N.V. Philips Gloeilampenfabrieken & Anor v Mirabella International Pty Ltd
[1995] HCATrans 51
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 TUESDAY, 14 MARCH 1995, AT 10.21 AM
Copyright in the High Court of Australia
MR J.M. EMMERSON, QC: If the Court pleases, I appear for the appellants in this matter. (instructed by Sly & Weigall)
MR D.K. CATTERNS, QC: May it please the Court, I appear with my learned friends, DR. A.C. BENNETT, SC and MS S.J. GODDARD, for the respondent. (instructed by Williams Niblett).
BRENNAN J: Yes, Dr Emmerson?
MR EMMERSON: If the Court pleases, the parties have provided the Court with fairly extensive written submissions. We have provided the Court with written submissions in-chief and also with some further submissions in reply to those that have been filed on behalf of our learned friends. We have also provided the Court with some volumes of supplementary materials which primarily consist of various extracts from statutes in order to make good what we say about the legislative history of the provisions with which we are concerned today.
BRENNAN J: Dr Emmerson, special leave was granted in this matter to raise what is said to be a discrete question of law, and that is the meaning of the term in 18(1)(a).
MR EMMERSON: That is correct.
BRENNAN J: Is there any reason why the Court should not restrict itself to a consideration of that question?
MR EMMERSON: We would be entirely content for the Court so to restrict itself.
BRENNAN J: With a view that if you should succeed, the matter would be remitted to the Federal Court?
DEANE J: To see what followed from your success?
MR EMMERSON: We would say that what follows from our success is that the judgment under appeal must be set aside, and we would therefore be seeking the relief that we set out in our notes of appeal.
DEANE J: But we were expressly told that the appeal would not involve any complex question of fact.
MR EMMERSON: Yes.
DEANE J: Well then, how could you get the relief you seek in your notice of appeal without our looking at the complex questions of fact and reaching a stage where we understand the complex processes involved in this case?
MR EMMERSON: Well could I approach the question this way, your Honour? If the Court is of the view that it is necessary and proper to embark on the issue of novelty, which our learned friends wish to raise, then I would accept that this is not a matter which it is appropriate for this Court to consider, because that does involve complex questions of fact.
DEANE J: But, why should we not simply deal with the discrete simple question of construction that you got leave for us to deal with; if you fail on that the appeal is dismissed, if you succeed on that the matter can be remitted to the Federal Court to see whether your success has any significance. Questions of cost, of course, would be reserved until it is seen whether your success did have any significance.
MR EMMERSON: If the Court pleases, I cannot really resist that. It is not part of our intention in bringing this matter before this Court to agitate complex questions of fact. If the Court wants to hear argument on those, then so be it and we would be prepared to put them, but if the Court is of the view that it is not appropriate to consider those questions, then I cannot resist what your Honour has just put to me.
BRENNAN J: From your point of view you have no objection to limiting your argument to the question of law being the question of construction and having the matter, if you should succeed, remitted to the Federal Court.
MR EMMERSON: We would accept that, yes.
BRENNAN J: In order that we can see in which way the argument should progress, we should hear Mr. Catterns.
MR EMMERSON: If the Court pleases.
MR CATTERNS: Your Honour, I think I understand what the Court has been putting to our learned friend. We have difficulty now, the way the submissions have fallen out, in seeing that there is any disagreement between us on the question of construction. We understand it that our friends now say that subject to a proviso that you do it properly, one uses the old law, the NRDC Case and the Microcell Case, and the omission of the word “new” in section 18(1)(a), which was the special leave point as I understood it, makes no difference.
The question is the question set out in the NRDC Case, namely, is this the proper subject matter of letters patent within the meaning of section 6 of the Statute of Monopolies as the term has been expanded in the last 300 years.
BRENNAN J: But if Dr Emmerson is to succeed on this appeal, he would have to demonstrate two things, would he not? One is that there is some distinction between the true construction of section 18(1)(a) and the construction attributed to it by the Federal Court.
MR CATTERNS: Yes, your Honour.
BRENNAN J: And the second is that that difference lies in the distinction between method of new manufacture and method of manufactur - manner of.
MR CATTERNS: Yes, your Honour. As we understand it, our friend would have to establish that. I do agree with that, your Honour, and I do agree ‑ ‑ ‑
DAWSON J: You support the construction in the court below, do you?
MR CATTERNS: Yes, your Honour, and also their Honours holding that the change in wording, the omission of “new”, was not intended to and did not effect the change. The old principles still apply as discussed, for example, in NRDC and Microcell.
DAWSON J: So that there must be some difference between you and Dr Emmerson or else Dr Emmerson fails.
MR CATTERNS: Your Honour, that is the first point we put in the little three‑page hand up we prepared.
DEANE J: But the point that was made, as I recollect, was that the context of the new Act precluded invention being manner of new manufacture and created a situation where invention was simply a manner of manufacture with the result that while the requirement of novelty in the invention remained there was not, as it were, a discrete requirement of new manufacture as distinct from novelty in an invention being a manner of manufacture.
MR CATTERNS: Your Honour, that is as I understood the argument on the special leave.
DEANE J: You are at issue on that, are you not?
MR CATTERNS: Well, except, your Honour, that our friend’s reply ‑ ‑ ‑
DEANE J: Forget the reply. You ‑ ‑ ‑
MR CATTERNS: I disagree with what Mr Ellicott put.
DEANE J: You do disagree with what I just put to you, do you?
MR CATTERNS: Yes, I do, your Honour, and I say there is no change since the earlier cases and the omission of “new” makes no difference and Microcell and NRDC did not depend on the use of the word “new” in the phrase “manner of new manufacture”.
DEANE J: That might be so, but what I am putting to you ‑ and it is only after having struggled through information which to date I largely do not understand ‑ it seems to me that, that being the question in respect of which leave was granted, if you are opposed to that as a matter of construction, we should decide the question of construction and remit it to the Federal Court so that they can then deal with your argument that the question of construction in the circumstance of this case is a purely hypothetical one in terms of the way their Honours decided it.
MR CATTERNS: Your Honour, I do not disagree with that, with respect, save the matter of our ‑ ‑ ‑
DEANE J: Do not hesitate to disagree because, as I have said, I had great trouble understanding the case.
MR CATTERNS: Your Honour, I do not. We would say that if we are right on construction, then we win the appeal and that is that. If we are wrong on the construction, it would be remitted, as his Honour the presiding Judge said, to see if it made a difference. Our submission to the Full Court would be of course that it makes no difference and that their Honours have correctly applied the law. My only caveat, your Honours, is a different question which is the notice of contention. We submit at some time or other as a matter of justice we ought to be able to raise those points if we lose otherwise. If we win on manner of manufacture, it is unnecessary; I accept that.
McHUGH J: But you may have to come and seek special leave in respect of those points.
MR CATTERNS: Your Honour, I submit not because I submit it comes clearly within Order 70 rule 65. We do not seek a discharge or variation of the judgment in the sense of the operative orders.
McHUGH J: No, but what I am putting to you is that there is no reason why this Court cannot take a discrete question of law, send it back to the Full Court. If that point is answered adverse to you, then you lose on all points in the Full Court, and then it would be up to you to seek special leave to appeal against the judgment.
MR CATTERNS: Your Honour, with respect, procedurally, I concede what your Honour is putting to me. It would be a strange and unfair result if we were then to lose, having got here with an entitlement to a notice of contention then to lose our right.
DEANE J: Not really in so far as to the limited extent I understand the technical matters. There are largely concurrent findings of fact against you in relation to those points you wish to raise in your notice of contention.
MR CATTERNS: Your Honour, we would respectfully disagree on the question of novelty; that would take a bit of an argument. But so far as fair basis goes, no, your Honour, that is not dependent on fact as I see it; it is just the court disagrees as a matter of law with the way we put our fair basis case.
DEANE J: It is a bit of a mirror, I would have thought.
MR CATTERNS: Your Honour, in a sense, the fair basis case is the mirror of the manner of manufacture case. They are very closely related, as his Honour Justice Wilcox said at first instance. If we were to lose on - it is quite a tenable result that we would lose on manner of manufacture and win on fair basis because the Court might hold, contrary to our submissions, a claim for those sort of desirable properties is the manner of manufacture but it might hold - if we are right - that claim 1 travels beyond the limited number of phosphors referred to in the specification. Really, those matters are very closely related and that is why we submit, as a caveat to otherwise agreeing with the procedure, it would be unfair of us to be left out on a limb on fair basis where their Honours in the Full Court only had to deal with it in a sentence, our main fair basis point, because they were with us on manner of manufacture.
BRENNAN J: Then it seems to me that any apparent injustice that might be suffered would count very much in your favour in any further application for special leave if that should arise.
MR CATTERNS: Thank you, your Honour. I will not say any more about that.
BRENNAN J: That is not to say that there is any injustice.
McHUGH J: If, for example, Dr Emmerson’s argument is correct and you should have lost in the Full Court, then you should have always been the mendicant, you should have always been the person who had to seek special leave on all the points.
MR CATTERNS: I suppose that is right, with respect, your Honour, and I suppose on the special leave we would be saying, first, that it is an important point but, secondly, as a matter of justice their Honours dismissed our fair basis case, which is a solid one, in a sentence because, now held wrongly, they were with us on manner of manufacture.
DEANE J: But, the real problem that you will face, if you do come back is this, is it not, that, whereas it is completely appropriate for this Court to deal with a question of construction of an important statute, it is completely inappropriate for this Court to get involved in the details of the manufacture of fluorescent lights, and the like. That is the very sort of thing that should be left to the Federal Court and the absence of the identification of a particular question of principle or statutory construction that requires the intervention of this Court.
MR CATTERNS: Your Honour, I cannot disagree with that. Indeed, on a special leave application on Friday, the Court upheld a submission of mine to that effect. It does not stop us arguing both sides of the case, your Honour, I know.
DEANE J: I mean, the thing that has disturbed me is ‑ I have struggled with this over the weekend ‑ trying to understand where what we were told was a discrete question of law that does not involve any complex questions of fact; trying to understand where that fits in to the case. And, perhaps I should not be directing that complaint to you.
MR CATTERNS: Indeed, your Honour, I would attempt to amplify it and aim it at my friend, but I do not disagree with that, your Honour, with respect.
BRENNAN J: Well then, it comes to this, does it not, that if the Court takes the course which was adumbrated before of sending the matter back after resolution, if successful, of your opponent’s submissions, that will
leave you with an opportunity, not necessarily a secure opportunity, of coming back here once more?
MR CATTERNS: Yes, your Honour, I have got nothing further to say on that. Thank you.
BRENNAN J: And it should be clearly understood that there is no undertaking, on the Court’s part, that any opportunity that you may have is likely to result in the fruitful grant of special leave.
McHUGH J: You are familiar what we said in Yamazaki last year about the Full Court’s ‑ ‑ ‑
MR CATTERNS: Yes, your Honour. It was said again on Friday, your Honour, in the CCOM v Jiejing matter. Yes, I am. Your Honours, the only caveat, if I may put it now to the Court, that has fallen from the Bench so far, is I am not certain yet how our friend will put the question of construction now in light of the way the submissions have gone and it may be that this course does not work, with respect. But I have to say nothing against it, at this stage.
BRENNAN J: Yes, well we will see how the course runs.
McHUGH J: If it does not work, he may be in danger of having his special leave revoked.
MR CATTERNS: Yes, or rescinded. We see the force of that. May it please the Court.
BRENNAN J: Thank you, Mr Catterns. Yes, Dr Emmerson?
MR EMMERSON: If the Court pleases, it is our submission that it is no part of our case to resile from the basis on which a grant of special leave was made. We maintain the position that, underlying this case is an important but relatively narrow question of construction, that it can be approached as a question of construction and we would wish to deal with it in that way. It is true that in our written submissions we attempted to set out or report what was the factual basis underlying the invention but, ultimately, we would say that if we are right in what we say happened in the court below, it is quite unnecessary for this Court to look at the details. What happened below was that in the course of the proceedings, the respondents had abandoned their argument that the invention was obvious and did not involve an inventive step. So, that was out of the case.
