assets should the debtor not otherwise be able to pay his or her debts. The invention of a 'method for protecting an asset owned by an owner' within the meaning of claim 1 of the patent is thus the invention of a method by which the owner may be insulated from the operation of laws intended to serve the public interest. In my view, this is an additional reason why the invention of the subject matter of the patent is not a proper subject of letters patent according to the principles which have been developed for the application of s 6
of the Statute of Monopolies. A court of law must assume that the performance of the invention will not advance the public interest but merely advance private interests. The social cost of conferring on the invention the protection of a patent would therefore not be counterbalanced by any resultant benefit to the public.[77]
Her Honour did not connect this social cost to the NRDC requirement for value to the country in the field of economic endeavour. Hence, she disregarded Passage 3 as providing the essence of patentable processes. Instead, she interpreted the ratio of NRDC at its widest possible scope as being the question set out in Passage 1 above.[78]
This identification of the ratio allowed her to engage in policy analysis based upon balancing social costs and benefits without being confined to any textual expressions in the NRDC judgment. Her Honour saw the balancing of social costs and benefits as integral to the concept of manner of manufacture itself, as opposed to an inquiry that is carried out within the context of 'mischievous to the State … or generall[y] … inconvenient'.[79]
At first glance, it appears that she has swept away what seems to be a clear expression by the High Court of an underlying principle from earlier cases, namely:
The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … — that its value to the country is in the field of economic endeavour.[80]
However, to some extent her approach is consistent with this principle. An invention may present these qualities but be rejected on the broader principle upon which the patent system is based. This is a legitimate approach to take. The following fundamental principle of statutory interpretation is set out in s15AA(1) of the Acts Interpretation Act 1901 (Cth):
15AA Regard to be had to purpose or object of Act
(1) In the interpretation of a provision of an Act, a construction that would promote the purpose or object underlying the Act (whether that purpose or object is expressly stated in the Act or not) shall be preferred to a construction that would not promote that purpose or object.
Therefore, Branson J was entitled to decide that it would not promote the purpose of the Patents Act 1990 (Cth) to recognise this particular invention as suitable subject matter for the grant of a monopoly. What was that purpose? The Industrial Property Advisory Committee ('IPAC') in its 1984 report on the Australian patent system ('the IPAC report') stated:
The policy approach to review and change should seek to optimise the net benefits arising from the operation of the patent system in the national interest to the extent possible consistent with international conventions, having regard to the particular circumstances of the Australian economy. We should seek to modify the Australian patent laws, adjusting the length, strength and breadth of patent rights so as to maximise the social benefits and to minimise the social costs to Australians.
More specifically, this implies seeking –
to gain increased benefits for Australians by fostering indigenous innovation, and utilising the international patent system in developing export markets to improve Australia's international competitive position;
to reduce unnecessary social costs including those resulting from undesirable anti-competitive conduct involving patents; and
to improve the efficiency of the administration of the patent system with consequent reduction of direct costs.[81]
The Government response to the IPAC report[82] and the subsequent second reading speeches[83] that accompanied both the Patents Bill 1989 (Cth) and its 'reincarnation' in the form of the Patents Bill 1990 (Cth) also accept the policy in this form. This policy highlights that a monopoly balances social costs and social benefits and is granted to provide benefits for those that develop and commercialise new technologies. As Mr Crean stated:
The essence of the patent system is to encourage entrepreneurs to develop and commercialise new technology. Since a patent confers a limited monopoly over the use of the patented technology, the patent owner has the opportunity to make a profit from it, gaining a return on investment in innovation. The international character of the patent system makes patents a useful tool in penetrating export markets.[84]
Hence, the policy that Branson J identifies is consistent with that which underpins the Patents Act 1990 (Cth).
Nevertheless, the identification of the ratio and the rejection of Passage 3 as binding principle are bound to be controversial.[85]
Such an approach that allows the consideration of public policy to impose limits on the concept of 'manner of manufacture' contrasts with the traditional way in which matters of public policy are argued, namely by reference to the exception in s 6 of the Statute of Monopolies for inventions that are 'mischievous to the State or generally inconvenient'. Traditionally, the 'generally inconvenient' argument is used to reject an invention that is otherwise a manner of manufacture.[86] In recent times, it has been raised in the context of the invention being within a class of inventions that is generally inconvenient, such as methods of medical treatment for humans, schemes and plans and directions for doing things. Finkelstein J expressed the traditional approach in the following way:
A principled approach to the question whether a medical or surgical process is patentable requires the resolution of two separate issues. First, is such a process 'a manner of new manufacture' within s 6 of the Statute of Monopolies? Secondly, if such a process is 'a manner of new manufacture', does it fall within the proviso so as to be excluded from patentability?
