N.V. Philips Gloeilampenfabrieken & Anor v Mirabella International Pty Ltd

[1995] HCATrans 52

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S73 of 1994

B e t w e e n -

N.V. PHILIPS GLOEILAMPENFABRIEKEN and PHILIPS LIGHTING PTY LIMITED

Appellants

and

MIRABELLA INTERNATIONAL PTY LIMITED

Respondent

BRENNAN J
DEANE J
DAWSON J
TOOHEY J
McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON WEDNESDAY, 15 MARCH 1995, AT 10.17 AM

(Continued from 14/3/95)

Copyright in the High Court of Australia

BRENNAN J:   Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, before I come to the questions that were left overnight, may I go back to first principles briefly.  As we understand our friend’s submissions on this question of residual newness, as he puts it, the submission is that there must be a manner of manufacture ‑ that is one question ‑ and it must be new.  As we hear it, our friend then submits newness is dealt with under the rubric of novelty and obviousness or lack of inventive step, and that leaves no residual newness in the question of manner of new manufacture.  Manufacture means something like a vendible product as, perhaps, expanded a little;  one, it is the field of industry versus the fine arts;  it excludes things such as the scheme for winning money at the races.  That is how our friend puts it.

Our submission is that that is quite wrong and that the whole development of the law since the Statute of Monopolies and, in particular, the NRDC Case and Microcell, which are still good law, makes it clear that some notion of invention, as distinct from inventive step and obviousness, remains in the central threshold question of manner of new manufacture.  And I will be submitting, as I did yesterday, that those cases make that completely clear. 

If I could just quickly remind your Honours of the history.  The Statute of Monopolies is in tab 15 of our friend’s bundle of materials.  The last page of the extract from the statute, as your Honours recall, the statute banned the grant of monopolies, but there was a saving.  So this statute did not grant the monopolies, it provided for a saving.  Section 5 saved existing monopolies of patents and section 6, is the critical one, saves future grants of patents.

There are, in fact, later in the Statute of Monopolies, specific savings of specific particular patents granted to particular people but what section 6 says:

That any declaration -

that is, the declaration that monopolies are bad -

shall not extend to any letters patent and grants of privilege for the term of fourteen years or under hereafter to be made -

made after the date of the statute -

of the sole working or making of any manner of new manufactures -

and we agree that manner means kind as I think your Honour Justice Dawson put it -

within this realm, to the true and first inventer and inventors -

the concept of invention -

of such manufactures, which others at the time of making such letters patents and grants shall not use -

that is not a grant of a monopoly saying that others shall not use it.  That is novelty.  I do not think anything turns on that here but that is saying, which are not used at the time of grant.  You got the grant at the moment you applied as it were.  So, that is where novelty was -

so as also they be not contrary to the law,

et cetera.  The phrase “contrary to the law” has been used, for example, in rejecting patents for the contraceptive pill in the old days, or a method of abortion, but that is not relevant here, your Honours.  So the central concept was, any manner of new manufactures which was novel.

Out of that concept, any manner of new manufactures, the common law and the various statutes have pulled out certain grounds, leaving the threshold question always there, namely, is it a manner of new manufacture?  The courts pulled the notion of obviousness out.  Behind one of the tabs is Fox’s essay on that ‑ tab 1 in our friend’s bundle.  I do not need to take your Honours to it, but Fox submits in his article that obviousness is heresy as a ground of revocation.  He thinks that the judges went wrong in inventing obviousness.  But that argument is long lost in Australia at least by the 1952 Act.

As a matter of fact, the courts pulled out of the notion found in the notion of manner of new manufactures this requirement of obviousness.  It was always explained as being part of the notion of consideration.  The consideration for what is otherwise a bad thing ‑ a monopoly of 14, then in Australia 16, now 20 years ‑ is that you advance the useful arts and science, as it were, to pick up the US term, by giving the public possession of an invention.  In the case of obviousness, the court said that if a notional, competent, skilled, non‑inventive worker in a given art, possessed of the common general knowledge in that art, could do it himself without the exercise of the inventive faculty ‑ in other words, without an inventive step ‑ then there is no consideration.  It is contrary to the public interest to grant a monopoly for something which is insufficient consideration.

Similarly, even in the very statute, the notion of novelty was excised because if somebody already used that invention or that manner of manufacture, there was no consideration for the grant of the monopoly.  The notion of consideration is in all the old books and the old cases.  Those specific grounds went out, and then there are statutory grounds of sufficiency of description, for example - if you do not sufficiently describe your invention you are not giving consideration, and so on.  But, there always remained the threshold test of manner of new manufacture - namely, is this the kind of thing that ought to be the proper subject, which was the words in the 1952 Act - the proper subject, of letters patent within section 6 of the Statute of Monopoly. 

That is not a de minimis test, and has not been stripped of content, or almost stripped of content, as our friend would submit.  There are still many categories of things which are not capable of coming within that universe of discourse, being a manner of new manufacture.  They include the question such as - and they are in the text and we will hand your Honours later just the chapters from a couple of the texts on this; they include - this is as it were, the headings in the text - no mere plans or schemes; the question of treatment of humans; the patentability of forms of life - whether that includes, can you patent a virus?  Those cases are working through the courts now.  Can you pattern a virus whose DNAU sequence, as distinct from a question of novelty or obviousness, is it a manner of manufacture to claim a virus?  The U.S. Supreme Court has considered whether a genetically engineered bacterium is patentable or not.  Those questions.

Then there is the whole question of mere collocations held by this Court in several cases in the early days of the Patents Act as not being patentable, that is, where you have a combination patent of various integers and the combination is merely - they do not combine to form an operative result but merely collected together in a mere collocation.  That is not a manner of manufacture.

McHUGH J:   But this is subject matter, is it not, and is that not what manner of manufacture really is these days?  It is just subject matter.

MR CATTERNS:   Your Honour, I respectfully shrink from the term because the term has been used both to cover obviousness and manner of manufacture and ‑ ‑ ‑

McHUGH J:   I know and that seems to be one of the troubles about a judgment of Microcell speaking with great respect of - Sir Owen Dixon obviously wrote the judgment and few lawyers knew as much about patents as he did, but it is really a rather confusing judgment in some respects in that it goes all over the place.

MR CATTERNS:   Your Honour, I submit it does not in the end because - this is the short point - their Honours use the word “invention” or “inventive” in that and we now desire to keep our compartments apart, that is, the lawyers.

McHUGH J:   That is the problem.  In Microcell you are dealing with manner of new manufacture, so you could use this concept, you could use that concept and you can all relate it back to manner of new manufacture and precision was not called for to the extent that it seems to be now.

MR CATTERNS:   Your Honour, as I say, it is not for me to say that about Sir Owen Dixon.  My lesser mind might enjoy precision and that is why there is the concession in CCOM that I made that your Honours - that my learned friend - I will come to that later, but the short answer, your Honour, is, with respect to his Honour, he is right because the test is, “Is this an invention?” meant within the meaning of the Statute of Monopolies, that the term in the Act is “invention” and the adjective is “inventive”.

