Miles v Commissioner of Patents

Miles, the applicant, sought to appeal a decision of the Commissioner of Patents to refuse his application for a patent for a "method of treating a disease". The dispute concerned whether the applicant's invention, which involved the use of a known substance for a new therapeutic purpose, was patentable subject matter under the *Patents Act 1990* (Cth). The appeal was heard by the Full Federal Court of Australia.

The central legal issue before the Full Federal Court was whether a method of medical treatment, specifically the use of a known substance for a new therapeutic purpose, constituted a patentable invention under section 18(1)(a) of the *Patents Act 1990* (Cth). This required the court to consider the scope of "manner of manufacture" as interpreted by Australian patent law, particularly in light of established case law concerning medical treatments.

The Court reasoned that the patentability of a method of medical treatment had been a complex area of law, with a historical reluctance to grant patents for such methods. However, the Court noted that the *Patents Act 1990* (Cth) defined "invention" broadly to include a "manner of manufacture". Applying established principles, the Court determined that while a mere discovery of a new use for a known substance was not patentable, a method that involved the administration of a substance to a patient for a therapeutic purpose could be considered a manner of manufacture, provided it was a practical application of scientific knowledge. The Court found that the applicant's method, involving the administration of a specific substance to treat a particular disease, fell within this category.

The appeal was allowed, and the matter was remitted to the Commissioner of Patents for reconsideration of the patent application.