Further than that, it was held both at first instance and unanimously in the Full Court that the respondents had not made out a case that the invention was bad for want of novelty. Our point, put shortly, is this: we say that in the light of that concession and that finding then it is simply not open to the court to consider again matters which depend ultimately on issues of newness.
BRENNAN J: But you are equating then the notion of new in what used to be the predecessor of section 18(1)(a) and novelty.
MR EMMERSON: We are saying that the requirement for newness has two components: one is that the invention should be novel; the second is that it should not be obvious but should involve an inventive step. We say those are the requirements for newness.
BRENNAN J: And that there is no other requirement - - -
MR EMMERSON: There is no additional requirement.
BRENNAN J: - - - other than novelty and inventive step.
MR EMMERSON: That is correct, yes.
BRENNAN J: The question then is: under the 1952 Act, was there any further and, if so, what other requirement? Do you say there was?
MR EMMERSON: No, we would say that there was not. Subject to a presently irrelevant reservation, there were provisions dealing with an objection which was known as prior claiming and, lest it be thought that I have overlooked those, I mention that they exist. They do not arise on the present case and they do not touch the argument that we put in this case because the requirements for newness all involve the invention being considered against the admissible prior art. Now, that was true under the 1952 Act. It is also true under the 1990 Act.
BRENNAN J: But we are endeavouring not to conflate two concepts, are we not? One is whether there is any element of new which has been excluded under the new Act and the second is the notion of novelty.
MR EMMERSON: Yes.
BRENNAN J: As I read page 838 of the judgment in the court below, there was a clear argument put on the part of your side of the record that:
there was a substantial and deliberate change introduced into the 1990 Act -
and I was endeavouring to discover what it was that, in your argument, was said to be a substantial and deliberate change.
MR EMMERSON: Yes, the substantial and deliberate changes fall under two headings. One is that in the 1990 Act the permissible objections were, as it were, reordered and rearranged, so that in place of the old section 100 one now has the new section 18 and that has certain consequences. The second is that the content of the objections was to some extent changed because the 1990 Act provides, as its predecessor did not, a precise scheme which sets out the relevant prior art against which newness in both its forms is to be tested. So that was a change that was made.
BRENNAN J: Can I interrupt you for a moment? You are saying newness in both its forms.
MR EMMERSON: Yes.
BRENNAN J: Was there a change from the 1952 to the 1990 Act in relation to newness conceived of as a test of novelty?
MR EMMERSON: Yes, there was because of the new definition of prior art base. It may be that nothing turns on that, but undoubtedly the prior art base has been expanded under the 1990 Act. The form of words that was used in the 1952 Act was having regard to what was known and used in Australia. Those were the indications of the prior art that you looked at. Now, what has happened is that there is an express definition of prior art base which is set out in the schedule at the end of the Act and there is also expressly set out in section 7 an account of how one approaches the question of novelty.
BRENNAN J: Did that change affect the concept of newness in its second form?
MR EMMERSON: In the case of obviousness and want of inventive step?
BRENNAN J: No, I thought you were speaking in terms of newness in two aspects.
MR EMMERSON: That is correct, yes.
BRENNAN J: One is novelty. The other is what?
MR EMMERSON: The other is obviousness or want of inventive step, and the answer again is, yes, it did change it and it changed it in an analogous way. Once again there is a new definition of prior art base which is not the same as the definition of prior art base which had been derived from the 1952 Act. The second is that once again section 7 sets out how you approach the question of obviousness or want of inventive step and that again is somewhat different from the way in which it was approached under the 1952 Act.
Could I just add, to round out what I have said, we would say that the whole position is different yet again from the position that existed under the old 1903 Act which was the Act under which this Court decided the Microcell Case.
The particular error that we say that the Full Court fell into was that it tended to treat the expression “manner of manufacture” in section 18(1)(a) as if there were some residual requirement of newness; that is to say, something further that was to be tested by comparison with the prior art. In our submission, that is the central error made by the court below. We say that the requirement that there be a manner of manufacture set out in 18(1)(a) is, it is true, a requirement that has been in preceding Acts, and indeed in all Acts going back to the Statute of Monopolies of 1623. However, that is a concept which has undergone itself some development over the years, notably by this Court in the NRDC Case.
That is something which has happened by a succession of judicial decisions. We do not say that there is any specific part of the 1990 Act which sets out to change the concept of “manner of manufacture” as distinct from the concept of “manner of new manufacture”. Nevertheless, we of course rely on the development of case law as it has occurred over the years, and that includes the NRDC Case.
DEANE J: Dr Emmerson, could I just divert you for one second so I can understand to the best of my ability. Can I take you to page 838, which is in volume III. At line 31 Justice Lockhart said:
In my opinion the combination of s 18(1)(a) of the 1990 Act and Schedule 1 thereto (where it defines “invention”) ‑
bringing in “manner of new manufacture” ‑
continues in force the notion of “manner of new manufacture” present in s 100(1)(d) of the 1952 Act.
Am I correct that that is the discrete question which leave was granted for this Court to examine?
MR EMMERSON: It is one way of putting the question; yes, your Honour.
DEANE J: Well, on the application for leave, that was my understanding of the beginning and the end of the discrete question that we were granting leave to examine.
MR EMMERSON: The question is, whether the requirement that an invention be a manner of manufacture, pursuant to section 18(1)(a), carries with it any residual requirement of newness to be derived from earlier cases. That was the discrete question.
TOOHEY J: That is one way of putting it, but I suppose the other way is to push the argument back to the meaning of “invention”.
DEANE J: Yes.
MR EMMERSON: Yes.
TOOHEY J: And is that not the possible point of distinction; that it is the definition of invention, not the components that follow in paragraphs (a) and (b) that lets in the requirement of new manufacture.
MR EMMERSON: Yes.
TOOHEY J: Well, where does the argument end up?
MR EMMERSON: Well, where the argument ends up is that it has always been a requirement for the grant of letters patent in this context, that they should be for a manner of new manufacture. That is an expression which goes back to the statute of James I. We say that that has always involved two separate questions. The first is, is it a manufacture? And the second is, if so, is that manufacture new? Now, what has happened in the 1990 Act is that there is a further refinement of the way in which the Act now approaches the second of those questions; namely, is the manufacture new?
TOOHEY J: But it may be more than a refinement, may it not?
MR EMMERSON: Well, it involves a change such that some things might have been patentable before and are not patentable now, yes.
TOOHEY J: But I rather thought that you were approaching the matter on the basis that under section 18, manner of manufacture had no element of newness built into it; that newness, in the sense that you have expounded it, is to be found in paragraph (b) and depends on novelty and inventiveness as they are defined ‑ ‑ ‑
MR EMMERSON: That is correct, yes.
TOOHEY J: ‑ ‑ ‑but then, when you look at the meaning of invention, it takes you back to manner of new manufacture.
MR EMMERSON: Yes, it covers both. That is to say ‑ ‑ ‑
TOOHEY J: But that would leave paragraph (b) with nothing to do, would it not.
MR EMMERSON: No, indeed it would not, because the definition of invention that is set out in the schedule involves manner of new manufacture. That is to say, it involves both the requirement that there should be a manner of manufacture, and the requirement that that manufacture should be new. So, it takes up, speaking compendiously, both the requirement under section 18(1)(a) and the requirement under section 18(1)(b).
TOOHEY J: Except that the requirement under paragraph (b) has its own dictionary which may not accord with the pre‑1990 understanding of newness.
MR EMMERSON: It is not identical; it is on the same general lines.
TOOHEY J: Yes, but if you were working your way though section 18, what do you do? Do you start with asking whether there is an invention? That throws you back on the definition of invention and that itself requires a manner of new manufacture and you may have to stop there because you cannot jump that hurdle before you even get to paragraph (b) unless somehow you use paragraph (b) to qualify the meaning of invention. That is a difficult exercise.
MR EMMERSON: The schedule defines “invention” as:
any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies -
So that, as it were, incorporates the developments of the law that had occurred up to that point. However, section 18 is dealing with what is a patentable invention and the definition says it is an invention, so it takes in the notion of invention. But so far as claimed in any claim, (a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, so that takes up part of the definition of invention which is set out in the schedule, and then (b) when compared with a prior art base as it existed before the priority date is novel and involves an inventive step.
We would say that that accords perfectly well with the definition of invention that one finds in the schedule. What is here being worked out are component parts of that definition.
TOOHEY J: But the component parts are to be found within the definition itself are they not, so far as the term “invention” is concerned.
MR EMMERSON: In determining what is patentable one must look to section 18 because that tells you what a patentable invention is. It may be that over the years as the notion of invention has changed, but if you want to find out what are the requirements for patentability then, in our submission, you must go to section 18.
TOOHEY J: Yes, I understand that, but my problem is that while you are talking about patentable invention you are talking about an invention that is patentable. Now, in order to decide whether it is an invention so that you can take the next step of asking whether it is patentable, do you not look at the meaning of invention as appears in schedule 1, and does that not then throw you back on the notion of “manner of new manufacture”?
MR EMMERSON: It certainly throws you back on the approach that you have to ask yourself, “Is this a manner of manufacture?”
MR TOOHEY: No, no, manner of new manufacturer.
MR EMMERSON: Yes, but manner of new manufacture before the 1990 Act, in our submission, clearly involved two questions: one, is there a manner of manufacture and secondly, if so, is that manufacture new? And so, that analysis clearly precedes the 1990 Act. What is done by section 18 is a setting up of a more precise statutory scheme which works out that analysis.
DAWSON J: Can I ask ‑ ‑ ‑
MR TOOHEY: Well, that would be fine except that invention itself carries this particular meaning. What you appear to be doing, I think, is taking paragraph (b) as the definition of novelty and inventiveness ‑ ‑ ‑
MR EMMERSON: Well, those are actually further defined in section 7, as it happens.
McHUGH J: That is the point.
MR TOOHEY: Yes, I appreciate that. But my problem is still the one that I put to you a little while ago: that, if there were no definition of invention or no definition which used the words “any manner of new manufacture”, then section 18 would fall neatly into place.
MR EMMERSON: Yes, it would.
MR TOOHEY: But, how do you reconcile paragraph (b) with the element of manner of new manufacture in the definition of invention?
MR EMMERSON: Because, in the definition of invention, the word “new” is still preserved and, in order to find out what is meant by newness, then you look to 18(1)(b).
DAWSON J: That is what I thought you were saying, that in fact 18(1)(b) is definitive of the meaning of new in the phrase “new manufacture” in the schedule. Is that what you are saying?
MR EMMERSON: That is our submission. Yes, your Honour.
McHUGH J: Yes and I think you have to say that. In fact, you really have to say that the word “new” in the schedule is quite superfluous, really. I know you will not like saying it, but I think that is what you really have to say. I do not think it affects your argument in any way.
MR EMMERSON: Well, I am not conscious of any embarrassment on that point, if your Honour pleases. We say that the definition in the schedule recites the words which have been there since 1623, but those are words which have not always been given the same meaning, as we have tried to show in the development of these matters. There has been a further development under the 1990 Act but we say that that is consistent with the approach that has always been taken to the words which are found in the schedule.
McHUGH J: Well, except that if it has any meaning, if there is any residual element of newness outside the combination of 18(1)(b) and section 7, then the prior art base is undefined.
MR EMMERSON: Precisely, yes, which we say is one of the strong indications that there is no such residual element of newness.
DEANE J: The effect of all that is that the discrete question we are called upon to determine is whether what Justice Lockhart said at page 838 is or is not correct. If what he says is correct and, contrary to what you say, the definition does carry and continue in force the notion of manner of new manufacture, you fail. If it is incorrect, then the answer to the question would be that the definition does not carry forward the notion of manner of new manufacture and we would send it back to the Federal Court to see whether that on analysis has anything to do with their decision.