It is bad luck that that also happens to be the same word as is in the different concept of inventive step and obviousness.  But the word “inventive”, used adjectivally to describe something that possesses the characteristics of an invention, viz the proper subject of letters patent under section 6, I submit that if one reads Microcell with that in mind, and NRDC, your Honours, where in both cases the word “inventive” is used in a way that we might shrink from because of the risk of confusion, it all comes clear.  The older cases that their Honours are referring to in Microcell also use that word “invention” in a context which is clearly manner of manufacture, not obviousness.

The reason that that is completely certain, your Honours, if I may say, is that both - I think I said yesterday that Microcell  or NRDC was an opposition case.  They were not.  They were all appeals from refusal to grant.  At the stage in the Glass Company Case, Microcell and NRDC, at the stage when those cases were being considered, in each case the applicant had applied for the patent, the examiner or the office had examined it and what they would examine it for in those days was, crudely speaking, novelty and, either expressly or impliedly in the Microcell Case, whether it was in fact an invention in the sense of manner of new manufacture.

But the one thing  they could not look at, your Honours, was obviousness.  Obviousness was out of the question at the level of application.  So in neither of those three cases is obviousness at all in issue.  It just cannot be in issue.  As a matter of law in each case, obviousness did not arise.  As it so happens, it did not here, for a different reason; not because it was not legally open to us but because we could not prove common general knowledge. 

So I do accept, your Honour ‑ and I accepted it before the Full Court of the Federal Court in CCOM ‑ that, to my limited mind, the use of the word “inventive” might cause a problem but, when it is used in those cases adjectivally as meaning what is an invention within the meaning of the Statute of Monopolies, it all comes clear.  The principle is that if on the face of your document you do not disclose something that is inventive, in that sense, you do not cross the first hurdle.  You do not answer the threshold question.  That is the end of the argument, if I am right.  Then, we say that the Full Court certainly applied that precisely.

Justice Burchett, as your Honour Justice McHugh put to me yesterday, did so very clearly and we also submit that the passage that Mr Justice Lockhart that I think your Honour the presiding Judge referred to at 839 ‑ and I will come to it ‑ in that passage his Honour is setting out to do exactly the Microcell analysis.  It uses the word “inventive” in the sense I have just been discussing.

BRENNAN J:   And the way you would construe 18(1) then, I take it, is that, first of all, at the stage at which the claim for the patent is made, the question is whether or not (a) is satisfied, having regard to all the traditional tests that have been developed since 1623.

MR CATTERNS:   Yes, your Honour.

BRENNAN J:   And then (b) comes in by way of confession and avoidance.

MR CATTERNS:   In effect, yes, your Honour, that is a further ground.

BRENNAN J:   And it is seldom that the Registrar of Patents, or the Comptroller or whoever it is, would ever be in a position to determine at the stage of the application what the extent of the prior art was and, therefore, to deny the patent.

MR CATTERNS:   May I say this, your Honour.  There are three stages.  The stages are:  application, opposition, revocation.  Until the 1990 Act, what your Honour said was right but now, with computer searching and so on, it is right to say, I think, that the examiners are capable of forming an opinion even before there is an opponent to contradict it, as it were, on the state of the prior art.  But certainly, your Honour, if we are talking 1959 when those two cases were decided ‑ Microcell and NRDC ‑ at the stage of application the examiner just was not allowed to look at obviousness.  He was allowed to look at novelty in a fairly narrow sense.

BRENNAN J:   But at all events, whatever the procedure might be, your proposition would be that paragraph (a) is the critical paragraph which conjures up the entirety of the concept, and paragraph (b) is not so much carved out of the concept but it takes away from the patentability if paragraph (b) applies.

MR CATTERNS:   Precisely, your Honour.  We submit that the famous page at page 269 of the NRDC Case makes that good.  If I may just quickly look at Justice Lockhart on that point ‑ and I will come to those cases quickly if I may.  The passage at page 838 is where the majority finds that in short there is no change in the Act.  That was referred to in argument where his Honour says at line 31:

In my opinion the combination of s 18(1)(a).....and Schedule 1.....continues in force the notion of “manner of new manufacture” present in s 100(1)(d) of the 1952 Act.

I submit that is in accordance with the way your Honour the presiding Judge put it to me in argument a moment ago.  At page 839, the passage I have just mentioned is answering a submission recorded at page 837, line 20:

Counsel for the appellants ‑

that is Philips ‑

argued that if, contrary to their submission, the test to be applied for determination ‑

I think it should say “is”, your Honours ‑

whether an inventive idea or step is disclosed in the specification ‑

there was such a thing.  In answering that, Justice Lockhart at page 839 says, “I turn to that”.

Perhaps it is convenient just to go through this judgment now, your Honours, to save coming back to it.  His Honour says, correctly:

Although the grounds of objection in patent law sometimes overlap, objections of want of novelty and obviousness are nevertheless essentially distinct from each other.  Likewise, the requirement that a patentable invention be a manner of new manufacture is inherently distinct from the requirements -

then there is a quotation of the cases.  Then there is discussion of the particular lamp.

BRENNAN J:   Are there any cases which bear out that proposition that they are distinct from, as distinct from being inherent in?

MR CATTERNS:   NRDC and Microcell, your Honour, because obviousness could not be dealt with there.  Although we accept that there can be some overlap, I submit that is the fundamental issue that these are separate requirements and it is the threshold requirement for the reasons I have been submitting.  That is when the new Act was brought in, when IPAC and the explanatory memorandum say the expression is used to invoke a long line of cases; the pinnacle of them is NRDC and Microcell.  The phrase they use in IPAC Report, your Honours, is the “touchstone of patentability” is this manner of manufacture point.

BRENNAN J:   I understand that, but I must confess that to take the case of one such as Microcell, if there were a touchstone of patentability along the lines that you are contending for under section 18(1)(a), why would it not just be held simply that this is not patentable for the reason that it is not novel?

MR CATTERNS:   Because, as a matter of fact, nobody had made those rocket projectors before.

BRENNAN J:   And is that what “novelty” means?

MR CATTERNS:   Yes, your Honour.

BRENNAN J:   And that is all that it means?

MR CATTERNS:   No, it is not all that it means but that is an example of it.

BRENNAN J:   That is the stainless steel argument.

MR CATTERNS:   Yes, your Honour, it is the stainless steel argument.  As a matter of fact, that is why we lost on novelty here, on a very narrow point.  Nobody had made a compact lamp, or the article did not suggest a compact lamp of 400 wall loading, whereas, the claim is 500 watts per square metre.

Your Honour, assuming stainless steel had been invented and was first used in some industrial application, you would describe in your patent, stainless steel possesses all these properties of resistance to rust, et cetera, “I claim a sink made of stainless steel”, on the face of it, as the High Court discusses in Microcell, although it is new in the sense that there has never been a sink made out of stainless steel, or suggested out of stainless steel, it is not a manner of manufacture. 

Your Honour, the test for novelty is, as Justice Aickin says in the Meyers Taylor Case, reverse infringement.  In other words, whether the alleged anticipation infringes the claim.  My claim for a stainless steel sink is not infringed by somebody else’s stainless steel industrial use, or article that espouses the virtues of stainless steel, generically.  So, there is something left - there is work that still needs to be done in the concept of manner and new manufacture.  The same goes with the rocket.  If we had invented fibreglass or strong plastics in various other things, but nobody used it for a rocket, then those earlier inventions or uses or publications would not infringe the Microcell claim, therefore the Microcell claim is novel over them.