In stating the first question in this way, I do not mean to suggest that the answer depends upon an interpretation of the word 'manufacture' or the words 'new manufacture' in s 6. The true question is whether, in the developing concepts of patent law, a medical or surgical process is a proper subject of letters patent under the … [Patents Act 1990 (Cth)]: see NRDC [1959] HCA 67; [102 CLR 252, 269]. However, I have adopted the form of the first question in order to distinguish between an inquiry into subject matter, strictly so called, and the operation of the proviso. I do not believe it is likely that in separating the two issues in the way that I have that, for that reason, I will arrive at an incorrect conclusion.
The answer to the first question admits of no doubt and must be in the affirmative. In the first place in NRDC the High Court confirmed what had already long been established: that the word 'manufacture' comprehends a process that produces a useful result and that it is not necessary for that process to bring into existence or relate to a vendible product.[87]
OBSERVATIONS
The above discussion suggests that it is possible to find the invention in the Grant litigation to be unsuitable subject matter by relying upon Passage 3 in NRDC and the proviso to s 6. First, the invention provided no economic value to the country. Secondly, it could be argued as within the 'fine arts', but this is not convincing. Thirdly, it is also possible to argue that this invention is 'generally inconvenient'. It was not necessary for Branson J to construe the ratio in NRDC in the way that she did to reach her conclusion.
Nevertheless, she deliberately interpreted the NRDC ratio in its most general and expansive manner to provide her with the flexibility to exclude this invention with reference to one identified principle, which balances social costs and benefits, that is capable of being supplemented with other principles. Branson J identified one additional and uncontroversial principle as being that 'the notion of what is patentable must remain flexible in order for patent law to keep pace with scientific and technological developments.'[88] She identified two further possible principles that would limit patentable subject matter, but drew no conclusions about their validity. One is that 'patent protection is only available in respect of inventions which reflect scientific or technological developments.'[89] It must be pointed out that she was conscious that this may prove to be of 'little more assistance than the presently accepted dichotomy between useful and fine arts.'[90] Another is that patent protection is not available for any invention 'that consists of a method of applying the law.'[91] This bears some resemblance to the approach of 19th century courts, where there was a 'willingness … to consider the impact of individual grants on sections of the public when determining issues of patent validity.'[92]
The outcome that Branson J achieved on the facts of the case with the application of her reasoning may be no different from accepting that the invention was a manner of manufacture but finding it to be 'generally inconvenient'. However, this may not always be the case, as a balancing of social costs and social benefits is not necessarily the same as finding something to be 'generally inconvenient'. The balancing approach suggests that any tipping of the scales towards greater social costs than benefits would justify rejection of the invention. The concept of 'generally inconvenient' may require more than a mere lack of balance; some greater impact on social costs might be necessary. Currently, the lack of judicial comment on this concept makes this impossible to assess, but the general reluctance to engage with the concept suggests it is a more onerous standard.
There is a significant consequence if the 'generally inconvenient' standard is different from Branson J's expressed policy. If one adopts Finkelstein J's 'two tier' approach to the assessment of general inconvenience, a conclusion that the subject matter is not patentable after the application of her Honour's policy means that an objection of general inconvenience is not relevant. On the other hand, a conclusion that the invention is patentable would not attract a successful general inconvenience objection because the social costs and benefits had necessarily been found to be balanced. Hence, if her Honour's approach is correct, it would define the way in which 'general inconvenience' is assessed or make it redundant. Another way to approach this is to reject the 'two tier' approach to assessment of general inconvenience, so that her Honour's approach provides a guideline for the assessment of general inconvenience as opposed to a replacement for it. This may be less controversial if it is explained in terms of using the general principles for statutory interpretation in s 15AA of the Acts Interpretation Act 1901 (Cth) to provide that guide.