MR EMMERSON: Well, your Honour, at one level it does carry forward the notion of manner of new manufacture because ‑ ‑ ‑
DEANE J: Well, that is not the way it was put on the application for special leave.
MR EMMERSON: My understanding of the way the case was put on the application for special leave was that it was sought to raise the question of whether there was any residual element of newness to be found in section 18(1)(a) and we would, with respect, prefer to put it that way than to take the language that his Honour Mr Justice Lockhart has used as being in one sentence a precise definition of the distinction because the way his Honour puts it is, we would say, a little difficult to follow. He speaks about the concept of manner of manufacture and what was said to be a separate question of whether such manufacture is a new manufacture.
Now, we would say on any view and, indeed, on his Honour’s own reasoning, he draws a distinction between manner of manufacture, novelty and obviousness. He says those are separate questions, but he says, and in our submission incorrectly, that under the head of manner of manufacture one can inquire into the question of newness, that is to say, you make a comparison with the prior art and you can found an objection on that basis. Now, our submission is that his Honour was simply wrong in that, that when you are looking at manner of manufacture you are not looking at the issue of newness.
DEANE J: That is what was put; that is, that the critical question was: has the alteration to the form of the legislation taken newness out of the notion of manner of manufacture and substituted a requirement of novelty which can look to the past cases and will incorporate most of them? But you can no longer say that it is necessary to look for new manufacture, whatever that might mean. With my imperfect understanding, that was the discrete question that we were faced with on the leave application.
MR EMMERSON: Save for this, your Honour, that we do not say that the distinction that we are seeking to draw is one which arose for the first time under the 1990 Act. I think that is where I have difficulty in part with what your Honour is putting to me, because we say that the issue of manner of new manufacture has always involved the two questions: is there a manner of manufacture; and secondly, if so, is that manner of manufacture new? That has always been the case. What has changed ‑ ‑ ‑
DEANE J: But, Dr Emmerson, the second question that was asked after “What is the precise question of law?” was asked was, “Do you contend that the meaning of that expression is less in content than manner of new manufacture under the 1952 Act?” “Yes, we do and we say that the Parliament purposely took out the word ‘new’.” That to my mind identified the question. What if you succeed in persuading us that in the context of the other sections of the Act one should read “invention” in the introductory words of section 18(1) as if it did not include the defined word “new”? As I understood the question, you have succeeded in getting the answer to the question that you were contending for. Is that right or wrong, or are you saying that having got that answer we now have to go and look at all the circumstances and everything else and, as it were, write a prescription for what is involved not in invention but in the word “novel” as applied to invention?
MR EMMERSON: We do not say that it is necessary for this Court to investigate that matter at all. We would submit that what it is necessary for the Court to investigate is whether section 18(1)(a) contains any residual requirement of newness.
DEANE J: From manner of new manufacture, as envisaged in section 100(1)(d) of the 1952 Act?
MR EMMERSON: Residual when you have excised the requirements for novelty and inventive step. So far as 18(1)(d) of the 1952 Act is concerned, we say that that was in fact interpreted, and correctly so, as not involving questions of newness.
DEANE J: I follow that and I think that is putting in a slightly different way what I was suggesting is my understanding of the question which was put on the leave application.
MR EMMERSON: Yes.
McHUGH J: Can I just get this clear from you. It is probably my lack of understanding of this area. What was held at first instance was that there was no invention because this was merely a claim for the use of a known material, a phosphor, in the manufacture of known articles, low pressure mercury vapour discharge lamps, for a purpose for which its known properties made it suitable. But at the same time there was a finding against the present respondents on the issues of novelty. Do you concede that the questions about a known material being used in the manufacture of known articles, for purposes for which its known properties make it suitable, can be raised under the issue of novelty?
MR EMMERSON: They would ordinarily be raised under the issue of obviousness.
McHUGH J: I mean of obviousness.
MR EMMERSON: That is where that comes into the present scheme.
BRENNAN J: Can I see if I can understand this a little for my own purposes. The Statute of Monopolies concept was construed over the years as containing within it elements of newness. Some of those elements, if not all, found expression in the cases, first at common law and then under statute, in terms of novelty, others in terms of obviousness, but that did not exhaust the notion of newness in the statute; is that correct?
MR EMMERSON: No, we would say as now developed it did exhaust the notion of newness, but it took some time for successive cases to reach that point. The notion of novelty and prior publication emerged on the scene relatively early. There was then introduced in the cases a requirement of what was then called subject matter and was, so to speak, a precursor of obviousness.
BRENNAN J: Well, whatever its history may be, you say that in time the statutory concept was subsumed within the more discrete concepts of novelty and obviousness?
MR EMMERSON: Yes.
BRENNAN J: So that the definition of invention, in the present 1990 statute, does no more than refer to the statutory concept carrying with it the two elements which now are more specifically defined in paragraphs (b) and (c)?
MR EMMERSON: It carries with it the statutory concepts of manner of manufacture, novelty and obviousness.
BRENNAN J: Yes; so that the present 1990 statute, on your submission, either completes or gives statutory expression to what was already completed, as the development of the 1623 concept; its elements now being manner of manufacture, obviousness and novelty.
MR EMMERSON: Yes, with respect, your Honour.
BRENNAN J: And absent a finding against you on obviousness or novelty, you are entitled to succeed on manner of manufacture?
MR EMMERSON: We cannot fail on manner of manufacture on grounds which depend on prior art.
BRENNAN J: Yes. Well now, the problem, it seems to me, is that the ground has moved somewhat, because if that analysis be right, the process was complete prior to the enactment of the 1990 Act by the subsumption of the three concepts of manner of manufacture, novelty and obviousness into the 1623 statutory concept.
MR EMMERSON: We would say that it was complete in our law at the time of the 1952 Act, or, if we are wrong in that, at the time of the 1990 Act.
BRENNAN J: Yes, but at all events, your primary argument, it was complete, so that the 1990 Act, in effect, merely gave statutory acknowledgment to what was the then state of the law?
MR EMMERSON: Yes, in that respect.
BRENNAN J: Yes. So that, if that is so, it was a misconception to submit to the court below that there was a substantial and deliberate change introduced ‑ not language, but concept.
MR EMMERSON: It would not be correct to say that there was a substantial and deliberate change in concept. It is correct to say that there was a substantial change in language, and it is also correct to say there was a substantial change in form.
BRENNAN J: One can understand that by looking at the text of the statute, but, in terms of concept you say there was no substantial change.
MR EMMERSON: In terms of concept, no substantial change. I should perhaps say that I, of course, did not argue this matter ‑ ‑ ‑
BRENNAN J: No, I appreciate that.
MR EMMERSON: ‑ ‑ ‑ before the Full Court and I have not actually read the transcript of the actual language that was used, but what I put to the Court is my understanding of the way the case has always been put.
TOOHEY J: Could I just you ask this, Dr Emmerson: then in relation to section 18(1)(b) and the requirements of novelty and inventiveness, does the definition of “prior art base” add anything to the law as it stood before 1990?
MR EMMERSON: Yes, it does.
TOOHEY J: So in that sense, on your argument, there is a real qualification to the notion of novelty and inventiveness as it stood before 1990?
MR EMMERSON: Yes, indeed. What has, in fact, happened is that the prior art base which hitherto had been limited exclusively to an Australian prior art base is expanded under the 1990 Act so that in some parts it includes events or publications anywhere in the world.
If the Court pleases, we say that the particular construction for which I have been contending is correct for a number of reasons which are set out in our written submissions. I could perhaps, though, attempt to summarise them under headings. First, we note that in section 18(1)(a) the word “new” is omitted, so the requirement is that you must have a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
Now, in our submission, that is a strong reason for drawing the inference that there has been a change in wording which carries with it an intentional change of meaning. The expression “manner of new manufacture” has been in this part of the law for centuries and the use of the expression “manner of manufacture” on its own, we say, strongly suggests that Parliament intended a different meaning to be given. It was that submission which we had understood his Honour Mr Justice Lockhart to be rejecting in the part of his reasons for judgment which are to be found at page 838 of the appeal papers.
The second ground on which we say that section 18(1)(a) has no requirement of newness is that under the 1990 Act it is perfectly clear that a precise statutory scheme is established and what one finds is that in section 7 there is introduced for the first time a precise statutory account as to how one is to determine the matters of novelty and inventive step. Section 7(1) begins:
For the purposes of this Act, an invention is taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately.
There is then set out the various type of prior art information that one is to take into account and when you read that, with the definition of “prior art base” in the schedule, you find that in part (b) of that definition “prior art base” is given a specific meaning in relation to deciding whether an invention is or is not novel. That includes information of a kind mentioned in paragraph (a) which begins:
information in a document, being a document publicly available anywhere in the patent area.
Now, the patent area is defined in the schedule as, broadly speaking, including Australia and it then goes on to deal with:
information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area.
So you have in part (a)(iii) of the prior art base an introduction for the first time of information which is in a document publicly available outside the patent area; that is to say, broadly speaking, outside Australia.
Similarly, in section 7, there is an account of how one is entitled to determine whether there is an inventive step and what information you take into account in order to do that. Now, we say that that clearly shows a legislative intention to define with some precision the prior art base against which novelty and inventive step are tested. It sets up a different prior art base for the two and it is to be read with section 7 which tells you how you are to approach the task of comparing what is to be found in the prior art base with the claims of the patent.
Now, that, we say, is a clear and workable scheme and we say in the light of the existence of that scheme, it would be very odd and surprising if section 18(1)(a) contained within it a residual requirement of newness to be determined without any statutory guidance as to how the comparison is to be carried out and without any statutory guidance as to what is the prior art base against which that is to be determined.
McHUGH J: Well, except that one possible reading is that for an invention to be patentable, it must both be a manner of new manufacture within the Statute of Monopolies and must also comply with the provisions of section 18(1)(a), (b), (c) and (d) and section 7 insofar as it is relevant. That is the argument against you.
MR EMMERSON: It is the argument against us, but you see, that argument would overlook the fact that the notion of new manner of manufacture left undefined in the earlier Acts has, to a very large extent, been codified.
McHUGH J: I appreciate that but 18 has made some changes, has it not? For example, it reverses the question of secret use, does it not? Under the 1952 Act, you could secretly use an invention, could you not? Secret use is out now, is it not?
MR EMMERSON: No, secret use has always been a ground of revocation, though the precise way in which the 1990 Act treats the case in which some third party has had prior use of the patent has been changed. This is not something which really impinges on the present case, but that is one of the matters which was dealt with when the 1990 Act was brought into existence.
So what 18(1) does is to embark in fuller form than before in working out and enumerating the precise requirements that are required for a patentable invention so that it completes the development from the position that existed under the 1903 Act, where essentially no rules were laid out, to the present case in which there is a codification, we would say, of the requirements for patentability.
TOOHEY J: In order to accept your argument that section 18 is by way of codification, does the Court have to determine what manner of new manufacture meant immediately before the coming into operation of this Act or is it your argument that whatever it meant section 18 is exhaustive in the concept of patentable invention?
MR EMMERSON: We would say that section 18 is exhaustive in the concept of patentable invention. The courts have always found difficulty in attempting a precise paraphrase or summary of the words “manner of manufacture” and part of the value of the NRDC Case is that it sets out how the concept has developed, but that concept, the concept of manner of manufacture, is still preserved under section 18(1)(a). The rest, we would say, is precisely codified.
TOOHEY J: Yes, thank you.
McHUGH J: Having regard to the findings that were made by the trial judge and by the majority in the Full Court, they found against you in effect on new manner of manufacture, but does it mean on your argument that on those findings they should have found against you on inventive step?
MR EMMERSON: We would say no and, in fact, inventive step was abandoned by the respondents in the course of the primary trial.
McHUGH J: I know that, but that is what I am asking you about. If you are right, was there a misconception by the respondents and that the points that they sought to raise under new manner of manufacture should have been raised under inventive step?
MR EMMERSON: Whether there was a misconception by the respondents, we would say that the respondents were well advised in abandoning the argument of want of inventive step because, on the facts, they could not have made those out.