BRENNAN J:   You say a new use, a mere new use for an old thing, whose qualities, et cetera, are known, would not fail for want of novelty, it would fail only because it was not an invention?

MR CATTERNS:   Yes, your Honour, I cannot say in every single case, but it certainly might not fail for want of novelty.  Largely, it would not, because it is a different thing.  The test for novelty has got to be subject to some small exceptions which we would argue apply here, but subject to very narrow exceptions, it has got to be the very thing.

BRENNAN J:   What is the best case that says that?  Because, if so, you might well have made your point in relation to the residual concept of newness.

MR CATTERNS:   Because there is a need for - I will begin with Meyers Taylor which is on our list.  Your Honours, Meyers Taylor is in ‑ ‑ ‑

BRENNAN J: 137 CLR 228, it seems.

MR CATTERNS: Yes, your Honour. Commonwealth Law Reports? If your Honours would go to 137 CLR 235, at point 5, his Honour Justice Aickin says:

The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.  Here no prior object and no object according to a prior document involved or incorporated all the integers of any one of the claims and could therefore possibly  constitute an infringement.  Accordingly I am satisfied that the objection of want of novelty has not been made out.

That is the so‑called reverse infringement test.  Your Honours, so far as infringement goes, you have to possess all of the integers subject to some tiny exceptions.  In the 3M Case, 144 CLR 253 - and the central importance of that case is it resolved an apparent conflict in the High Court about the prior art base for obviousness - the holding of the Court was that you had to prove common general knowledge, and you had to prove it. The fact that a specification lay in the Patents Office is relevant for novelty, but for common general knowledge you had to prove that people in the art actually did have resort to specifications of that kind. For example, in the field of chemistry, people do look at chemical abstracts and they tell you about new patents, but patents lying unused in the Patents Office were held, in this case, not to be part of the prior art base. But, your Honours, so far as the question of infringement goes, at 286 - if I may just go back a touch - what his Honour Justice Aickin does over the many pages preceding 286 is go through - this is on the question of infringement - integer by integer the alleged infringer. The holding was that every integer was present. Then his Honour just discusses the only exception to it at the middle of 286 point 5:

Notwithstanding the undoubted fact that the doctrine of Clark v. Adie (55) concerning the taking of the pith and substance of an invention, but nonetheless staying outside the express words of the claim, is less often applicable at the present time than it was at the time of that decision, it remains the law that a defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim.

And then there is a reference to Olin v Super Cartridge, which is now in 180 CLR, your Honours, in the recent volume that picks up a number of the old cases.  So, your Honours, our proposition is that, on novelty, the usual test is reverse infringement and you have to have, generally speaking, all of the integers, the precise thing in the prior anticipation.  There is a slight exception to it, which his Honour discusses there, known as pith and marrow where, as we would argue here on novelty, the substance of the invention was disclosed in the earlier articles and a little debate about 400 versus 500 watts per metre wall loading is not substantial. 

But, other than that, it has to be the thing and so a journal article, the journal of steel, that says, “I have discovered a new type of steel whereby I add these things to it and make it in this way and it becomes stainless in the sense that it is resistant to rust and so on” would not anticipate a claim for a stainless steel sink.  It is not the same thing;  it would not infringe it.  The test is, you go to the article, see whether it tells you to make a stainless steel sink;  if it does not, then it would not have infringed it, applying the reversed infringement test.  Therefore, it does not anticipate it.  Therefore, the invention is novel.  But, there is work left to be done because, going right back to 1623, we are talking about inventions and it is not inventive ‑ in all of that line of cases up to and including Microcell ‑ it is not inventive just to suggest that. 

Now, your Honours, I do not think we are getting into the facts here but, really, on half of their Honours’ judgment, leaving aside this question of desirable properties, they have really treated this as a stainless steel case ‑ their Honours in the court below and Justice Wilcox ‑ they have treated it as a stainless steel case:  new use of a known thing for which its known properties make it suitable, and that is legitimate.  And the reason Microcell goes through all of those old cases and, indeed, the Glass Case that my friend relies on, Sir Stafford Cripps, he there, the learned Solicitor-General, picks up exactly the same point. 

There is another concept inside manner of new manufacture that is different from those two specific grounds of novelty and lack of obviousness.  That is why, with respect, the way your Honour the presiding Judge put it to me a little while ago, about they are not really carved out of it, is correct.  They are separate little grounds like lack of utility or insufficiency or lying to the patent office, obtaining it on a false suggestion, which are grounds you can revoke it, but the fundamental question:  is it something inventive, are we even in the area of discourse of invention remains.

We respectfully submit that that is precisely what Justice Lockhart was going on to look at and I will try to avoid the instant facts, your Honour, but first of all his Honour refers to Microcell and quotes the passage “merely the use of a known material”.  The L & G Case involved oxidising little switches in electrical switchboards and so on and you just harden them by oxidising them or including aluminium and everybody knew that if you did that things would be harder.  Nobody had, in fact, applied it in particular to switches, but nevertheless it was merely the use of a known material.

McHUGH J:   Is there any difference between an inventive idea and an inventive step?

MR CATTERNS:   Yes, your Honour, that is my point.  They are the words, your Honour, that perhaps your Honour sees at line 18:

an inventive idea for which a monopoly can be claimed.

McHUGH J:   Yes, I know, but the legislation uses “inventive step”.  The passage you referred us to on 839, Justice Lockhart spoke of “inventive idea or step”.

MR CATTERNS:   Yes, your Honour.  I would prefer his Honour had not said “or step”, I accept that.  But his Honour is really moving on to the page at 840.  I submit he is applying that passage in Microcell, “it is not an inventive idea”.

McHUGH J:   He also said the same thing at 837, in referring to inventive idea.

MR CATTERNS:   I accept that.  That is the reason I made my concession in CCOM that my learned friend read yesterday that I eschewed the use of this judgment to the extent it drifted into obviousness language and I accept that there are cases where their Honours do do that.

McHUGH J:   And on 838 at line 10 or 11 he used the word “inventive step”.  He abandoned “idea”.

MR CATTERNS:   That is an argument, your Honour.

McHUGH J:   I suppose it is, yes.

MR CATTERNS:   So, your Honour, we submit that when the statute does, as it did in ‑ ‑ ‑

DAWSON J:   Mr Catterns, you might just tell me what the difference is between inventive idea and inventive step.

MR CATTERNS:   Yes, your Honour.  An inventive step is the step - this is an entirely judge-made ground - as I say, bemoaned by Fox - that came out of the notion.  An inventive step is the step that a notional skilled addressee in the art possessed of the common general knowledge in his art; you look at the invention, you prove the prior art and you ask whether somebody without the exercise of the inventive faculty would have made that step to move from the prior art, the whole of the prior art base, to the invention without the use of the inventive faculty.

So that the Australian people or Her Majesty could, in effect, to have gone to a notional skilled addressee and said, this is the common general knowledge, will you make me this thing, and the person could do it without the exercise of the inventive faculty.  Now that is an inventive step and there is a whole lot of learning, your Honour, about obvious to try and then there is a debate about whether you can have a team of people to constitute your skilled addressee but it is a notional test, you create a notional skilled addressee, who uses the proven prior art.