THE DECISION IN THE FULL FEDERAL COURT
The appeal to the Full Federal Court was dismissed on different reasoning again. The Court delivered a single judgment in which they decided that the invention was not a manner of manufacture but was '"intellectual information", mere working directions and a scheme.'[93] This was the original ground on which the examiner had rejected the invention, but was not a ground for the decision of either the DCP or Branson J. The Court confirmed that no limit is imposed by reference to classes of inventions known as 'business methods'. A method may be called a business method but still satisfy the requirements for a manner of manufacture.[94]
The Court's reasoning proceeded in the following way. First, they confirmed that the decision and reasoning in NRDC provides the basis for determining whether or not an invention is patentable. They identified the relevant principles for which NRDC is authority as follows:
The inquiry is into the scope of the permissible subject matter of letters patent protected by s 6 of the Statute of Monopolies. It is determined according to the breadth of the concept and principles which the law has developed for the application of s 6 (at 269). Those principles are applied flexibly, recognising that developments and inventions are 'excitingly unpredictable' (at 271).[95]
The Court appears to acknowledge in this passage that it is the role of the judiciary to decide the scope of permissible subject matter — and to therefore determine its limitations — according to principles which the judiciary develops. The Court does not highlight the question in Passage 1 as the essential inquiry or ratio of NRDC but rather combines some of the text preceding that passage and part of the text in Passage 2 in a paraphrase of that section of the NRDC judgment. The Court uses the question in Passage 1 and the substance of the above passages from NRDC to explain how the High Court reached the conclusion in NRDC that the process was patentable.
The second aspect of the reasoning in the Full Court decision is to analyse the historical development of what has been considered to be appropriate subject matter for a patent. Although this is not expressly stated, it appears that this analysis is for the purpose of determining the breadth of the concept and the principles that had developed for the application of s 6 up to the time of their decision in 2006. This section of their judgment ranges across a series of Australian, US and UK cases and focuses upon two continuing threads. The first is the concept that traditional non patentable subject matter such as laws of nature, business, commercial and financial schemes, legal advices, working directions, abstract ideas, natural phenomena, and mere intellectual information involves no practical application of the abstract idea or information. The second is that where an invention was found to be patentable, its operation involved some physically observable effect in the sense of a concrete effect or phenomenon or manifestation or transformation.
The third step in the Court's reasoning was to consider the applicant's contentions and draw conclusions. As was mentioned above, the applicant relied upon Passage 5 from NRDC and the CCOM Rule to argue that the concept of manner of manufacture requires only the creation of an artificial state of affairs with economic utility. Mr Grant contended that the state of affairs created by the trust, gift, loan and mortgage specified in Claim 1 of the patent specification satisfied this requirement: the artificial state of affairs is that financial rights and obligations have changed. He conceded that there was no physical object or physical phenomenon as part of the invention but that this was unnecessary.[96] He pointed out that a physical phenomenon would be present if the documents constituting the trust, making the gift, detailing the loan or recording the mortgage are produced using a computer.
The Full Court impliedly accepted the concept of an artificially created state of affairs in a field of economic endeavour, or with economic utility, but they use this as a guideline as opposed to a rigid principle. Furthermore, it is qualified by the principles which they identify as having been developed by the courts for determining whether a method is patentable: namely, they require 'some "useful product", some physical phenomenon or effect resulting from the working of a method'.[97] The Court concluded that this physical effect was absent in this case. Their assessment was that the invention was a mere scheme, an abstract idea and mere intellectual information with no physical consequence at all.[98] In drawing this conclusion, they implicitly rejected the applicant's argument that the creation of documents using a computer would satisfy this criterion.
Therefore, the Court recognised that the criterion of a manner of manufacture remains a real criterion for patentability that is additional to that of novelty and inventive or innovative step. It has some recognised limits. The Court used this rationale of 'operation and effect' of the process to reject the invention as unpatentable. They also recognised that there are realms of 'human endeavour outside those in which patents may be granted.'[99] One of these is the fine arts, and they held that another is the practice of law. The Court offered two bases for drawing the conclusion that legal advices, schemes, arguments and the like are not a manner of manufacture. The first is that the interpretation and application of the law would not be considered to have an 'industrial or commercial or trading character' in the words of Passage 3 of NRDC. The second seems to suggest that the new kinds of transactions or litigation arguments may warrant the description of discoveries. Therefore, if the 'operation and effect' of the process had been satisfied with some physical phenomenon resulting from the operation of the method, the court would presumably have rejected the invention on the ground that it was a legal scheme.