BRENNAN J: One thing is clear, and that is, on questions of fact there was no abandonment of the issues which are now sought to be maintained under the new manufacture element.
MR EMMERSON: I think that is right. I think the concession was that the respondents were not pursuing the argument that the invention was obvious. The respondents made what they could of the prior art, but they could not show that the prior art that they wished to rely on, initially on the issue of obviousness, was part of common general knowledge, and pursuant to the decision of this Court in Minnesota Mining v Beiersdorf, that had the consequence that they simply could not have succeeded on obviousness.
BRENNAN J: Yes. If it goes back, however, it may find itself under a different pigeonhole - the question of fact may find itself under a different pigeonhole.
MR EMMERSON: Well, we would say that in so far as any of the questions of fact depend on the prior art, the only possible pigeonholes are novelty and inventive step.
BRENNAN J: Yes, but they may find themselves there.
MR EMMERSON: Well, that is perhaps for another day, your Honour. There are a number of reasons why my clients say the respondents could never have succeeded on the argument of obviousness. This was, in fact, a major breakthrough, as an invention, which took place in the face of concerted efforts by very well equipped companies, in various parts of the world, to make lamps of this sort, and we would say that that flies in the face of the notion that the invention is obvious.
I have been directing submissions to the proposition that the statutory scheme that is set up under the 1990 Act is, we would say, one which is very difficult to reconcile with a notion of any requirement for newness which is not dealt with by the parts of the scheme which first defined the prior arts base, in certain circumstances, and second, defined how one is to approach that prior art base in determining patentability,
Can I now deal with another point. If there is doubt about the matter, such that it would be improper to refer to the explanatory memorandum at the time when the 1990 Act was first introduced, we would say that that again supports the position that my clients have been putting. That is set out behind tab 10 in the additional papers.
If the Court turns to paragraph 31 of their explanatory memorandum you find these words:
An “invention” is defined in Schedule 1 by reference to the expression “manner of new manufacture” in section 6 of the Imperial Act known as the Statute of Monopolies. The requirement in paragraph 18(1)(a) that an invention, in order to be patentable, must be a “manner of manufacture” invokes a long line of UK and Australian court decisions. It means little more than that an invention must belong to the useful arts rather than the fine arts. The Government accepted the Industrial Property Advisory Committee’s recommendation that this flexible threshold test of patentability be retained in preference to adopting a more inflexible codified definition.
In our submission, that is strongly supportive of the arguments that I have been advancing. What is taken up in section 18(1)(a) is not a requirement of newness but a requirement that the invention belong to the useful arts rather than the fine arts. That has a long history and once one has excised the requirement of newness we do not contend that the notion of manner of manufacture is changed under the 1990 Act, but we do say that what it is looking at is, as it were, the intrinsic character of the invention and not at whether the invention is a new one.
Now, the leading authority on manner of manufacture is the NRDC Case in this Court. The particular problem that the Court was concerned with is not one which arises in the present case. Nevertheless, the case has stood in this country and, indeed, in a number of overseas countries as a landmark case in the development of the notion of manner of manufacture and it is perhaps worthwhile stating what the issue was in order to indicate the sort of problems which can arise in considering whether something is a manner of manufacture. In that particular case the invention was for a ‑ ‑ ‑
BRENNAN J: You had better give us the reference to it.
MR EMMERSON: It is reported in (1959) 102 CLR 252. Now, this was a case in which an application had been made for a patent and the subject matter of the patent was a method for eradicating diseases from crops. The Court will find the relevant claims set out at the top of page 261 in the report, and it is sufficient to read the first of the claims:
A method for eradicating weeds from crop areas containing a growing crop selected from leguminous fodder crops of the genera Trifolium and Medicago, celery and parsnip, which comprises applying to the crop areas a herbicide of the class -
and the class of herbicide is set out. Objection was taken on behalf of the commissioner to the grant of a patent on the grounds that since this did not involve a claim to either a vendible product or a method for making a vendible product that the element of manufacture was absent and, indeed, up until the time of this case there had been some uncertainty within the law as to whether the so‑called vendible product test was part of the law or it was not.
The Court considers in considerable detail the notion of manner of manufacture and the development of it and sets out the way in which that notion has been expanded over the years. In so doing the Court held that the invention was indeed a patentable one. The central question is set out at page 268, just above the half‑way mark on that page, where the Court says:
The central question in the case remains. It is whether the process that is claimed falls within the category of inventions to which, by definition, the application of the Patents Act is confined. The definition, it will be remembered, is exclusive: invention means any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies. The Commissioner, adopting certain judicial pronouncements to which reference will be made, emphasizes the word “manufacture” and contends for an interpretation of it which, though not narrow, is restricted to vendible products and processes for their production, and excludes all agricultural and horticultural processes. On the grounds both of the suggested restriction and of the suggested exclusion he denies that a process for killing weeds can be within the relevant concept of invention. The appellant, on the other hand, urges upon us a wider view: that there is a “manufacture” such as might properly have been the subject of letters patent and grant of privilege under s 6 of the Statute of Monopolies whenever a process produces, either immediately or ultimately, a useful physical result in relation to a material or tangible entity.
It is not necessary for the purpose of this case to take the Court to the detailed analysis that the Court made in that case, though we would rely on that analysis as showing at least that the notion of manner of manufacture has been an expanding one and one that is to be approached in a practical sense.
Now, that is an example of a case in which the Court was required to determine whether the character of what was claimed fell within the notion of manner of manufacture; that is to say, to take the matter loosely from the explanatory memorandum, whether it carried with it something in the useful arts or whether what was patentable was something narrower than that. Now, in our submission, it is taking up the issues of the type which were considered by this Court in NRDC, that is the work to be done by section 18(1)(a). It is work which is carried out by looking at the inherent nature of what is claimed, not looking at whether what is claimed is new. We would say that that is fully in accordance with the explanatory memorandum to which I have drawn the Court’s attention.
If the Court pleases, we would also say that we get assistance on this matter of construction from an analysis of the legislative history which is set out, beginning at page 15 of our written submissions. If one goes to paragraph 26 of our written submissions, at page 15, we say:
The foundation of the British and Australian Patent systems was the common law of England expressed and declared in the Statute of Monopolies, 1624 ‑
Could I just, incidentally, pause there. I have referred to the Statute of Monopolies as the Statute of Monopolies of 1623. It depends on whether you use the old style dating or the new style dating. The statute was introduced before the equinox in February or March of the year that we would now call 1624, but was then called 1623, up until the March equinox, but they are the same statute.
We are then given an extract from Fox’s Canadian Law of Patents which we have included also in our materials and we set out an important part of it at the bottom of page 16:
“Reduced to its most simple verbiage, the Statute of Monopolies declared all letters patent invalid except those for new manufacturers.
I should say that in our additional materials we have provided the Court with section 6 of Statute of Monopolies behind tab 15. The Court will note that it starts off with a general royal declaration against monopolies and then there is a proviso at (6):
PROVIDED also That any Declaracon before menconed shall not extend to any tres Petente and Graunte of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makine such tres Patente and Graunte shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State by raising prices of Comodities at home, or hurt of Trade or generallie inconvenient;
That is the Statute to which Fox refers in the passage that we have quoted at the bottom of page 16 of our written submissions and the learned author says:
The question in each case, therefore, to be determined is whether the subject matter of the patent falls within the definition of the term “manufacture” and if so, whether it is a new manufacture. The question of novelty, that is, whether that which is claimed to be done has been done before or not is solely a question of fact, while the question of whether the subject matter constitutes a manufacture, is mixed question of both law and fact”
That was a distinction which was of importance in early cases where questions of fact were for the jury who heard patent cases and of course questions of law were for the presiding judge. The Court will note that Fox here divides up the question for consideration into two parts; whether the subject matters falls within the definition of the term “manufacture” and if so, whether it is a new manufacture. We say that that is a correct approach.
Now, that approach is also taken in a case which is referred to in the Microcell Case;,much relied upon by our learned friends, the Compagnies Reunies Des Glaces Case (1931) 48 RPC 185. That was a case decided under the 1907 Act in England, which was before the more extensive codification of grounds of invalidity which appeared in the English Act of 1949, and subsequently with modifications, adopted by our Act of 1952. It is a decision of the Law Officer, but it is an often cited one. At page 188, Sir Stafford Cripps has this to say at line 3:
If the Comptroller and Law Officer have any jurisdiction to enter upon a consideration of this question, there must be some limits to their powers and the difficulty that arises is in the setting of these limits definitely.
In my view there are in reality two distinct questions to be determined, first, “Is there a manner of manufacture?”; second, “Is the manufacture a new manufacture?”
As to the first of these, the inherent jurisdiction of the Comptroller and Law Officer is unlimited, that is to say, they have jurisdiction to take into consideration any relevant matter in deciding the question whether the invention alleged to be described in the specification is a manner of manufacture, and by manner of manufacture I understand a manner of adapting natural materials by the hands of man or by man‑made devices or machinery.
Now, just pausing there, that statement of what is included in the notion of manner of manufacture is too narrow having regard to the expansion of that concept, in particular in the NRDC Case, and there is still an element here of the old vendible product test that I referred to in taking the Court to the NRDC Case, but it is to be noted that this analysis was present, even in those days, that one asked, “Is there a manner of manufacture? Is it new?”; and manner of manufacture, the learned Law Officer says:
I understand a manner of adapting natural materials by the hands of man or by man‑made devices or machinery.
Now, it will be noted that whether the definition might be broadened or not today, it nevertheless is maintaining a clear distinction between any question of newness and the question of whether something is a question of manufacture. He continues as follows:
It is not, of course, sufficient that some manner of manufacture is described in the specification nor that it is mentioned in the claim; that which is alleged in the specification and claimed to be the invention must itself be a manner of manufacture.
This question of whether there is a manner of manufacture is capable of solution upon a study of the specification itself, for the question is what does the specification disclose as to the invention alleged, and, if the applicant so puts forward his invention that it is upon the face of his document for a manner of manufacture, then the first question must be determined in his favour.
Then he goes on to deal with the second question, that is to say, whether the manufacture is a new manufacture, and he is concerned here to consider what matters the Comptroller can take into account. We rely on that as being a classic statement of the way in which two separate questions arise when one is considering whether something is a manner of new manufacture. That distinction was taken up and adopted in the 8th Edition of Terrell, which is of relevance and has been put forward before the Court for this reason, that is, it is the edition of Terrell which this Court referred to in Microcell. It is also the only edition of Terrell which was published with the then existing statutory scheme, so it is of some interest and importance.
For the present it is sufficient simply to say that this is to be found extracted behind tab 2 and the decision of Sir Stafford Cripps in the Compagnies du Nord Case that I mentioned is referred to in the passage spanning pages 214 and 215. So the learned authors of Terrell say:
There are two questions to be considered: (1) “Is there a manner of manufacture?” and (2) “Is the manufacture new?”; and a manner of manufacture may be regarded as “a manner of adapting natural materials by the hands of man or man‑made devices.”
Now, we have a further extract from Fox’s Canadian Patent Law which we have set out in paragraph 29 of our written submissions and Fox, referring to Hayward v Hamilton, says in the passage that we quote at the bottom of page 17 of our written submissions:
the idea of subject matter is co‑terminus with the idea of “manufacture”. The sole question on the issue of subject matter should never have been allowed to go further than an inquiry whether what was disclosed by the patent was a manufacture within the meaning of the Statute of Monopolies. After that inquiry had been decided in the affirmative, there was only one further question to be asked: “was it new”?
We summarise what we derive from this development in paragraph 31 of our written submissions. In short, an understanding of the genesis of the statute of 1624 and its development by case law illustrates the proposition that judicial concepts of novelty and obviousness were carved out of the words of the statute, but that in terms at its origin it was concerned with new manufactures in the sense of industries; in other words those things having subject matter suitable for the grant of letters patent, which were new in the realm.
DAWSON J: I do not understand the words “in the sense of industries”.