The High Court made clear in another case, VR Laboratories v Wellcome Foundation ‑ ‑ ‑

DAWSON J:   I understand now, it is the comparison with the prior art base which makes it different from an inventive ‑ ‑ ‑

MR CATTERNS:   Yes, your Honour.  Of course, our fundamental submission is that the very structure of section 18(1)(a), I think, as his Honour Justice Brennan put to me, shows that there are separate questions.  Then his Honour Justice Lockhart at line 26 goes on referring to Microcell and at the bottom page 840 there is another quote from Microcell:

cannot be subject matter -

If I may say to your Honour Justice McHugh, that is subject matter not in the sense of obviousness, it is subject matter in the sense of manner of new manufacture.  It is not the type of thing, it is not capable of being a patent.  Then, Justice Lockhart at the top of page 841 says:

this is not a case of a person discovering a new property -

which is one of the cases discussed in Microcell.  That type of thing can be inventive in the sense of manner of new manufacture.  Then his Honour Justice Lockhart quotes Justice Wilcox’s finding on that and I think perhaps rather than going into all of the facts of the instant case, at the bottom of page 842 - and I believe my friend went to most of these - in the middle of page 842, line 20, quoting Justice Wilcox:

“... it seems to me that it is not an invention, or a manner of new manufacture, for someone to specify the criteria required to be met, in the manufacture of a known product from known materials -

et cetera.  Then your Honours will see at line 32:

It is not in dispute that each of the groups.....is admitted by the patentee -

In other words, his Honour is getting it from the specification, as he set out to do at page 839, “The patentee also admits.”  Then at the bottom of page 842:

I agree with the primary Judge that it would not be an invention for the patentee merely to use these known phosphors in known lamps with high wall loads, and that Microcell is closely in point here.

Then, your Honours, at the bottom of page 843, Justice Lockhart at line 40 criticises our friend’s predecessor’s submissions, blurring:

the distinction between the requirement that the invention be a manner of new manufacture and obviousness.

McHUGH J:   Can I just stop you there.  Under the 1952 Act obviousness was only referred to in section 100 on revocation, was it not?

MR CATTERNS:   And in 59 in opposition but not on acceptance ‑ examination.

McHUGH J:   Yes.  That depended upon manner of new manufacture at the acceptance stage.

MR CATTERNS:   Yes, your Honour, at all stages.  It was a ground at all stages.  At every stage under the 1952 Act the question of manner of manufacture came up.  That is why it came up in the NRDC Case as to whether or not this was a manner of manufacture; the use of the acids to kill things in crops.

McHUGH J:   Before the 1952 Act did obviousness have any statutory basis in Australia or did it just depend upon the case law?

MR CATTERNS:   The latter, your Honour.

McHUGH J:   So it was subsumed under manner of new manufacture at that stage?

MR CATTERNS:   No, your Honour, it was subsumed under the notion of the grounds that at common law it could be revoked by the writ of scire facias.  In the 1903 Act ‑ my friend took your Honour to the section yesterday.  So you could, and this Court did many times when it dealt with the cases at first instance when patent cases used to come to the Court directly, revoke many patents on the ground of obviousness under the 1903 Act.

McHUGH J:   So is it fundamental in reading the cases to keep clearly in mind at what stage of proceedings we are dealing with ‑ ‑ ‑

MR CATTERNS:   Absolutely, your Honour.

McHUGH J:   Acceptance, opposition, revocation?

MR CATTERNS:   Yes, your Honour.  That is why it is utterly untenable, I submit, although the use of the word “inventive” might lead one astray now in 1995, to suggest that Microcell and NRDC are at any stage obviousness cases.  They just are not.  They could not be as a matter of law.  I will hand up the sections in a minute.

DAWSON J:   Obviousness in the section 18(1)(b)(ii) sense.

MR CATTERNS:   Yes, your Honour.

McHUGH J:   You could raise it under section 100 under the 1952 Act for revocation.

MR CATTERNS:   Yes, and you could raise it under the 1952 Act for opposition after acceptance, but the examiner, when it is only between you and the examiner ‑ that is why the party is the commissioner.  The examiner could not reject a patent on the ground of obviousness.  Their Honours say in Microcell nevertheless it still has to be an invention within the meaning of the statute.

DEANE J:   Mr Catterns, if you go back, say, to the 1903 Act, is there any case you can point to which says it does not suffice to find a manner of new manufacture, that it discloses an inventive step; one must also find an inventive idea?  Alternatively, this discloses an inventive idea ‑ that is one requirement ‑ but it fails on the second requirement of an inventive step?

MR CATTERNS:   Your Honour, I will answer them in order.  The first one does not quite say the way your Honour puts it, but Microcell is a 1903 Act case.  In that case, although their Honours do not get to the question of inventive step, it fell at the first hurdle.  As to the other, your Honour, there are dozens of cases in the High Court, which we will collect and give your Honours a reference to, where manner of manufacture is not raised but in any event it is held that there is no inventive step and that is the ground on which they are revoked.

DEANE J:   That does not answer my question.  My question is whether the cases support the distinction you draw in terms of manner of new manufacture between an inventive idea and an inventive step as distinct requirements.

MR CATTERNS:   I believe that NRDC and Microcell do, your Honour, and they are my best cases on that.  Perhaps, just picking up a word or two of Sir Keith Aickin in the Meyers Taylor Case, without taking your Honours to it ‑ I can just read out the words.  His Honour says:

The validity of the patent was attacked on the grounds that it was not an invention within the meaning of the Act, that there was lack of novelty, lack of inventive step, and non‑compliance with s 40 of the Act.  No separate argument was directed to the ground that the alleged invention did not comprise an invention as defined ‑

So his Honour had seen them as separate grounds, your Honour, but I cannot get any more than that out of it.

DEANE J:   Except I do not see how that takes you anywhere, I must say.

MR CATTERNS:   He just treats them as separate grounds.  In a way, your Honour, if I am understanding your Honour correctly, this is what your Honour was suggesting to me yesterday afternoon.  They are different matters, we submit.  First, the matter of obviousness is proved on the basis of a prior art base.

DEANE J:   Can I ask you this:  under the old situation, did manner of new manufacture require that both be satisfied on your argument?

MR CATTERNS:   Both inventive step above a prior art base?

DEANE J:   And inventive idea.

MR CATTERNS:   Yes, your Honour, indeed.  The inventive idea concept was in the phrase from the start and is still there, we submit.  Obviousness was found by the courts in the idea of manner of new manufacture and grew into a separate ground.

DEANE J:   On your argument, neither encompassed the other?

MR CATTERNS:   Yes, your Honour, although I accept there are many cases that there will be overlap.

DAWSON J:   But I thought you said at the stage of application, acceptance, the examiner would not be able to take into account the prior art base.

MR CATTERNS:   That is right, your Honour.

DAWSON J:   But he would look at manner of new manufacture.

MR CATTERNS:   Yes, your Honour, on the face of the document.

DAWSON J:   Then in doing that he would be looking simply at the idea of inventiveness.

MR CATTERNS:   Yes, your Honour, on the basis of the document.

McHUGH J:   Was that because obviousness came from the writ of scire facias and that can only be used to revoke a patent?

MR CATTERNS:   Yes, your Honour.

