PatentApplicationCombination-Improvement of integer of old combination-
The improvement of one of the integers in an old combination which does not make the combination substantially a new thing does not entitle the inventor of the improvement to a patent for the combination with the improved integer incorporated in it although he may be entitled to a patent for the improved integer.
APPEAL from the Commissioner of Patents.
Matthew John Higgins applied for a patent for an "improved starting device for distance handicap races." The device was applicable to horse-races in which the handicapping is by distance, and its general principle was to have an elastic cord (called in the specification a "tensional barrier ") stretched across the racecourse at each of the points where the horses were to start. Each of the
elastic cords was secured on the inner side of the course to a post
by a pin passing through a loop at the end of the cord, the other end being firmly attached to a post on the outer side of the course. The pins securing the inner ends of the elastic cords were fastened to a wire running along the inner side of the course, having a spring at one end and stretched tightly from the other end, SO that when that other end was released all the pins were drawn out at the same time and the elastic cords simultaneously flew back across the course and left the course open.
The application was opposed by John May on the grounds that the applicant had obtained the invention from him, that the inven- tion had been previously patented in the Commonwealth, that the invention was not novel, and that the invention had been described in a prior publication in the Commonwealth. The Commissioner of Patents dismissed the opposition and granted the patent.
From that decision the opponent now appealed to the High Court. Other facts are stated in the judgments hereunder. Mann, for the appellant. The thing for which a patent is claimed here is a combination. Ordinarily where a combination is claimed the combination itself is the novelty. But where a person invents an improvement of an old combination which consists of the dis- covery of a new part which is added to the old combination, then he must either by disclaimer or by the form of his claim make clear what is old and what is new Kynoch &Co. Ltd. v. Webb 1; Harrison v. Anderston Foundry Co. 2 Parkes v. Stevens 3. It may be that the respondent has invented an improvement on an integer of an old machine, namely, the means of releasing the barriers, but the improvement is not such as to make the whole combination substantially a new thing, which is the only case in which he would be entitled to patent the combination See Moore and Hesketh v. Phillips 4; In re Newton's Application 5.
Schutt, for the respondent. The only…
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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Details
AGLC
May v Higgins [1916] HCA 8
Case
[1916] HCA 8
Decision Date
CaseChat Overview and Summary
This case concerned an appeal to the High Court of Australia from a decision of the Commissioner of Patents. The appeal was brought by John May, the opponent, against Matthew John Higgins, the applicant for a patent for an "improved starting device for distance handicap races." May had opposed the grant of the patent on several grounds, including that the invention had been obtained from him, was previously patented, lacked novelty, and had been described in prior publications. The Commissioner had dismissed May's opposition and granted the patent, leading to this appeal.
The central legal issue before the High Court was whether Higgins was entitled to a patent for the entire combination of his improved starting device. Specifically, the court had to determine if an improvement to a single component of an existing combination, which did not render the combination substantially a new thing, could form the basis of a patent for the entire combination. The court also considered whether such an improvement, if novel and meritorious, could be patented separately.
The High Court, in allowing the appeal, reasoned that the applicant's device, while potentially containing a novel and valuable improvement in the means of releasing the tensional barriers, did not constitute a substantially new combination. The court found that the core of the invention was an alteration to one integer of an old machine, rather than the creation of a new integer or a combination that resulted in a fundamentally different machine. Applying established patent law principles, the court held that an inventor is entitled to a patent for an improvement to a component, but not for the entire combination if the combination itself is not substantially new.
Consequently, the High Court reversed the Commissioner's decision. It declared that the patent grant should not be made unless Higgins sought leave to amend his specification within four months to claim only the improved element. The time for sealing the patent was extended accordingly, and Higgins was ordered to pay the costs of the opposition and the appeal.