McGlashan v Rabett

This case involved an appeal to the High Court of Australia from a decision of the Registrar of Patents. The appellants, McGlashan and another, sought a patent for an improved ballast spreader for railroad construction. The respondent, Rabett, opposed the application on grounds including lack of novelty. The Registrar refused the application, finding that while the specific combination of features claimed by the applicants had not previously existed, individual components and their arrangement did not constitute a new invention.

The central legal issue before the High Court was whether the Registrar had erred in refusing the patent application on the grounds of want of novelty. Specifically, the court had to determine the onus on an opponent in patent opposition proceedings under section 56 of the Patents Act 1903, and whether the claimed combination of features in the ballast spreader was sufficiently novel to warrant a patent, even if some individual elements were known. The court also considered whether the objection that an invention does not involve a real exercise of the inventive faculty is a valid ground for opposition under the Act.

The High Court, applying the principle that a patent should not be refused unless it is clearly bad on the ground of want of novelty, found that the onus was on the opponent to establish that the patent, if granted, would be clearly invalid. The court held that it was immaterial whether individual modifications were substantial inventions if the combination itself was new. Furthermore, the court affirmed that under section 56, the objection that an alleged invention does not involve a real exercise of the inventive faculty is not a ground for opposition; the sole relevant objection is want of novelty.

The High Court allowed the appeal, reversing the decision of the Registrar and declaring that the patent should be granted. The respondent was ordered to pay the costs of the appeal and the proceedings before the Registrar. The court also established a rule that the costs of printing the appeal book would be allowed unless otherwise ordered.