MR EMMERSON: Well, manufactures referring to manufacturing industry, your Honour.
DAWSON J: It is still not very clear to me, but still.
MR EMMERSON: It is looking at, in origin at least, something that could be made, something that would be made in a manufacturing ‑ ‑ ‑
DAWSON J: Yes.
MR EMMERSON: In this passage, we also deal with a little bit of the legislative history that occurred in England arising out of the 1932 amendments. It is probably not necessary to take the Court to that in detail, although we have included it for completeness. What we have set out in our additional materials is behind tab 3. We have set out the provisions of the English Patent, Design and Trademarks Act of 1883 which might be considered to be the first important modern codification of this part of the law. Revocation, however, is dealt with under section 26 there and the Court will see that no attempt is made in that statute to set out the grounds on which a patent might be revoked. What Parliament did, at that stage, was simply preserve the common law on the subject as it does in section 26(3).
BRENNAN J: Is this designed to show that over time the concepts of novelty and obviousness were carved out of the original statutory concept?
MR EMMERSON: Exactly, yes. So in 1883 you have a preservation of the full common law and in 1907, behind tab 4 ‑ something, I am afraid, has miscarried. We ought to have had section 24 and we only have section 25. But that again was one which preserved the old position.
The first UK Act which set out in detail the grounds on which a patent may be revoked is the English Act of 1932, and that is set out behind tab 5, the relevant section being section 3. But the Court will note that there is a catch‑all provision at the end of section 3 at the bottom of page 410 of the printing that we have copied which preserves all grounds of revocation under the common law. That was then the position in the United Kingdom in 1932.
BRENNAN J: One sees in that section 3 introducing the new provision that there are two paragraphs, (d) and (e), which seem to treat quite differently the concept of new manufacture and the concept of novelty
and the concept of obviousness in the next one.
MR EMMERSON: Yes, and indeed that is explained in the 8th Edition of Terrell to which I will take the Court. What Terrell says is that the work that is there to be done by (d) is the work of setting out manner of manufacture and that questions of novelty and obviousness are dealt with elsewhere.
DAWSON J: .....the word “new” in (d) is superfluous.
MR EMMERSON: Yes, your Honour, and Terrell so considers it.
BRENNAN J: What is the reference to Terrell? Perhaps if it is difficult to find now, you can give it to us after lunch, Dr Emmerson.
MR EMMERSON: I am sorry, your Honour. I have been working from two different texts and I do not seem to have that.
BRENNAN J: It may be of some importance, so perhaps if you can give us the reference to it after lunch.
MR EMMERSON: Yes, of course. Terrell does set out precisely what he says is achieved by the 1907 amendments and so I will give that to the Court after the adjournment. We have in fact set out the relevent passage from Terrell at paragraph 36 of our written submissions. The editors summarised in the following terms the requirements which had to be fulfilled in order that an invention may properly be the subject-matter for letters patent:
“The requirements which have to be fulfilled in order that the invention may be proper subject-matter for letters patent are also specifically set out in s 25, sub-s (2) of the Act among the grounds upon which a patent may be revoked. These requirements may be summarised as follows: (1) If the invention is a “manufacture”; (2) if it is not obvious to those skilled in the art and acquainted with the common knowledge in the art at the date of the patent; (3) if there has been no “prior publication” or “prior user” of it; (4) if it is useful, and (5) no valid patent has previously been granted for it, then it is proper subject-matter for the grant of monopoly rights.
That is set out at page 54 of the 8th Edition of Terrell which the Court has amongst the materials before it. In fact, it is the first sheet behind tab 2. This in, in fact, the edition of Terrell to which this Court refers in Microcell.
At paragraph 37, we set out how Terrell deals with these matters. We say this: at pages 55 to 64, the editors discussed the question of what is a “manufacture”, whether manufacture includes processes, mere discoveries, bare principles and so forth. This discussion is concerned with the character of the subject matter with which the specification is concerned and not with a comparison between that subject matter and the prior art. On these tests, as subsequently refined and explained by the High Court, the claims in suit claim a manner of manufacture. That latter point is indeed indisputable. What is claimed is a fluorescent lamp which, on any test, is a manner of manufacture. The question of its newness is one which has caused the difficulties that bring us before the Court today.
DEANE J: Are you making any implicit point when you use “manufacture” instead of “manner of manufacture”?
MR EMMERSON: It is probably just carelessness.
DEANE J: No, not at all, and I was not suggesting - in some of the texts you find “manufacture” and I have always read it as a shorthand reference.
MR EMMERSON: We would, with respect, so read it. I think our use of the word “manufacture” comes from Terrell’s own use, at page 55, in the passage that we have reproduced where he says:
In the first place, it is clear that in order to be classed as a “manufacture,” an invention must have a close relation to something tangible.
This is part of the old vendible product test.
It is evident that the production of a new class of article or a method of producing a new artificial substance is a “manufacture,” and that on the other hand a plan of campaign in warfare or business or the discovery of a hitherto unknown natural law is not a “manufacture.”
Then, he goes on to deal with the law as it then stood as to what is a manufacture or manner of manufacture. At page 55, in the paragraph in the middle of the page, he indicates some of the difficulties. For instance, he says this:
Passages in the judgments in some of the early cases seem to throw doubt on the validity of patents for processes -
that, of course, was resolved by case law in due course -
but we find that the Courts gradually extended the meaning of the word “manufacture” to include improvements in manufacture and changes in method which though small in themselves have great economic importance.
Then he quotes from the learned Chief Justice ‑ ‑ ‑
DAWSON J: Can I just stop you there, Dr Emmerson, and take you back to the word “manner”. Does “manner” mean kind there, any kind of new manufacture, or does it mean the actual method of manufacturing? It is the former, is it not?
MR EMMERSON: I think it must mean the former, yes.
DAWSON J: Yes. So it really does not add very much.
MR EMMERSON: No, because what was, of course, protected under the Statute of Monopolies ‑ ‑ ‑
DAWSON J: Is the thing.
MR EMMERSON: ‑ ‑ ‑ is the article itself, not the way you got it. The learned authors go on to quote a passage from Wheeler’s Case at page 55, the paragraph beginning about a third of the way from the bottom:
In 1819 Abbott, C.J., said: “Now the word ‘manufactures’ has been generally understood to denote either a thing made, which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope, and many others, or to mean an engine or instrument to be employed either in the making of some previously known article, or in some other useful purpose, as a stocking‑frame, or a steam engine for raising water from mines.
Then there is a shoulder note “includes processors”, so that is dealt with. The learned authors then go on to deal at page 56 with bio-chemical processes. That has been held to be good subject matter for a patent. Then, as to the sort of things which are not included as manufactures, at the bottom of page 56 the learned authors say this:
It is still common for the Patent Office to receive applications for patents for ingenious ideas which cannot be classed as “manufactures” under any interpretation of the word, such, for example, as new systems of indexing, new systems of musical notations and many others. It is, however, within the province of the Comptroller to decide whether the subject of an application is a manufacture, so that application of this character seldom result in the grant of a patent.
Then the authors go on to deal with the distinction between a discovery and a manufacture and at the bottom of that paragraph on page 57 just above the middle line of the page:
Invention necessarily involves also the suggestion of an act to be done, and it must be an act which results in a new product, or a new result, or a new process, or a new combination for producing an old product or an old result.
Then there are further accounts about modification of apparatus and at page 61 the authors deal with what was then the vexed question of whether you could patent a new substance. That is probably sufficient to illustrate to the Court the general type of question which arose when considering what was a manufacture as distinct from answering the question, “If there was a manufacture, was it new?”. We do actually give the reference in Terrell in dealing with section 25(d) that your Honour the presiding Justice asked me about.
In paragraph 39, we say this: in discussing the ground of revocation provided by section 25(d), that the invention is not a manner of new manufacture, the learned editors stated that the issue which is intended to be raised by this plea is that the subject-matter of the invention if not a “manner of manufacture”; page 397. There is a cross‑reference to the section of the book to which I have taken the Court. I think we have also reproduced ‑ ‑ ‑
BRENNAN J: That is the same edition of Terrell, is it?
MR EMMERSON: Yes, your Honour. I am afraid we have not reproduced page 397 but I can arrange for copies to be made.
BRENNAN J: Yes, thank you.
MR EMMERSON: The particular context in which it occurs is that, as I have been putting to the Court, the 1932 Act in the UK was the first to produce a list of grounds on which a patent could be revoked and the learned authors of Terrell in a section beginning at page 395 explain what each of these grounds means and in dealing with section 25(d), which I was asked about, that the invention is not a manner of new manufacture, the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, the authors simply say:
The issue which is intended to be raised by this plea is that subject matter of the invention is not a manner of manufacture -
and then there is a cross-reference to the earlier passage that I have taken the Court to -
and such objection need not be further particularised.
So Terrell at least treats that reference to “manner of new manufacture” in section 25(d) of the 1932 Act as raising the matter of manner of manufacture and not raising the question of newness. As I explained in taking the Court to section 25 in the English Act of 1932 there is a catch-all
provision at the end and we deal with that and what Terrell says about that in our paragraph at page 40.
Now, the next step in the statutory development was that the English Act, as it had stood from 1932 onwards, was repealed in its totality and the Patents Act 1949 was introduced. That is the Act on which our Act of 1952 was based, and we have provided the Court with extracts from that, to be found behind tab 6 ‑I am sorry, that seems to have miscarried. I wanted to give the Court section 32, which was the revocation section, and it does not seem to have been copied. I will try to have that put right.
However, for present purposes it is sufficient to say that what has happened by 1949 is a further stage in the statutory enumeration of grounds of revocation and notably, by this stage, there is no catch‑all provision preserving the common law grounds of revocation. The Court will recall that these had continued in the English statute up to and including the 1932 amendments, but that goes out in 1949, and by this stage what one has is an exhaustive list of grounds that are available for revocation.
Now, as we set out in paragraphs 43 and 44, the Australian statutory development was similar in that you have at first a preservation of the common law as it had developed and then you get codification introduced by our 1952 Act, the predecessor of the 1990 Act. We have set that out in our supplementary materials. Behind tab 7 we have an extract from the Australian Act of 1903, which is our first Patents Act, and the Court will note that in section 86(3) the common law grounds of revocation are preserved and that was the position under our law at the time when the Microcell Case was decided. Then in 1952 our new Act was introduced and section 100 sets out the grounds of revocation and that is set out behind tab 8 in our papers and the Court will note that section 100 begins:
A standard patent may be revoked.....on one or more of the following grounds, but on no other ground -
so we would say that by that stage there is a statutory scheme which sets out expressly what are the grounds of revocation. The Court will note again that in section 100(1)(d) one of the grounds is:
that the invention, so far as claimed in any claim of the complete specification or in the claim of the petty patent specification, as the case may be, is not an invention within the meaning of this Act -
Now, we would say that that has the same meaning as section 25(4) in the English Act of 1932. That is to say, it is raising the question of manner of manufacture; it is not intended as some catch‑all phrase to catch all the common law which, indeed the early part of the ‑ ‑ ‑
DAWSON J: Notwithstanding that “invention” is defined in terms of new manufacture.
MR EMMERSON: Precisely. We would say that the correct treatment of that is the same as that of the learned editors of Terrell said should be accorded to section 25(4) of the 1932 amendment in the UK, because otherwise the scheme just does not make sense, we would say. You say that here is a list of grounds on which a patent can be revoked, there can be no other grounds. You set them out exhaustively, and we say it does not make sense to then bury in the midst of that some catch‑all phrase which allows any other ground. The 1903 Act had specifically said, “Any other ground available at common law is available there”. In 1952 that is removed, then subsection (1) says, “These are the grounds; no other ground is available for revocation”, and we say that that is to be taken at its face value, and that accordingly section 100(1)(d) is doing the work that section 25(d) did in the English Act of 1932.
We set out that latter submission expressly in paragraph 45 of our written submissions.