However, apart from these two realms of human endeavour, the court was not prepared to limit further the realms in which patents can be granted to that of science and technology. In Peter Szabo and Associates Pty Ltd,[100] the DCP had used this ground to reject an invention that related generally '"to a method of releasing equity in real property … particularly, though not exclusively, to a method of releasing equity in residential property for aged home owners."'[101] The DCP decided that this invention was not patentable because the concept of an artificially created state of affairs discussed in NRDC required 'the application of science or technology in some material manner.'[102] The Full Court was not prepared to confirm this view expressed by the DCP. The principal reasons for this refusal were expressed as the difficulties in deciding what is or is not to be described as science or technology and the fear that this could risk rigidity in approach of a kind that the High Court in NRDC had warned against. At the trial, Branson J had also drawn no concluded view as to whether the need for the application of science or technology in some material manner was an underlying principle or requirement of patent law.
Finally, even though the Commissioner did not rely upon any balancing of private and public interests on the appeal, the Full Court alluded to the primary judge's discussion of this balance. They observed that the court is not in a position to undertake any balancing of social cost and public policy in relation to specific inventions. They also observed that Parliament has already made that judgment by rewarding innovation with a time-limited monopoly. However, it is worth noting that there is a distinction between the policy decision to grant monopolies for inventions on the one hand (a matter for Parliament) and the policy decision to reject certain specific inventions that come before the courts for decision. This distinction is clear in the words of s 6 of the Statute of Monopolies where it excludes from patentability inventions that are 'generally inconvenient'.
OBSERVATIONS
Although there are marked differences in the reasoning of the Full Court and the primary judge, there are important similarities in that both reject the unqualified CCOM Rule and refocus attention on the breadth of the concept of manner of manufacture and principles that have developed for the application of s 6 of the Statute of Monopolies. In doing so, they all come to the same conclusion that the invention was not patentable subject matter. Where they differ is in their identification of the applicable principles. Whereas Branson J moved outside NRDC to identify more fundamental principles that involve balancing social costs and benefits in each individual case, the Full Court attempted to articulate a rational principle within the language of NRDC, without resorting overtly to public policy considerations.
It is not clear that they have been successful. Although the Full Court did not acknowledge that they applied public policy in their decision making, it is clearly arguable that this happened in two areas. First, their analysis of NRDC drew attention to Passage 4 above which explained the need for some physical effect to result from the use of the process. The Full Court then proceeded to analyse subsequent decisions in light of Passage 4 and concluded that all patentable inventions resulted in some physical effect. They chose to interpret the cases in a way where a physical effect was seen to be critical in the development of what is patentable subject matter. With respect, they could equally have given this Passage no prominence or limited it to the facts of NRDC to support a finding that the invention in the Grant litigation was suitable subject matter for patenting. They could have found support for this in the judgment of Heerey J in Welcome Real-Time SA v Catuity Inc,[103] where he acknowledged the argument but expressly stated that he did not accept that some 'physically observable effect' is necessarily required.[104] Furthermore, Passage 4 had been overlooked generally in other judicial analysis of NRDC.
Secondly, the grounds for justifying the exclusion of patents for legal advices, schemes, arguments and the like are not convincing. It is not clear why this type of invention has no commercial character as the legal profession is clearly 'commercial'. The decision of the Court to exclude this class of inventions from the realms of human endeavour in which patents may be granted is arguably the result of some unarticulated views of public policy. It is unfortunate that they did not expand upon any policy that influenced their decision. By limiting their reasoning to the language of NRDC, they provide no express support for judges to resort to public policy when they want to exclude an invention that would otherwise be patentable.
The recognition of an excluded class of inventions in the legal area, although obiter, is consistent with the tentative view expressed by Branson J that 'a narrower principle has or will be developed that patent protection is not available for any invention that consists of a method of applying the law.'[105] She would have justified this conclusion upon the principle that she derived from the theoretical justification for patents in general. She could equally have based her view in general inconvenience. Arguably, her reasoning on this point is more convincing than that of the Full Court. Therefore, the Full Court's reliance upon the need for a physical effect and assertions that these types of inventions are not 'commercial' provides superficial clarity but defers the real battle to another day.