BRENNAN J:   That is why I was going to ask you about novelty.  Is that a scire facias ground as well, want of novelty?

MR CATTERNS:   Yes, your Honour.

BRENNAN J:   So is your argument that 18(1)(b) is concerned with the grounds for revocation of a patent that were available under scire facias and 18(1)(a) is concerned with the concept expressed in the 1623 statute?

MR CATTERNS:   Yes, your Honour, except I confess I do not know whether you could recall a grant under scire facias because it was not an invention within the meaning of the statute.

BRENNAN J:   That may be so, that may be an additional ground, but your proposition, as I now understand it, but perhaps I am putting words into your mouth, is that the concepts in 18(1)(b) were not in themselves concepts which inhered in the 1623 statute.  They were separate grounds for the revocation.

MR CATTERNS:   Your Honour, I think what I am trying to say is they were drawn out of the words of the statute as the courts - using the writ or being asked to invoke the writ - as the courts developed the concept of section 6 of the statute they found the notion of obviousness in it and they either found the notion of novelty in the words “manner of new manufacture” or, as I think is correct but I do not think anything turns on it, they found it in the words “which others shall not use”.

BRENNAN J:   Yes.  It would be strange if there was a ground for scire facias that was not derived from the statute.

MR CATTERNS:   Yes.  I am sorry, your Honour, but that is my understanding of - and I think it is right - the development of the law of obviousness.  It was really a 19th century development from within those words later given statutory recognition first in England by those 1932 amendments.

DEANE J:   Could I just ask you one last question of this series and that is can you point to any case in which, dealing with the old situation,
 it was said in terms, the specification here discloses an inventive step but it does not disclose an inventive idea and, therefore, either the patent should not be granted or, alternatively, the patent should be revoked?

MR CATTERNS:   No, your Honour, I cannot, but I submit that that does not matter.

DEANE J:   It may not, but it would help your argument since that is what you are putting if there were a statement in some case somewhere that said it in terms.

MR CATTERNS:   Well, that is so, your Honour, but the reason I will not find it is because, as it happens, the cases that I am able to cite largely where a patent was rejected on the grounds that there was no inventive idea are acceptance cases where the Commissioner is a party, such as the NRDC Case and the Microcell Case, at which stage the ground of obviousness was not open.  So they will not be a case where there will be a finding of obviousness and a concurrent finding, as your Honour puts to me, the other way on inventive step.

DEANE J:   The problem I have, and I think it is a problem Justice Lockhart might have had, is one’s inclination is to see what you refer to as inventive idea as something capable of being an inventive step at the conceptual stage.  Now, if that is so, at the manner of new manufacture stage, there is no practical distinction between the two.  Or there was and if one were then to accede to Dr Emmerson’s argument that, when you got into the section 18 type context, the pulling out and definition of “inventive step” also extracted inventive idea because they were, as it were, the two sides of the mirror.

MR CATTERNS:   But, your Honour, if that were right, NRDC and Microcell would be wrong.

DEANE J:   Well, you are going to make that proposition good?

MR CATTERNS:    Yes, your Honour.

DEANE J:   Well, that may be the answer to ‑ ‑ 

MR CATTERNS:   I see what your Honour says, with respect but my answer to it is NRDC and Microcell.  Your Honour, I fully accept that something which, at the stage of looking at it at the threshold is so slight, as it were, that it is not inventive in the sense we have been discussing, would very likely fall at the hurdle of obviousness - but, perhaps that is why we are all here today, your Honours - unless, in a particular fact circumstance, you could not prove, as we could not prove, common general knowledge.  Because there was nobody in the field and because the 3M Case requires, as a matter of fact, people in the art having access to the published documents, we could not get to the step of proving the common general knowledge.

DEANE J:   Well, can I break what I said and raise just a further matter?  Can we try and bring this back to the question which the appellant identifies as the only question it wants to argue and that is:  is there a residual requirement flowing from the notion of newness in manner of new manufacture?

MR CATTERNS:   Yes, your Honour.  I am sorry, I did not mean to interrupt.

DEANE J:   Well, I was going to suggest to you that:  is your answer to that a qualified yes in that there is a residual requirement flowing from the notion of invention or newness which is involved in manner of new manufacture and it is the requirement of this inventive idea that is distinct from the requirement of inventive step which has been extracted and put down, as it were, to 18(1)(b)?

MR CATTERNS:   Yes, your Honour.

DEANE J:   If that is so, I have at least identified the issue for myself.

MR CATTERNS:   Thank you, your Honour, I am very grateful for that.

DEANE J:   But, if you are going to depart from it, I would like you to identify the issue a bit differently.

MR CATTERNS:   I honestly do not think I am, your Honour.  What we say is we qualify it yes, and my shorthand is - the question is, is there a residual concept of newness, my friend asks, in the way your Honour put it to me and my answer is yes, qualified in the way your Honour Mr Justice Deane put it to me which, I submit, is the qualification I give, yes, as explained in NRDC and Microcell, or yes, to the extent permitted in NRDC and Microcell, so that answers the question.  If we were to move on I would then say, and the Full Court applied that principle and there is no error shown.

We further say, of course, your Honour, on this that there is no change between the 1952 and the 1990 Acts in that respect, so the residual newness was there under the 1952 Act and is there under the 1990 Act.

DAWSON J:   Can I can just get it quite clear that there is no difference between an inventive step and an inventive idea outside the context of section 18 but in the context of section 18 there is a difference merely because, to ascertain whether there is an inventive step, you have to make a comparison with the prior art base.

MR CATTERNS:   I am not sure, with respect, that I agree with your Honour, I am sorry, because I think in the word “step” there is inherent that notion of comparison and I think that the inventive idea does take one right back to the fundamental ‑ ‑ ‑

DAWSON J:   Yes, I see, but it is the comparison that makes the difference.

MR CATTERNS:   Yes, your Honour, and that is inherent in the word “step” but I think “inventive” means the same thing, meaning it is an exercise of that faculty.

DAWSON J:   An inventive step will always be an inventive idea but not vice versa.

MR CATTERNS:   Yes, your Honour, I think that is right, your Honour.  Your Honours, I think I had not quite finished.

TOOHEY J:   I would have thought your answer had to be a very robust “No” to Justice Dawson.

MR CATTERNS:   I am being told that, your Honour.

DEANE J:   You certainly gave me a robust “No” to that question.

MR CATTERNS:   Perhaps I misunderstood his Honour.

DAWSON J:   What I said was an inventive step will always be an inventive idea but an inventive idea may not be an inventive step because an inventive step involves something in addition, it involves comparison.

MR CATTERNS:   So far so good, your Honour, but I am just not sure about the converse.  If I can try and escape the converse, I know that your Honour is going to try to look me up there.

DEANE J:   I would not count on that.

MR CATTERNS:   I would not accept gifts, your Honour.  I think, really, our submission is that in the complicated and lengthy ways we have tried to put it ‑ ‑ ‑

McHUGH J:   You are under attack from all sides, even from behind.

BRENNAN J:   Take your time, Mr Catterns.

MR CATTERNS:   Your Honour, we really see them as separate concepts.  It is possible that there are large areas of overlap but we treat them - I mean it is perfectly conceivable, as I think his Honour Mr Justice Deane put to me, that there will be many cases where something is not inventive in the threshold sense because you can prove the prior art, that the same conception will not be inventive in the inventive step sense.