The next part of the statutory background comes out of the IPAC Report, which we deal with in paragraph 48 of our written submissions, and here again, the same view is taken as we say, in the body of the IPAC Report manner of manufacture was specifically discussed. IPAC regarded the concept involved in the phrase “any manner of new manufacture...” as involving three primary tests, that the invention must be new, inventive, that is to say not obvious, and capable of industrial application. The report continued:
“the requirements of novelty and invention are the subject of express grounds of invalidity under section 100 of the Patents Act...the industrial capability requirement arises from the reference to section 6 of the Statute of Monopolies and the words “manner of...manufacture”. This concept involves little more than that an invention must belong to the useful arts rather than the fine arts.
Over the last 350 years the Courts have interpreted and applied the concept of manner of manufacture in an expanding and general non‑selective fashion, except for a tendency to focus on manufacturing industry, more or less in accordance with the expansion of technology and industrial activity, and the needs and understandings of the times”.
Again, the IPAC Report, we say, adopts the same view of reference to manner of new manufacture as did the learned editors of the 8th Edition of Terrell and we say that that entirely accords with the statutory scheme as it existed in 1952.
BRENNAN J: Would this be a convenient time?
MR EMMERSON: If the Court pleases.
BRENNAN J: How long, if you can tell us, would you expect the remainder of your argument to take?
MR EMMERSON: I would expect only about an hour, your Honour.
BRENNAN J: Yes, thank you. The Court will adjourn until 2.15 pm.
AT 12.48 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.19 PM:
BRENNAN J: Yes, Dr Emmerson.
MR EMMERSON: If the Court pleases, I had been developing my submissions about the development of this part of the law as a matter of statute and also taking the Court to various technical and other commentaries on it.
BRENNAN J: Most of the submissions that you have taken us to so far are, however, to be found in your written outline.
MR EMMERSON: That is correct, yes.
BRENNAN J: I do not think it is necessary for you to repeat all of those. I mean, we have had the benefit of this document. If there is some point that you wish to make on them, then by all means do so.
MR EMMERSON: Yes. Well, I am indebted to your Honour. It was not my intention to repeat the entirety of the document but simply because the document is necessarily, we would say, a rather lengthy one, to take the Court to its structure and perhaps I will continue to do that, but I was not proposing in this part of my submissions to take the Court to the document paragraph by paragraph.
I had been dealing with the IPAC Report and that is dealt with in our written submissions in paragraph 47 and following. We would note in particular the passage referred to in our paragraph 48 which makes it clear that the IPAC Report itself again adopts the view that there are three primary tests of patentability, namely, novelty, inventiveness and capacity for industrial application, and we would say that yet again this corresponds to the questions which arise when one is considering section 18(1), with (1)(a) dealing with capacity for industrial application and (1)(b) dealing with novelty and inventiveness. We set out those recommendations in some detail.
Then, at paragraph 56, we turn to the 1990 Act and in the following paragraph we have summarised the arguments that I was putting to this Court this morning as to why, as a matter of statutory construction, the structure of the Act supports the view that we have been putting forward. In paragraph 59 we deal with a number of cases in which the question of manner of manufacture, properly so understood, arises. For example, there had been a long-running argument as to whether methods of treatment of diseases of the human body fell within the concept of manner of manufacture. That was dealt with by the Full Court of the Federal Court in the Rescare Case, which is referred to in our paragraph 59. Similarly, as I have drawn the Court’s attention to it, in the NRDC Case, the question of whether agricultural and horticultural processes were proper subject‑matter for patents, was considered. The patentability of computer programmes was considered in CCOM v Jiejing, to which I will return in a few minutes. We then give references to Sunbeam v Morphy Richards.
Beginning at paragraph 63, we set out why we say the Full Court, and indeed the learned primary judge, on this point went wrong, and, in substance, what it amounts to is an incorporation of some requirement for newness into the test for manner of manufacture set out in section (18)(1)(b).
The court depended, to a fairly substantial extent, in forming its view on the judgment of this Court in the Microcell Case (1959) 102 CLR 232 and I would wish to take the Court to that case in a bit more detail. In our submission, in reading this case it is important to remember what it is about and the statutory framework under which it arose. Unlike the NRDC Case, it was decided under the Act of 1903 and the Court will recall that, in that Act, the grounds of revocation were all of those which had been developed at common law. There was no express statement of specific grounds for revocation.
It is also important to remember that there is intertwined in various parts of the reasons for judgment of the Court the specific issue as to what were the powers of the Commissioner of Patents when examining a patent before it proceeded to grant. As the Act then stood the grounds on which the Commissioner could reject a patent application were rather more narrow than they are at present and a particular question had arisen as to whether the commissioner was bound to accept a statement in the specification itself that it was new.
This particular submission is set out at the bottom of page 245 where the Court refers to section (4) of the Act providing that word “invention”:
“includes an alleged invention”.
And the actual submission that the Court was concerned with was this:
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 argument had been rejected by the learned primary judge, as the Court goes on to say.
t is important to notice that this was the way the case was being put before the Court since the Court was of the view that the specification itself disclosed that the invention was not new in the relevant sense, whether the Court was nonetheless bound to accept an allegation of newness. That, in our submission, led the court below to a misunderstanding of the issues before the Court in Microcell and in particular to a confusing of the question whether something was a manner of manufacture with the question whether it was new.
We say that properly read the Court was fully aware of, and indeed conscious of, the distinction between manner of manufacture and newness and that it approached it on this basis. Indeed, it went on to quote the decision of Sir Stafford Cripps in the Compagnies Reunies des Glaces Case, which I have already referred to. At page 246 the Court dealt with the matter in the following way. At about point 2 or point 3 of the page it quotes Sir Stafford Cripps as saying:
“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”.
Pausing there, the issue of quantum of invention is what we would now call inventive step or obviousness. So Sir Stafford Cripps is saying that the comptroller‑general in England ‑ and similarly, it follows, the commissioner here, so the argument ran ‑ had no power to inquire fully into what we would now call novelty.
But he added: “It has, however, never been contended that either the Comptroller or the Law Officer is bound to accept an application or grant a patent whether there is admittedly no invention in the sense of an inventive step -
Now, pausing there, it is absolutely clear, we would say, that what is being talked about is inventive step - that is to say obviousness - if there is an admission that -
would itself disentitle the applicant to argue that there was even an ‘alleged invention’ disclosed.
The Court goes on to say that, in those circumstances, again dealing with the power of the commissioner, the commissioner has power to refuse an application. In the second-last sentence in this paragraph, it says:
It must be enough to warrant rejection that it should be clear on its face that the specification discloses no inventive step.
Again, talking about obviousness. So the Court, in our submission, from this part of its reasons for judgment onwards, is directing its attention to the question of whether on the face of the specification itself it can be seen that there is no inventive step. It is not, in our submission, considering some other ground of invalidity under the heading of manner of manufacture.
The way in which this matter would be dealt with under the 1990 Act is perfectly simple. These are matters which come under section 18(1)(b) where one is dealing with inventive step and we would say that if the specification in its terms makes it clear that there is no inventive step then, true enough, the application is rejected but is not rejected under 18(1)(a), it is rejected under 18(1)(b).
The Court went on to develop all of this and, at the bottom of page 246, refers to Terrell, On Patents, 8th Edition and the passage to which I have taken the Court. When you read this in context it is clear, we would say, that both the passage in Terrell itself and the passage in the judgment in Microcell are all talking about what I have described compendiously as newness but, in this particular context, what we would now call obviousness or inventive step. The language is not identical; they sometimes refer to subject matter, but that is because this is decided under the 1903 Act which had no specific provision for revocation on the ground of obviousness.
The Court then goes on to consider, we would say again in the context of what would now be called inventive step or obviousness, a number of cases on pages 247 to 249. They are dealing with the question of obviousness in the special context of what is sometimes called analogous user. That is to say, you have something which has been used for a particular purpose and you ask yourself whether it is an invention to suggest that it should be used in a different context for an analogous purpose. Now, the Court at 249 set out some matters which are relevant here. Towards the top of the page is set out three circumstances in which cases of analogous user would be patentable, for instance:
where the adaptation of the known material to the particular piece of apparatus leads to a new departure in the technique of the production of the apparatus”.
We would say that would clearly apply on the facts of the present case, if we ever got to those. Then the Court goes on to say:
In the first passage quoted above from the judgment of Morton J -
that was one that was referred to at 248 at about point 4, where his Lordship was quoted as saying the matter claimed is merely the use of a known material, the Court says:
emphasis must, of course, be placed on the word “merely”, as it must be placed on the word “mere” in Lord Buckmaster’s statement of the principle. Many valid patents are for new uses of old things.
We would say that is clear. It goes on to say:
But it is not an inventive idea for which a monopoly can be claimed to take a substance which is known and used for the making of various articles, and make out of it an article for which its known properties make it suitable, although it has not in fact been used to make that article before.
Now, that is the sentence which is taken, we say, out of context in the decision below and, of course, relied upon by our learned friends, but when you look at it in context, we would say it is abundantly clear that the Court is not seeking to lay down some special ground of invalidity but, rather, the Court is saying on these facts the alleged invention is not in the relevant sense new. So the Court is considering a newness, not considering some other special ground of invalidity. It follows from that, in our submission, that Microcell is not authority for saying that there remain in the words “manner of manufacture” in section 18(1)(a) some residual requirement of newness. Rather, it is authority for the proposition that the particular claim that was before it in the then state of statute law was not in the relevant sense new. Now, we have no difficulty with that. That does not, in our submission, in any way impinge on the present case.
We deal with all of those matters in the passage to which I have started to refer the Court and up to and including paragraph 75 in our written submissions. Our submission, therefore, is that Microcell, when properly put in context and understood, is in accordance with our analysis and not in conflict with it. In our respectful submission, the analysis that we have given of Microcell is, we would say, supported by what is said about that case in the NRDC Case (1959) 102 CLR 252. There is a reference to Microcell at the bottom of page 261 in the paragraph beginning:
The power of the Commissioner under s.49(2) is discretionary -
In the second sentence in that paragraph the Court says this:
The principles which govern the power to refuse a patent have been discussed recently in the case of Commissioner of Patents v. Microcell Ltd. It is shown in that case that in the portion of the definition of invention which includes the meaning of the word an alleged invention, the word “alleged” goes only to the epithet “new” in the expression “a manner of new manufacture”, and that accordingly the Commissioner may properly reject a claim for a process which is not within the concept of a “manufacture”. But the case cited shows also that even if the process is within the concept -
and I interpolate 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:
We say that that neatly sets out the ratio in Microcell. It is concerned with whether the commission is bound to accept the allegation that an invention is new in circumstances where it is apparent, on the fact of the specification, that it is not. So again, we would rely on matters supporting our submission that Microcell is about newness, it is not about manner of manufacture.
Now, we further develop that, and refer to another case, and then we set out, beginning at paragraph 79 where we say the majority in the court below went wrong. In our submission, his Honour Mr Justice Lockhart, who gave judgment which was accepted by Mr Justice Northrop and which formed the majority judgment therefor, was correct in saying that the objection of not being a manner of manufacture, of being not novel, and of being obvious, are three separate objections. So far we have no difficulty with his Honour’s reasoning, but where we say his Honour went wrong was by incorporating into the test for manner of manufacture a question of newness. Indeed, his Honour repeatedly looks to see whether there is an inventive step, and that is a question of obviousness not a question of manner of manufacture. Indeed, his Honour sets this out expressly, at the top of page 839, where he says:
I turn to the important question whether an inventive idea or step is disclosed in the specification in suit which his Honour answered unfavourably to the appellants.
Now, we say that once it is found that the invention claimed is new and is not obvious, then there is no room for that inquiry. The Court will note that his Honour does recognise that there are inherently distinct questions which he does in the following paragraph, beginning at line 11. But he goes wrong, we would say, in asking again and again through his development of his reasons whether the matter is new and by resolving the appeal before him in favour of the respondents on grounds which clearly involve a comparison between what was claimed and the prior art.