CONCLUDING COMMENTS
NRDC was concerned to ensure that 'manner of manufacture' was construed to take account of the rapid advances in science and technology. This is not the concern that preoccupied the decision makers in the Grant litigation. Instead, the concern was to find some principled basis derived from NRDC to regard certain non-technological subject matter as inappropriate for the grant of a patent monopoly. The rejection of this invention by the DCP, the primary judge and the unanimous Full Court shows clearly that this invention was widely regarded as unsuitable subject matter for a patent. The Full Court identified that the principles for determining whether an invention is patentable, as at 2006, still require some physical effect. As the requirement for this physical effect reflects the development of the law to this point, as opposed to a binding principle, there is no reason why later courts must accept that principle as immutable. NRDC expects the judiciary to be flexible in their development of the law so that it keeps pace with scientific and technological developments. Similarly, the proviso in s 6 of the Statute of Monopolies contains the same expectation in relation to containing the boundaries for the grant of monopolies.
A flexible approach is possible only if the judiciary avoid the constraints of definitions of a 'manner of manufacture'. Hence, we could see judges in the future flexibly adapting the legal principles for determining whether an invention is patentable to either remove the need for a physically observable effect or to redefine that concept. Without the physical effect requirement, the focus for limiting patentable subject matter is on policy unless a particular invention falls within one of the limited express exclusions in the Patents Act 1990 (Cth).
The Full Court had an opportunity to provide some guidance here but chose not to do so. This is a pity. Instead of the unconvincing reliance upon Passage 3 in NRDC to exclude methods of applying the law, it would have been more helpful to the development of the principles of patent law in this area if the Full Court had been willing to acknowledge the discretion they have in developing those principles and that this discretion necessarily involves some application of policy. They could have stated that the grant of monopolies to methods that involve the application of legal principles is 'generally inconvenient'. However, this would have confirmed that the method was otherwise patentable subject matter — a conclusion that the Court was not prepared to concede. To avoid this conclusion, they could have rejected the 'two tier' approach to the issue of general inconvenience and articulated their own policy to explain why methods of applying the law are not patentable subject matter. The proviso to s 6 provided them with the means for doing this. So did the general principles of statutory interpretation set out in s 15AA of the Acts Interpretation act 1901 (Cth). This was not a case that involved complex balancing of public policy that required more resources and wide public consultation. This was the type of invention that was ideal for the rejection on the grounds of 'general inconvenience' or some articulated public policy. It provided the court with an important opportunity to accept that 'general inconvenience' has a role, albeit limited, and that they are not required to deflect all issues of public policy to the Parliament. The policy that informs the scope of 'general inconvenience' could be developed expressly with reference to 'public interest' considerations[106] or could remain flexible, with the policy underlying the patent legislation itself as the overarching guide.
In the meantime, two principal issues remain unresolved and both relate to the proper role of the judiciary. The first is the extent to which members of the judiciary should be prepared in future to articulate the public interest issues that influenced their exclusion of inventions in fields such as the law. The second is the extent to which members of the judiciary should overtly have regard to public interest in relation to a specific invention. Her Honour Branson J shows that at least one member of the Federal Court is prepared to do so.
[*] Associate Professor, Faculty of Law, Monash University. My thanks to the two anonymous referees for their comments on an earlier version of this work.
[1] Statute of Monopolies s 6.
[2] For a detailed discussion of the development of inherent patentability and restrictions on this concept, both prior to and after National Research Development Corporation v Commissioner of Patents [1959] HCA 67; (1959) 102 CLR 252 ('NRDC'), see Justine Pila, 'Inherent Patentability in Anglo-Australian Law: A History' (2003) 14 Australian Intellectual Property Journal 109.
[3] [1959] HCA 67; (1959) 102 CLR 252.
[4] Anaesthetic Supplies Pty Ltd v Rescare Ltd [1994] FCA 1065; (1994) 50 FCR 1; Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316; (2000) 97 FCR 524 (methods of medical treatment); International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168; (1994) 51 FCR 260 (computer programs); Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 69 (plans and schemes).
[5] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 69.; Welcome Real-Time SA v Catuity Inc [2001] FCA 445; (2001) 113 FCR 110.
[6] Although many cases have considered the meaning of 'manner of manufacture within the meaning of s 6 of the Statute of Monopolies', NRDC remains the binding authority for determining what is patentable: Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 64.