TOOHEY J:   But there must be many cases like that, must there not?

MR CATTERNS:   There will be, your Honour.

TOOHEY J:   Inventive step, unless I misunderstood it, is a comparison you make between two factors, as it were.  It does not necessarily take you into the area of inventiveness in the fundamental sense at all, does it?

MR CATTERNS:   That is right, your Honour, but on the other hand, there would be plenty of cases where you can show that in the field, everybody in the sink field was aware of the discovery of stainless steel, therefore it was not an inventive step to come up with it.  Perhaps if I may go on with Justice Lockhart’s reasons.  I was at the bottom of 842 where his Honour says:

I agree with the primary Judge that it would not be an invention -

that is in the manner of manufacture sense -

for the patentee merely to use these known phosphors in known lamps with high wall loads, and that Microcell is closely in point here.

Then, at the top of 843 he accepts that what was done in the instant cases.  At the bottom of 843 he criticises our friends for blurring the distinction.  At line 20 on 844 his Honour says:

His Honour carefully drew the distinction between the use of the word “inventive” in the sense of obviousness and a manner of new manufacture.

Then there is the finding that it means:

the same thing and involve the same concepts as they have been understood and developed since 1623 -

Then his Honour refers to Werner v Bailey and says:

The court does not enquire too finely or minutely into the degree of ingenuity involved to determine whether or not an invention is patentable -

in the manner of manufacture sense -

once it is satisfied that some independent invention has been applied.

That is different from an obviousness case where experts on both sides prove the prior art and then opine as to what the inventive step was, say: “I could have done it easily”; “We would have known to try that”; “The suggestion in such and such an article combined with this and my basic knowledge of chemistry would lead me to do that”; “I could have done it as a matter of routine”, and so on.  That is how you prove obviousness.  But we submit that what his Honour Justice Lockhart is doing there is applying Microcell. 

Your Honours, after having promised it for so long, may I go to the Microcell Case, but first if I could hand up - I am sorry we have not done this earlier, your Honours, we did it overnight - copies of the relevant sections of the 1903 and 1952 Acts on this question of acceptance, together with some textbook passages which I will not take your Honours to at the moment.  May we hand those up, your Honours.  Our friend has copies, and we have got extra copies for the Court.

If I could just go to the first photocopy in the bundle, which as your Honours see is from the Patents Act 1903 to 1950, and section 40 is the relevant section. Perhaps if I go back to 39 - 39 is just when you lodge an application. It is the very front page, I hope, your Honours. Section 39 is the “Examiner to report as to compliance with prescribed conditions.”. That is really, in short, whether you fill in the form properly. Then in section 40 - that is after you have got a complete specification. First, 40(a), the examiner reports:

Whether the invention fully described in the complete specification is substantially the same as the invention the nature of which is described in the provisional specification.

That is the old ground of disconformity now repealed.  Then in section 41:

In the case of all complete specifications the examiner shall also -

(a)  Ascertain and report whether to the best of his knowledge the invention is already patented -

so that is prior patenting.  Then (b), novel.  Then in section 46:

If the Commissioner is satisfied that no objection -

Your Honours see, of course, I am trying to make good that there is no obviousness there.  In 46:

If the Commissioner is satisfied that no objection exists to the specification on the ground that the invention is already patented.....or is already the subject of any prior application for a patent in the Commonwealth.....he shall in the absence of any other lawful ground of objection accept the application

If not, he may refuse it.  Then there is an appeal to the High Court from any decision refusing it.  Your Honours see that there was no ground of obviousness in that.  Going to the Microcell Case in 102 CLR 232, and just if your Honours might notice that this was delivered three months before the NRDC Case - this is the one about the self‑propelled rocket projectors.

My friend took your Honours through this and I will not repeat it, but there are a number of passages that he did not need to go to that we do want to draw attention to.  First, could I take your Honours to page 244.  At point 5 we see the claim:

“A self‑propelled‑rocket projector comprising a tube of synthetic resinous plastic material reinforced with mineral fibres”.

In other words, put very crudely, the use of fibreglass for a self‑propelled rocket projector.  It is that use of the known thing, resinous plastic reinforced with mineral fibres ‑ we now call it glass reinforced plastic; it is another way of saying fibreglass, but it is that sort of thing ‑ used in a rocket projector.  Their Honours at the full paragraph at the bottom of the page refer to section 41 which I have just taken your Honours to:

Section 41 of the Act requires that, in the case of all complete specifications, an examiner shall report to the Commissioner (inter alia) “whether.....the invention is or is not novel”.

Then, your Honours, this is a vital sentence:

This, of course, assumes that the complete specification discloses an invention within the meaning of the Act.

That is the sentence that gets their Honours into that very question.

McHUGH J:   One of the problems I have with this judgment is that Justice Menzies used the words “inventive step”, and that is all he used.  In the Full Court, they also use the words “inventive step”, although later in the judgment they use the words “inventive idea”.  They do not seem to distinguish between them.

MR CATTERNS:   Yes, your Honour.

McHUGH J:   Does that not have some implications for section 18?

MR CATTERNS:   Your Honour, I would be very slow to submit ‑ and I submit to the contrary ‑ that those five Justices accidentally dealt with obviousness when they thought they were dealing with manner of manufacture.  They used the term “inventive” and, indeed ,“inventive step”.

McHUGH J:   They used the term “inventive step” and Justice Menzies, who knew something about patents, twice used the term.  In fact, “inventive step” was the only term he used, I think, in his judgment.

MR CATTERNS:   Yes, your Honour, I accept that.  That is because it is the adjective of “invention”, not because their Honours were dealing with obviousness.  That is my answer, your Honour, and I submit it is right.  But I can see why one is uncomfortable with that.  I myself have been, but I submit that, when one reads it closely, it is so clear that their Honours are talking about manner of manufacture.  Both in this case and in the cases to which their Honours refer, it is all at that stage where obviousness is out of the game.

DAWSON J:   I do not want to press it, but it seems to me that in ordinary parlance, apart from this context, “inventive step” and “inventive idea” can be one and the same thing.  That is why they used the language in that way.  To say that one involves comparison and the other does not is not entirely accurate.  When you are talking about inventiveness, you are necessarily making some sort of comparison, whether you are talking about inventive idea or inventive step.

MR CATTERNS:   Your Honour, I think, put something like that to me yesterday ‑or perhaps it was his Honour Justice McHugh ‑ about whether there was involved in the notion of inventive idea, as gleaned from the specifications, some idea of comparison.  I cannot resist it absolutely, but I do submit ‑ and I think I am only repeating myself ‑ that the question of inventive step and obviousness as a separate ground is its own little universe of discourse.

DAWSON J:   You say that he looked at section 18, inventive step is an entirely different thing because it involves a particular comparison which the section specifies.

MR CATTERNS:   Yes, your Honour, whereas here, on the face of the specification ‑ and, your Honour, it is a comparison of something done by a different person.  In the case of obviousness, it is done by the notional skilled addressee out there in the art in Australia, whereas in the case that we are looking at here, we are looking at what the inventor himself says about what he has done.  And if he says, “All I’ve done is applied fibreglass which is known to be very strong to a rocket” then he, then and there, takes himself out of the field of invention.

