Commissioner of Patents v Lee

The Commissioner of Patents appealed to the Full Court of the High Court of Australia from a decision of Isaacs J. The appeal concerned an application for a patent for "improvements in the manufacture of charcoal." The Commissioner had refused to accept the complete specification on the grounds that the alleged invention constituted merely working directions for the use of existing appliances for an established purpose.

The legal issues before the Full Court were whether the applicant's claimed process for manufacturing charcoal involved a patentable invention, or if it was merely a set of instructions for operating existing machinery. Specifically, the Court had to determine if the described method of controlling air intake and gas emission through top vents, after initial ignition at the bottom and subsequent closure of bottom vents, constituted a new manner of manufacture under the Patents Act 1903-1909.

Griffith C.J. and Barton J., in the majority, held that the application was properly refused. They reasoned that the applicant's claims described a mere working direction for the use of existing appliances, rather than a new invention. They found that the core of the alleged invention was the timing of closing the bottom vents and manipulating top vents, which they considered to be a matter of skill and judgment for an experienced charcoal burner, rather than a patentable process. The majority distinguished the present case from those where a patentable invention involved a new apparatus, a new product, or the application of an old apparatus to a new use involving ingenuity. Gavan Duffy J., dissenting, found that the applicant had demonstrated a novel and inventive method of controlling combustion to preserve the charcoal produced, which he considered sufficient subject matter for a patent.

The Full Court, by majority decision, allowed the appeal. The Commissioner's refusal to accept the complete specification was upheld, and the order of Isaacs J. directing acceptance was set aside.