Grant v The Commissioner of Patents

Grant, the applicant, sought to appeal a decision of the Commissioner of Patents to refuse his application for a patent. The dispute concerned the patentability of a method for treating a disease by administering a specific pharmaceutical compound. The Commissioner had refused the application on the grounds that the invention lacked novelty and was obvious, as the compound was already known and its therapeutic properties were considered to be within the reach of a person skilled in the art. The matter came before the High Court of Australia.

The central legal issue before the High Court was whether the applicant's method of treatment constituted a patentable invention under the *Patents Act 1990* (Cth). Specifically, the Court had to determine whether the application satisfied the requirements of novelty and inventive step, considering the existing state of knowledge regarding the pharmaceutical compound and its potential uses.

The High Court, in allowing the appeal, reasoned that the Commissioner had erred in its assessment of novelty and inventive step. The Court clarified that a method of medical treatment, even if it involves the use of a known substance, can be patentable if it represents a new and inventive application of that substance for a specific therapeutic purpose. The Court emphasised that the inventive step requirement is not satisfied merely because a known substance has a known effect; rather, it requires an inventive leap in applying that knowledge to achieve a new therapeutic outcome or a new method of achieving an existing outcome. The Court found that the applicant had demonstrated a novel and inventive step in identifying and applying the compound for the specific treatment of the disease, distinguishing it from prior art which had not disclosed this particular therapeutic use.