McHUGH J:   I am not sure that you have not sort of backed yourself into a corner by your reliance on these cases.  Should not your argument really be throwing its weight on the term “invention” in section 18?

MR CATTERNS:   Oh, yes.  The whole concept ‑ ‑ ‑

McHUGH J:   A patentable invention is an invention that fulfils (a) and (b).

MR CATTERNS:   Yes, your Honour.  I embrace that, if I may.  I certainly add that to our argument.  That is why I quickly, when I went through the Statute of Monopolies, stressed the fact that the grant is to the inventor.  Inherent in all of this ‑ that is the universe of discourse ‑ is that we are talking about inventions.  And that is why, as a little narrow field of that, when the inventor says, “I’m using fibreglass for this new product because it’s known to be strong” that is just not invention.  That is the sense in which there is some concept of ‑ residual concept of newness is not my phrase.  It is in that sense that, where the inventor says, “I’m using this known, i.e. not new, thing”, it is in that sense that newness is alive in these cases and it is within the concept of an invention.

Perhaps in that sense, with respect, your Honour Justice Dawson is right in saying there is an element of comparison in it because the very word “new” has inherent in it some concept of that, or known .

DAWSON J:   And what you are saying is that really paragraph (a), in terms of section 81, is explicable in terms of history but really you could put a line through it and it would not be any different.

MR CATTERNS:   I am sorry, I did not hear the last part of that, your Honour.

DAWSON J:   You could put a line through it and the section would be no different because the word “invention” would incorporate all that paragraph (a) incorporates.

MR CATTERNS:   Well, your Honour, in a way that is what the 1952 Act did.

MR TOOHEY:   Well, it would in this Act simply because invention is given its own definition.

MR CATTERNS:   In a way that is right, your Honour, in a way that is right.  And that is why the explanatory memorandum and the IPAC Report say, “We’re not intending to change the law”.  The law is that you have to jump the hurdle of manner of new manufacture as explained, inter alia, in this case and you have to be novel and you have to be obvious.  In that sense, 18(1)(a) is not necessary because the weight of my argument is additionally carried by the use of the word “invention” as defined.

TOOHEY J:   But the other way of looking at it, I suppose, is to say that paragraph (a) speaks of the manner of manufacture within the meaning of section 6 of the Statute of Monopolies and that section embraces the notion of newness.  So you can find it on your argument, I take it, either in paragraph (a) or in the definition of “invention”.

MR CATTERNS:   Yes, your Honour.  Your Honours, that is why one would not even consider arguing that Microcell and NRDC are wrong - so far it has not happened, I do not think anybody has argued it - because it is inherent in that very concept and this is an application of that concept.  Your Honours, the passages following that after the passage I emphasised 10 or 12 lines from the bottom discuss the standard of proof, in effect, about whether it has to be virtually certain.  At the bottom of 245 there is the argument raised by our learned friend Dr Emmerson:

counsel for the applicants argued that, in order to entitle them to have their application and amended specification accepted, they were required to show no more than that the specification described a manner of manufacture and that it was alleged to be new.

That is partly on the allegation point and you are not bound by the allegation.  Then, your Honour, there is the quotation of the passage from the Glass Case at 246, line 15:

“It has never been suggested that there is any inherent power to enquire fully into the question of subject‑matter in the sense of quantum of invention”.

Quantum of invention, your Honour, is inventive step.  That is obviousness.  So it has never been suggested that there is any inherent power at the application level to inquire into the question of subject matter in the sense of inventive step obviousness:

But he added:  “It has, however, never been contended that either the Comptroller or the Law Officer -

to whom the appeals went -

is bound to accept an application or grant a patent where there is admittedly -

that is in the specification -

no invention in the sense of an inventive step, for in such a case the admission itself would disentitle the applicant to argue that there was even an ‘alleged invention’ disclosed.  In such a case, therefore, the Comptroller and Law Officer would be bound to refuse the application or grant on the footing that no manner of new manufacture was disclosed”.

Now, your Honours, that is the proposition from the Glass Case that is later discussed, not the proposition - your Honours see the footnote refers to page 188.  188 is the page my learned friend took your Honours to.  I will not take you to it at the moment, but what my friend gets out of page 188 of the Glass Case 48 Reports of Patent Cases is the distinction between manner of manufacture and then newness, but that is not the passage that is cited and approved, it is this passage which is in fact at line 35 on page 188 and I can make that good quite easily later.  Their Honours go on at point 5:

When the learned Solicitor-General uses the words “admittedly” and “admission”, we do not take him as having in mind an express admission contained in the specification.   It is most unlikely that an applicant would make such an admission.  It must be enough to warrant rejection that it should be clear on its face that the specification discloses no inventive step.

I am now at the last paragraph, your Honours:

The specification in the present case does not, in our opinion, disclose a patentable invention.

Which was the question their Honours asked themselves a few pages earlier.  Then there is the reference to the passage from Terrell.  Now, your Honours, that is a different passage as I understood it, unless I misheard my friend, to the passage he cites earlier in the text in the 8th Edition of Terrell.  This is where Terrell is talking about acceptance of patents.  The passage reads, beginning at the bottom of the page, now on the top of page 247, your Honours:

the Comptroller has jurisdiction, both on application and opposition, to consider whether the invention is a ‘manner of new manufacture’ within the meaning of s. 93.  In the exercise of this jurisdiction, applications have invariably been refused where the invention is merely for a new use of ‘an old and well-known substance by itself, without saying more’, and in such cases it is not enough for the applicant to show that he has produced a vendible article”.

So, merely saying this is a manufacture in the sense of vendible article is not enough.  May I interrupt your Honours there and quickly go to my friend’s bundle to show your Honours the context of that passage from Terrell.  It is behind tab 2 in our friend’s bundle.  Your Honours, the first page our friend gives you is page 54 where there is this discussion of subject matter and I do not need to take your Honours through that, but that is the discussion that moves from the question of manner of manufacture to obviousness later, but the passage that the High Court quotes begins at page 213, which is towards the end of the extract from Terrell, which is in chapter 8 of Terrell.  It is at page 213  There is the passage, as has already been stated:

the Comptroller has jurisdiction.....to consider whether the invention is a ‘manner of manufacture’ -

and there is the passage on old and well-known substance, et cetera.  Then on page 214:

It is shown in that case that the portion of the definition of invention which includes in the meaning of the word an alleged invention, the word “alleged” goes only to the epithet “new” -

that was dealing with the submission, to which I took the Court a bit earlier, that had been put in Microcell that all that needed to be done was to see whether there was a manner of manufacture and whether it was new.  Then, at the top of page 262, the Court says this:

But the case cited shows also that even if the process is within the concept -

that is to say the concept of manufacture -

the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded.

So the Court has no difficulty in recognising what was going on in Microcell.  In Microcell the Court looked to the body of the specification, found as a result of reading that that the invention was not new, and that was what it was concerned with.

Just before I leave Microcell, could I remind the Court that Microcell does not stand for the proposition that you can never get a valid patent for new uses for old things.  The Court deals with that expressly at 249 and it means that it is important also when reading that case that not only does one properly understand the statutory scheme on which the Court was proceeding, but also should understand that the Court was not in Microcell simply saying that whenever a component was old you could never have an invention for a new use for it.