[7] Patents Act 1990 (Cth) ss 18(2) (human beings, and the biological processes for their generation), 18(3) (for innovation patents — plants and animals, and the biological processes for the generation of plants and animals), 50(1).
[8] Patents Act 1990 (Cth) s 18(2).
[9] Patents Act 1990 (Cth) s 18(3). The need for this exclusion was explored by the Advisory Council on Intellectual Property ('ACIP') in ACIP, Should Plant and Animal Subject Matter be Excluded from Protection by the Innovation Patent? (November, 2004).
[10] Patents Act 1990 (Cth) ss 50(1)(a) (standard patents), 101B(2)(d) (innovation patents).
[11] Commissioner of Patents v Microcell Ltd (1958–59) 102 CLR 233; Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd [1999] FCA 1369; (1999) 99 FCR 151.
[12] Opened for signature 5 October 1973, 1065 UNTS 254 (entered into force 7 October 1977) ('European Patent Convention').
[13] Australian Law Reform Commission, Genes and Ingenuity: Gene Patenting and Human Health, Report No 99 (2004); Miranda Forsyth, 'Biotechnology, Patents and Public Policy: A Proposal for Reform in Australia' (2000) 11 Australian Intellectual Property Journal 202. There is extensive literature in this area — see Sam Ricketson and Megan Richardson, Intellectual Property: Cases, Materials and Commentary (3rd ed, 2005) 718 n 4; Luigi Palombi, 'Patentable Subject Matter, TRIPS and the European Biotechnology Directive: Australia and Patenting Human Genes' [2003] UNSWLawJl 53; (2003) 26 University of New South Wales Law Journal 782.
[14] ACIP, Report on a Review of the Patenting of Business Systems (September, 2003); Sam Ricketson, 'Business Method Patents — A Matter of Convenience?' (2003) Intellectual Property Quarterly 97; Andrew Christie, 'Some Observations on the Requirement of Inherent Patentability in the Context of Business Method Patents' (2000) 43 Intellectual Property Forum 16.
[15] As to the evolving nature of patentable subject matter to include inventions in these areas see Pila, above n 2.
[16] Stephen John Grant [2004] APO 11 (26 May 2004); Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1; Grant v Commissioner of Patents (2006) 154 FRC 62.
[18] Standard Oil Development Co's Application (1951) 68 RPC 114; Re Application by Bovingdon (1946) 64 RPC 20.
[19] Re Application by Cementation Co Ltd (1945) 62 RPC 151; Re Application by Rantzen (1946) 64 RPC 63; Re Application by Elton & Leda Chemicals Ltd (1957) RPC 267.
[20] NRDC [1959] HCA 67; (1959) 102 CLR 252, 269.
[21] Ibid.
[22] Ibid 269.
[23] Ibid 271.
[24] Ibid 275 (citations omitted).
[25] Ibid 276.
[26] Ibid 277 (emphasis added).
[27] Joos v Commissioner of Patents [1972] HCA 38; (1972) 126 CLR 611, 617 (Barwick CJ); Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205, 233 (Gummow J).
[28] International Business Machines Corporation v Commissioner of Patents [1991] FCA 625; (1991) 33 FCR 218, 226 (Burchett J).
[29] [1994] FCA 1168; (1994) 51 FCR 260 ('CCOM').
[30] Ibid 295 (emphasis added).
[31] Ibid 271.
[32] Ibid 275.
[33] Ibid.
[34] Ibid 276.
[35] Ibid 277.
[36] Ibid 276.
[37] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 68.
[38] Stephen John Grant [2004] APO 11 (26 May 2004); Peter Szabo and Associates Pty Ltd [2005] APO 24 (5 May 2005) [29].
[39] Peter Szabo and Associates Pty Ltd [2005] APO 24 (5 May 2005) [29].
[40] Marrakesh Agreement Establishing the World Trade Organization, opened for signature 15 April 1994, 1867 UNTS 3, annex 1C (Agreement on Trade-Related Aspects of Intellectual Property Rights) (entered into force 1 January 1995) (‘TRIPS Agreement’).
[41] NRDC [1959] HCA 67; (1959) 102 CLR 252, 259.
[42] Stephen John Grant [2004] APO 11 (26 May 2004) [28].
[43] Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1.
[44] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62.
[45] Stephen John Grant [2004] APO 11 (26 May 2004) [2].
[46] Pursuant to the Patents Act 1990 (Cth) s 62(1).