This involves a misreading of the Microcell Case, treating it as if it gave some entirely different ground for revocation. His Honour deals with this in some detail and concludes at 845 that the learned primary judge was correct in holding:
that the subject matter of the patent in suit is not an invention.
We say that his Honour’s reasoning simply takes Microcell, misconstrues the question that was before the Court, to treat it as a question on manner of manufacture, not a question about newness, and there he went wrong.
BRENNAN J: Can you show me where it was that, looking at the element of newness in manner of manufacture, his Honour concluded the case against you?
MR EMMERSON: Yes, your Honour. His Honour’s reasoning is to consider what the learned primary judge said and in effect to say that his Honour got it right. If one starts at the bottom of page 839:
The primary Judge placed considerable reliance upon the Microcell case to support his conclusion that the subject matter of the patent in suit is not a manner of new manufacture.
Then he refers to the passage from Mr Justice Morton in L & G which I had referred to in taking the Court to Microcell:
“The matter claimed is merely the use of a known material, having its surface oxidised by a known treatment, in the manufacture of known article, for the reason that this material so treated, possesses a known property rendering it useful for this purpose.”
Take out the reference to what is known, and the whole thrust of that passage of course disappears. It is a comparison with the prior art. It is not of course saying that you could never get a patent for the use of material having its surface oxidised by a treatment in the manufacture of an article. Then he goes on to quote what the High Court had said in Microcell about:
Many valid patents are for new uses of old things.
That is again a question of newness. Then he says:
Their Honours held at 250 that the specification in suit did not disclose “more than a new use of a particular known product” -
it is the question of newness again -
that the properties of the materials to be used in the manufacture of the articles were well known as was the fact that those properties made them especially suitable for use in the article. Their Honours concluded at 251:
“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles -
and so on. So the whole underlying reasoning involves a question of what was known; that is to say, a comparison with the prior art. Then at the top of 841 his Honour says this:
The primary Judge found that this is not a case of a person discovering a new property in a known material which for the first time made it apparent that the material was suitable for a new use, in which case the discovery would amount to an invention -
again, that is testing the matter against the prior art, it is a question of newness.
He said that the patent in suit:
“does not claim the discovery by the patentees of any new property of phosphors, making them suitable -
again, a question of newness is concerned. Now, going over the page and possibly even skipping one or two references to newness, his Honour goes on to quote the learned primary judge at 842:
“Neither the patent nor the evidence suggests the STD and e.n values stipulated in the patent reflect any discovery or new scientific insight by the patentees -
so that is a question of newness:
His Honour further observed:
“... 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 -
so, again, it is critical to the reasoning that is there being considered that something is new. Then at line 32:
It is not in dispute that each of the groups of luminescent materials, YOX, CAT and BAM, is admitted by the patentee to be “known per se”.
Then he goes on to say:
mercury vapour discharge lamps with high wall loads were known.....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.
BRENNAN J: I appreciate that, but could I take you back to page 839. What is the significance of his Honour’s remark at line 32:
It is important to remember ‑
What is his Honour saying there?
MR EMMERSON: It is a bit difficult to fit into the general line of his Honour’s reasoning, is it not?
BRENNAN J: Unless what he is saying is this, “That I construe the claim as being a claim for luminescent materials to be used in the manufacture of compact lamps. But I am not saying that this is a claim for the making of a compact lamp and if the claim is limited to what are suitable luminescent materials, everybody knows that these are suitable luminescent materials.” I am not sure that that is what he is saying but I am just trying to understand it.
MR EMMERSON: Well, I cannot claim to be absolutely sure what his Honour is getting at here but, in the formulation that your Honour was there putting to me, of course, again a crucial part of that reasoning was that these were known luminescent materials. So, again, it is a newness question which is being adverted to here. Could I perhaps take the Court to what the claims actually say because part of the reason why it is a little bit difficult to follow his Honour’s reasoning here is the difficulty in reconciling it with the form that the claim, in fact, takes.
BRENNAN J: Well, perhaps that might take us too close to the facts of this case, unless you can keep it within a narrow confine.
MR EMMERSON: Well, I am in the Court’s hands, with respect, and if I stray outside what is an appropriate confine, then no doubt the Court will tell me. I will attempt to stay within it and not to deal with technical issues. But, could I invite the Court to look in volume 1 of the appeal papers at page 28. That sets out the main claim and for these purposes, it is sufficient to say that the claim, in its terms, is a claim to a low pressure, mercury vapour discharge lamp. It is a claim to a lamp and not a claim to particular materials in the lamp, if that matters.
BRENNAN J: Well, that might answer my question.
MR EMMERSON: If your Honour pleases. It follows from that, in our submission, that the learned judge went wrong in that he incorporated an element of newness into the test for the manner of manufacture and, indeed, he seemed to be thinking that he was applying Microcell which is, as I have endeavoured to show, the case which turned on newness, but doing so under the heading of manufacture. If I am right in the construction that I have put on section 18(1)(a) before this Court, his Honour clearly went wrong at that point. We have developed our argument that the majority were considering newness in paragraph 79 and following up to paragraph 87.
We then go on in paragraph 90 and following to take the Court to a further consideration of this issue and, indeed, the present case by the Full Court in Ccom Pty Limited v Jeijing Pty Limited. This is of relevance both because a differently constituted Full Court of the Federal Court revisited the question of manufacture and also because it considered, and we would say in substance disapproved, the reasoning of the majority in the Full Court below. This is reported in a number of places. The text I have in front of me is in (1994) 122 ALR 417. I am not quite sure what form of it the Court has.
I am sorry, I think the Court has, by the parties’ inadvertence, been referred to three different printings: in the Intellectual Property Reports, the Australian Law Reports and the Federal Law Reports.
BRENNAN J: We now have the ALRs.
MR EMMERSON: I am indebted, your Honour. The issue of manner of manufacture is dealt with by the Full Court at 122 ALR 417 at 442. The Court considers what is the meaning of manner of manufacture. It sets out the relevant facts at the bottom of 442 and the top of 443. This is a case with which some members of this Court are familiar. It involved a computer program for making Chinese characters. The Court’s reasoning proceeds along the following lines. It refers to the NRDC Case at page 443, line 16 and says this:
The NRDC case remains of considerable importance in this field. It is to be noted that the decision changed the direction of the case law not only in Australia but also in the United Kingdom. Accordingly, British decisions given before the commencement of the 1977 Act remain of particular significance in Australia when construing the 1990 Act.
Then they mention some cases on manner of manufacture; Joos being a question of whether a cosmetic treatment could be a manner of manufacture, the two Swift Cases being the question of whether a method of treating meat could be a manner of manufacture. Then the court turns to the 1990 Act and deals with section 18, section 7 down at the bottom of 443, and then deals with the present position under the present English Act of 1977 which takes the form of expressly excluding certain manners of manufacture from patentability, and the court refers to those on 444 at about line 27:
(a) discovery, scientific theory or mathematical method, (b) a literary, dramatic, musical or artistic work ‑
and so on. Then the court goes on, at the bottom of page 444, to say this:
in Australia, when the 1952 Act was replaced by the 1990 Act, the new British legislation was not followed. There was in s 18(2) an express exclusion from patentable inventions of human beings and biological processes for their generation.
So that category of manner of manufacture is excluded. They go on to say:
Beyond that the legislature left the matter, in terms of s 18(1)(a), to rest with the concept of manner of manufacture within the meaning of s 6 of the Statute of Monopolies, as developed by the courts, notably in the NRDC case. This was a matter of deliberate legislative choice. The materials which make this plain are collected and discussed by Burchett J ‑
that is in the present case below on which his Honour, of course, dissented from the majority, and I will be taking the Court to his dissenting judgment shortly. Then at the bottom of 445 the court says this:
Accordingly, the phrase “any manner of new manufactures” has been interpreted over time in such a way as to contain within it distinct principles or doctrines concerned with patentability.....They include the necessity for a manner of manufacture itself, for novelty, and for inventiveness.
It then deals with other objections which have been derived from the prohibition from manufacturers which are generally inconvenient. The Court might recall that the expression “generally inconvenient” is drawn from section 6 of the Statute of Monopolies. Then the court says at 446, line 11:
Particular grounds of invalidity, derived from the case law, were added to the modern statutes. Lack of inventiveness, as distinguished from anticipation, obtained a distinct statutory recognition only in this century.....As this development continued, the phrase “manner of new manufactures” came to represent the residuum of the central concept with which NRDC was concerned, namely what the High Court called the relevant concept of invention. It should be noted that in NRDC the High Court, which was dealing with the 1952 Act, spoke of the concept of patent law ultimately traceable to the use in 1623 of the words “manner of manufacture” and spoke of novelty and inventive step as distinct matters.
This distinction is now made clear by the use of the expression “manner of manufacture” in s 18 of the 1990 Act. The structure of s 18(1) emphasises that the grounds of novelty, inventive step, utility and secret use are each excised from any general body of case law which previously developed the phrase from 1623 “manner of new manufactures”.
Then they go on to say:
it must be highly doubtful whether any recasting of the law was intended by the particular form taken by s 18. When construing the 1952 Act in NRDC, the High Court dealt first with obviousness, an aspect of which is the doctrine of analogous user ‑
which we would respectfully endorse; that really seems to be what his Honour Mr Justice Lockhart was referring to ‑
before returning to what it described as the “central question in the case”. This was whether a process for killing weeds could be within the relevant concept of invention in s 6 because it produced a useful physical result in relation to a material or tangible entity.
Then the court has the first mention of the present case and says compare that and then at the bottom of 446 says this:
The immediate significance of this is that in the 1990 Act, manner of manufacture, novelty, inventiveness and utility are stated as distinct requirements of a patentable invention. Thus, whilst a claim for the ball point pen now would fail for anticipation and obviousness, it would still be a claim for a manner of manufacture. Yet in the present case there are passages in the reasons of the primary judge which suggest he was influenced in the determination of the issue as to “manner of manufacture” by asking whether what was claimed involved anything new and unconventional in computer use.
So, the Full Court expressly disapproved the introduction of questions of newness into considering manner of manufacture. Now, the court goes on to develop this line of reasoning and then at 449 at line 45, refers specifically to the decision of the majority in the present case in terms which we say clearly evidenced disapproval:
Counsel for the respondents sought support from some remarks in this court in NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd. In that case special leave to appeal was granted by the High Court on 13 May 1994. This case concerned compact.....lamps ‑
and it sets out some of those facts. And then, at line 3:
On one reading of the judgments in this court, the patent was held invalid because it claimed the use of known materials, the phosphors, in the manufacture of a known article, the low pressure lamps, for a purpose for which their known properties made those materials suitable. Thus it was said (44 FCR at 265) that the patentee had chosen two desirable characteristics of the known phosphors and claimed lamps using all phosphors, present and future, possessing those characteristics. However, an attack on validity on the ground of lack of novelty failed and at the trial the case on obviousness had not been pressed (see 44 FCR at 265).
The patent was held invalid because “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, in order to achieve vendibility” (44 FCR at 265). Before us, counsel for the respondents relied upon this decision but, in the course of argument, resiled from doing so in so far as issues more apt to obviousness may have intruded into the consideration of the concept of manner of manufacture.
Now, in our respectful submission, it is clear from the reasoning of the majority below that considerations more apt to obviousness did intrude.
Counsel accepted that many of the old cases which may have been treated in the texts under the heading of “manner of new manufacturer” would now be treated as decisions upon degree of inventiveness, that is to say obviousness.
We would agree that that is right and then, they go on to say:
Rather, counsel for the respondents drew upon Philips for a narrower proposition. This was that there could be no manner of manufacture in identifying “basic characteristics” or “desiderata” and “to claim all ways of achieving [them]”.
Then, the Court rejects that submission in these terms at line 30:
That submission should not be accepted. It may be that such a claim lacks novelty, is obvious, or lacks utility, or there is a failure to comply with one or other of the limbs of s 40 because, for example, the invention is not fully described or the claim is not clear and succinct. But if such hurdles all are surmounted, then in our opinion in a case such as the present there does not remain an independent ground of objection as to patentability, within the sense of s 18(1)(a) of the 1990 Act.