BRENNAN J:   Dr Emmerson, could I just take you back for a moment to your reference to pages 261 to 262:  Is there anything that turns on the citation of the case of Re Johnson’s Patent?  The reason why I ask you that question is that there is a sentence in the judgment ‑ I think it is Lord Justice Romer says:

The question whether, apart from prior publications and prior claims such as are specifically dealt with in sub-paragraphs (b) and (bb) of subsection (I) of Section II, the manner of manufacture is “new” is not one with which the Comptroller is concerned, as has been very clearly pointed out by Sir Stafford Cripps ‑

in the case to which we referred? 

MR EMMERSON:   Yes.

BRENNAN J:   Does that lead to any enlightenment on the problem?

MR EMMERSON:   In our respectful submission, no, it does not contradict what I was saying because Sir Stafford Cripps draws a clear distinction.  He said it is well understood that the comptroller cannot inquire fully into quantum of invention but that there are certain limited circumstances in which you can.  I do not take the passage that your Honour has just read to me as being inconsistent with that.

BRENNAN J:   Justice Deane points out to me that the words which follow the passage which I read to you ‑ after referring to the Compagnies Reunies Case, the Honourable Justice Romer says:

in other words, a manner of manufacture alleged to be new is an invention within the meaning of the Act.

MR EMMERSON:   Yes.

BRENNAN J:   “Alleged to be new”.

MR CATTERNS:   May I ask your Honour to go on to the following five or six lines?

BRENNAN J:   I do not know whether it is appropriate in the course of this.  Perhaps if Dr Emmerson can have a copy of it, we could go on to the next five or six lines.

McHUGH J:   In fact I was going to refer to it, because it seems to me that the next five or six lines are inconsistent with Microcell itself, particularly, and with NRDC.

MR EMMERSON:   The particular passage on that page which I take this Court to have been referring to when it gave a reference to Re Johnson’s Patent is the passage that begins at line 13:

The truth of that allegation is a matter that can only be enquired into by the Court on a petition for revocation or in an action for infringement.  This does not, however, mean that the Comptroller is bound to accept the allegation of the Applicant that his method of manufacture is new if it is apparent upon the face of the specification, when properly construed, that the allegation is unfounded.

That seems to be what the High Court is referring to in Microcell, because that sentence is saying exactly what the Court has just said in the sentence at the top of page 262 in Microcell.

In answer to a question from your Honour Justice McHugh, it is not clear to me that the last six lines are inconsistent with ‑ ‑ ‑

McHUGH J:   No, I accept that.  I read it wrongly.

MR EMMERSON:   If your Honour pleases.

McHUGH J:   It was not that I read it wrongly.  I did not go on to read the part, “This does not, however, mean”.

MR EMMERSON:   If your Honour pleases, yes.  Could I next turn to deal with how we say the question of what is sometimes called “analogous user” is tested under the present statutory scheme.  In our submission, if you have a case in which a known substance is being used for a new purpose, then you still test any claim against the requirements of novelty and obviousness.  Now, in fact, the NRDC Case expressly mentions that at page 278 so far as novelty is concerned.  At about line 8 the Court says this:

It must often happen in a sphere of human endeavour as old as that of primary production that a newly‑devised procedure amounts to nothing more than an analogous application of age‑old techniques; and where that is the case, want of novelty is a fatal objection to a patent.

So there the Court is applying the standard statutory ground of want of novelty in an analogous user case.  There are, of course, other analogous user cases which have been dealt with under the heading of obviousness and I think the Court has already been told that this is a common way in which these matters are dealt with.  What we submit is that there is no, as it were, separate ground of analogous user which is not covered by the novelty and obviousness objections.  If what is claimed is new and is not obvious, then it is patentable and it does not matter in those circumstances that some or all of the components might have been known before.

Could I next deal with the issue of inventive step and inventive idea.  In our submission, the true view is as follows.  In considering patentability both the 1952 Act and the present 1990 Act use the expression “inventive step”.  They do not speak of inventive idea.  As the language is sometimes used in the cases, there is sometimes no clear distinction drawn between the expression “inventive step” and “inventive idea”.  However, the expression “inventive idea” sometimes comes up in infringement cases in which you ask the question, “Has the substantial inventive idea been taken by the allegedly infringing article?” but that is, of course, a context which is quite different from the question of inventive step.

So far as the two cases relied upon by our learned friends were concerned, Microcell at page 246 was talking about “inventive step” and it is perfectly clear that not only was that what it was talking about, that was the language that was being used.  The Court will see at about point 4 on the page in quoting Sir Stafford Cripps:

It has, however, never been contended that either the Comptroller or the Law Officer is bound to accept an application or grant a patent where there is admittedly no invention in the sense of an inventive step.

So it is not using the language of inventive idea.  Further than that, in the second-last sentence in that paragraph the Court says:

It must be enough to warrant rejection that it should be clear on its face that the specification discloses no inventive step.

The Glass Case at page 188 uses the same language, indeed, that is where the quotation comes from.  If one goes to line 30:

It has, however, never been contended that either the Comptroller or the Law Officer is bound to accept an application or grant a patent where there is admittedly no invention in the sense of an inventive step -

Terrell, at pages 214 to 215 again uses that language and indeed, as he is dealing with the Glass Case, it is perhaps not so surprising.  In our submission ‑ ‑ ‑

McHUGH J:   NRDC also uses the word “inventive step” at the bottom of page 262.  The second-last sentence says:

In that case there may be invention. -

MR EMMERSON:   Yes.

It is not necessary that in addition the proposed method should itself be novel or involve any inventive step.

So, that is again what is used.  In our submission, there just are no cases that say that even if you have an inventive step you may fail for want of an inventive idea, if by inventive idea you mean some comparison with the prior art.  There is simply no scope left, in our submission, for that to be the case.

Could I next make some submissions about the NRDC Case and what it was talking about.  The case, at pages 261 to 268, is dealing with an obviousness objection, but it puts that objection to one side.  It deals with an argument based on analogous use and then says, at 268 at about point 2 on the page:

that it is out of the question to hold that on the face of the document, properly construed, the process the subject of the first three claims appears as nothing but a new use of an old substance.

So, the question simply does not arise.  Accordingly, the Court goes on to what it describes as the central question in the case, and that central question is a question of manner of manufacture.  We say that it is perfectly clear that NRDC is a case about manner of manufacture.  Our position is summarised in the transcript of proceedings before this Court at page 25, and we would reject the submission that our learned friend put at page 62 that our submission had been that the NRDC Case was primarily a question of obviousness; it was not.  Obviousness disappears very early on in the judgment and we never contended the contrary.

It follows from that that it is not surprising that NRDC has no detailed account in the main part of its reasoning of a comparison with the prior art, because it is not about a comparison with a prior art, it is about manner of manufacture.  By contrast, Microcell is about the question of

newness and so, although NRDC and Microcell were decided close together, they were considering quite distinct questions.  Microcell was concerned with newness; NRDC was concerned with manner of manufacture.  If the Court pleases, those are the submissions in reply.

BRENNAN J:   Thank you, Dr Emmerson.  The Court will consider its decision in this matter.

AT 3.33 PM THE MATTER WAS ADJOURNED