[47] Pursuant to the Patents Act 1990 (Cth) s 101A(b).
[48] Stephen John Grant [2004] APO 11 (26 May 2004) [16], citing Cooper's Application (1902) 19 RPC 53.
[49] Pursuant to s 101F(3) of the Patents Act 1990 (Cth).
[50] Stephen John Grant [2004] APO 11 (26 May 2004) [1].
[51] Ibid [20].
[52] Ibid [19].
[53] Ibid [21].
[54] Ibid.
[55] Ibid [28].
[56] Ibid.
[57] Ibid.
[58] Ibid.
[59] Ibid [25].
[60] Ibid [28].
[61] Ibid [26] (emphasis in original).
[62] Ibid [28].
[63] Stephen John Grant [2004] APO 11 (26 May 2004) [27].
[64] Under s 101B(2)(b) of the Patents Act 1900 (Cth), a ground for revocation of a patent is that the invention does not comply with s 18(1A)(a) of that Act, which requires an invention to be 'a manner of manufacture within the meaning of section 6 of the Statute of Monopolies'.
[65] Charles Lawson, 'Grant's Application: It's Time For a New Approach to a "Public Interest" Exclusion From Patentability' (2005) 13 Journal of Law and Medicine 135, 143.
[66] Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1, 3.
[67] Ibid.
[68] Ibid.
[69] Ibid 3, 5.
[70] Ibid 3.
[71] Ibid, citing NRDC [1959] HCA 67; (1959) 102 CLR 252, 269.
[72] Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1, 5.
[73] Ibid.
[74] Ibid 6.
[75] Ibid.
[76] Ibid.
[77] Ibid (emphasis added).
[78] NRDC [1959] HCA 67; (1959) 102 CLR 252
, 269.
[79] Statute of Monopolies s 6.
[80] NRDC [1959] HCA 67; (1959) 102 CLR 252, 275 (citations omitted).
[81] Industrial Property Advisory Committee, Parliament of Australia, Patents, Innovation and Competition in Australia (1984) [1]–[2] (emphasis added).
[82] Minister for Science, 'Government Response to the Report of the Industrial Property Advisory Committee, "Patents, Innovation and Competition in Australia"' (1986) 56 Australian Official Journal of Patents, Trade Marks and Designs 1462. The Patents Bill 1990 (Cth) was a 'reincarnation' of that earlier Patents Bill 1989 (Cth).
[83] Mr Crean accepted the second reading speech for the Patents Bill 1989 (Cth) which was introduced on 1 June 1989 by the Hon Barry Jones, the then Minister for Science, Customs and Small Business. In his speech, the Hon Barry Jones repeated and accepted the policy expressed by IPAC: Commonwealth, Parliamentary Debates, House of Representatives, 1 June 1989, 3479 (Barry Jones, Minister for Science, Customs and Small Business). This Bill was not debated before the dissolution of Parliament prior to the March 1990 election.
[84] Commonwealth, Parliamentary Debates, House of Representatives, 10 October 1990, 2565 (Simon Crean, Minister for Science and Technology) (emphasis added).
[85] An appeal from Branson J's decision to the Full Federal Court was filed on 2 September 2005 under File No. NSD1573/2005. See Appeals from Single Judge Decisions to the Full Court (2006) Federal Court of Australia <http://www.fedcourt.gov.au/ctlist/ctlist_appeals.html> at 19 November 2006.
[86] For a recent judicial application of this approach see Finkelstein J in Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 97 FCR 524, 559.
[87] Ibid 566–7.
[88] Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1, 5.
[89] Ibid.
[90] Ibid.
[91] Ibid.
[92] Pila, above n 2, 129.
[93] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 73.
[94] Ibid, 69.
[95] Ibid, 64, with reference to NRDC [1959] HCA 67; (1959) 102 CLR 252.
[96] Grant v Commissioner of Patents [2006] FCAFC 120; (2006) 154 FCR 62, 69.
[97] Ibid 73.
[98] Ibid.
[99] Ibid 71.
[100] (2006) 66 IPR 370 [36].
[101] Ibid [3].
[102] Ibid [36].
[103] [2001] FCA 445; (2001) 113 FCR 110.
[104] Ibid 137.
[105] Grant v Commissioner of Patents [2005] FCA 1100; (2006) 67 IPR 1, 5.
[106] Lawson, above n 65, 146.