Once full weight is given to the reasoning in the NRDC Case and to other decisions.....it follows that the petty patent should not have been held invalid on the footing that the claim was not for a manner of manufacture within the meaning of s 18(1)(a) of the 1990 Act.
Now, we would say that those observations correctly point to what we say is the major flaw in the reasoning of the majority below in the present case. We deal with Ccom v Jiejing at paragraphs 90 to 96 and we say that that also supports the view that we put forward.
If the Court pleases, it remains in-chief to deal with an alternative submission that we put, which is that if we are wrong in our principal submission then the reasoning of Mr Justice Burchett in the court below should be followed. Now, his Honour would have allowed our appeal and so he found in favour of my clients, but in the course of so doing his Honour, we say, still allowed a small residuum of a question of newness to intrude into the concept of manner of manufacture.
What his Honour said in substance on that point was that an invention could fail for not being a manner of manufacture if in the text of the specification itself it was made clear that the invention was not novel. Now, apart from that point at which we say his Honour fell into error, we say that his Honour’s reasoning is extremely helpful and useful because his Honour, in fact, takes up much of the analysis that I have been putting to the Court today and only, as it were, stumbles at the last hurdle we would say. His Honour, of course, found on the facts that in the present case you could not conclude, looking at the specification in suit, that the patent did not claim something new and, accordingly, his Honour would have allowed our appeal.
Looking at the structure of his Honour’s reasons for judgment, which start at 852 in the appeal papers, his Honour deals with section 18 and at the bottom of ‑ ‑ ‑
BRENNAN J: Dr Emmerson, we have read the judgments and I take it that you are going to refer us to Justice Burchett’s judgment in order to buttress your submissions on the main point.
MR EMMERSON: That is correct.
BRENNAN J: Do you need to do more than show us the pages in particular that you refer to?
MR EMMERSON: Probably not, your Honour, no. Could I take the Court to the bottom of page 853. His Honour says, beginning at line 39:
It would be very odd if Parliament, having carefully set the parameters for a determination of the questions of novelty and obviousness (see s. 18(1)(b) and s. 7), intended either to provide for an unfettered determination of the same issues by virtue of the use of the word “new” in the definition of “invention”, or to provide for a duplication, by virtue of that definition, of the very questions of novelty and obviousness as set by the statute.
We would agree with his Honour that that, indeed, would be very odd. His Honour then goes on to deal with case law and at page 856 deals with the NRDC Case. We cannot adopt everything that his Honour says about Microcell for reasons that I have put to the Court. Then his Honour, taking the view that his Honour does, that the only residual grant of newness on which an application or patent could fail as not being a manner of manufacture is where something is clear on the face of the specification that it is not new, holds that that is not the present case.
Then his Honour goes on to deal with the consequences of abandonment of obviousness and ‑ ‑ ‑
BRENNAN J: Was there any subsequent passage?
MR EMMERSON: Yes, at page 879, line 26. His Honour, having allowed some residual scope for analogous use says that:
it is only in the clearest of cases that the question of analogous use can properly arise under s. 18(1)(a).....Unless on the face of the specification the question arises, it seems to me that analogous use must be raised, if at all, under the ground of obviousness (which has here been abandoned).
He points out that the two leading text books so treat analogous use and then he says:
When it is recognized that the point is in its nature an obviousness point, its difficulties in this case, on the most favourable view of the evidence for the respondent, must be increased by the argument from the compact fluorescent lamp’s commercial success.
His Honour then deals with the facts and points out, for instance, that Westinghouse, a rival manufacturer, had tried very hard to make a compact fluorescent lamp and had entirely failed. Finally his Honour deals with certain prior publications which were relied upon for novelty and which I need not trouble this Court, though they were mentioned in our learned friend’s notes of contention.
So our submission on this point is that, if we are wrong on our central submission and there is any element of newness in the notion of manner of manufacture, that is limited in the way that his Honour Mr Justice Burchett held; that is to say, to cases where it is clear on the face of the specification that the invention is not novel. That is of course not this case.
If the Court pleases, apart from that we rely on what is said in our written submissions and, if there are no further matters, those are our submissions in‑chief.
DEANE J: Dr Emmerson, I do not quite find in Justice Lockhart’s judgment acceptance of the double proposition that involving an inventive step only raises the question of obviousness, and that that issue had been abandoned by the present respondent. Indeed, I read his Honour’s judgment as proceeding on a quite different basis.
MR EMMERSON: That is correct, your Honour. His Honour proceeds on the basis that one can reconsider the question of inventive step under the heading of manner of manufacture. We say that is wrong.
DEANE J: I read his Honour’s judgment as effectively saying there was no inventive step under section 18(1)(b)(ii) and that that is what was argued on the part of the respondent. If that is not what his Honour says, is there something that makes it clear that is not what his Honour is saying?
MR EMMERSON: Yes, your Honour. It comes from the way his Honour introduces the whole of ‑ ‑ ‑
DEANE J: Well, I am not too sure where it is, but that is, no doubt, what I had in mind as I read his Honour’s judgment.
MR EMMERSON: Yes. His Honour sets out the various grounds ‑ ‑ ‑
DEANE J: Somewhere he refers to 18(1)(b) and says that is what the current respondent argued, but I have lost where it is. Yes, Justice Toohey has pointed me to the bottom of page 819.
MR EMMERSON: Yes:
The respondent also asserts that the invention in suit did not involve an inventive step.
DEANE J: And his Honour then ties that in specifically with 18(1)(b)ii).
MR EMMERSON: Yes.
DEANE J: You would say that what his Honour says there is not what the respondent said?
MR EMMERSON: No, because the respondent had conceded below the obviousness point.
DEANE J: But it is apparently arguing that it does not involve an inventive step.
MR EMMERSON: Yes. Those two, we would say, are inconsistent unless you can raise the question of obviousness under two different headings.
DEANE J: But it does not really matter, in one sense, does it, apart from a pleading point or an argument point?
MR EMMERSON: No, it matters intensely because, if the respondent is required to establish an objection that the invention is obvious and does not involve an inventive step, then under both the 1952 Act and the 1990 Act, the respondent is limited as to the prior art base on which it can rely. And that was the source of the concession below because the respondent simply could not establish that prior art base.
Indeed, that appears in what his Honour says at the top of 844:
The respondent did not press its case at the trial (nor therefore on appeal) on obviousness, no doubt, at least in part, because the respondent could not establish that what is described in the evidence as the Vrenken Article was common general knowledge in Australia.
Now, that is taking up the position that was laid down by this Court in Minnesota Mining v Beiersdorf, that is, that in order to support an objection that an invention is obvious and does not involve an inventive step, to use the language of the 1952 Act, one can only rely on matters which are shown to be part of common general knowledge and the respondent could not establish that and, therefore, had to abandon the objection that the invention was obvious and did not involve an inventive step. Now, we say that it is not now open to the respondent to raise what is in substance the same objection, call it manner of manufacture, and to raise it without the limitation as to the prior art that it could rely on which is set out in the 1952 Act and in slightly different but still relevant terms in the 1990 Act.
DEANE J: On your argument is this what the case ultimately comes to, that is, that the respondent being unable to establish that the invention, adding the verbiage, involved an inventive step or it did not involve an inventive step under 18(1)(b) has succeeded because his Honour held that the requirement of manner of manufacture involved an inventive step that was a variation of the 18(1)(b)(ii) requirement?
MR EMMERSON: Yes. On his Honour’s view it appears that 18(1)(a) involved an additional inquiry into inventive step, and we say that that was simply in error.
TOOHEY J: But that comes in through manner of new manufacture, does it not?
MR EMMERSON: It comes in through manner of manufacture in 18(1)(a).
TOOHEY J: Well, manner of manufacture or manner of new manufacture?
MR EMMERSON: The words in 18(1)(a) are “manner of manufacture”.
TOOHEY J: Yes, I realise that, but they are not the words in the definition of “invention”.
MR EMMERSON: No, but, having ‑ ‑ ‑
DEANE J: But that takes us right back to the beginning. You were dealing with what I wanted to understand, and that is, how Justice Lockhart’s judgment proceeded.
MR EMMERSON: Yes.
DEANE J: Well now, is what you say, that is proceeded on the basis that 18(1)(b)(ii) was not satisfied, but in a context where 18(1)(b)(ii) is not satisfied, there is a distinct and varied requirement of involving an inventive step that has a different prior art base reference point?
MR EMMERSON: Yes, and, indeed, under the 1990 Act no defined prior art base.
McHUGH J: But his Honour did not think he was dealing with inventive step under 18(1)(b). He rather seems as though he was dealing with subject matter in some way; that it was not a ‑ ‑ ‑
MR EMMERSON: Well, yes, though subject matter in the earlier cases is really a precursor of the notion of inventive step or obviousness.
McHUGH J: Yes.
TOOHEY J: Well, that is what prompted my question to you, because it seemed to me that he was dealing really with a prior step, namely the manner of manufacture, rather than putting a gloss on inventive step under (ii).
MR EMMERSON: Well, it could not go via (ii) ‑ “could not” perhaps has an unnecessary overtone to it. It would not be open to a court to go under (b)(ii) because of the concession that was made below, and, therefore, the question was, “Was there a manner of manufacture within 18(1)(a)?”, and we say his Honour wrongly, as it were, incorporated (b)(ii), but without the limitations and constraints and structure that the Act had set up under ‑ ‑ ‑
DAWSON J: You really say (b)(i) and (ii), do you not?
MR EMMERSON: Yes, in substance his Honour is really taking up an obviousness point, not a novelty point, your Honour.
DAWSON J: But they blend a little, one into the other.
MR EMMERSON: They might conceivably blend a bit, yes. There are undoubtedly circumstances where the two overlap. Could I say that what he is doing is treating section 18(1)(a) as if it deals, as it were, afresh with newness, covering the same ground as section 18(1)(b) but without the statutory constraints for that ground.
TOOHEY J: You do not have to go so far as to argue that his Honour incorporated components of paragraph (b), do you? It is probably enough for your purposes if you can make good the proposition that he put a gloss on the manner of manufacture which he was not entitled to.
MR EMMERSON: He put an impermissible gloss - the underlying proposition which really is the foundation of our case is that manner of manufacture in section 18(1)(a) does not carry with it a requirement of newness.
McHUGH J: Yet curiously, his Honour seemed to be at pains to insist that “manner of manufacture” and “obvious” were quite distinct. He says that in express terms at the bottom of page 843 over to page 844 where he says that he is critical of counsel for the appellants.
MR EMMERSON: Yes, he does, indeed.
McHUGH J: Although counsel for the appellants would have been the other side, would not they?
MR EMMERSON: No, my clients were the appellants below.
McHUGH J: Yes, that is right.
blurred the distinction between the requirement that the invention be a manner of new manufacture and obviousness.
MR EMMERSON: Yes, I need hardly say that our submissions were not blurring the distinction and his Honour really does seem to have treated manner of manufacture as if it let in all these inquiries about obviousness again.
DEANE J: Except is the key the first paragraph on page 839.
MR EMMERSON: Yes.
DEANE J: And is his Honour saying that manner of manufacture requires that what is disclosed in the specification is capable of being an inventive idea or step and section 18(1)(b)(ii) requires that it is, in fact, an inventive idea or step. If that is what his Honour is saying it seems to me to have a great deal of force in it.
MR EMMERSON: What he is saying at the top of 839 is not whether it is capable of being an inventive idea or step, but whether it actually is an inventive idea or step and ‑ ‑ ‑
DEANE J: The specification will never disclose that unless it is something that a specification should not quite be and annexes to it all the evidence which shows that what is specified is not only capable but is in fact.
MR EMMERSON: We would entirely agree with that and if, contrary to our principal submission but in accordance with our alternative submission, his Honour Justice Burchett is right, that is to say, if you find within the four corners of the specification an admission that the invention is not novel or that it is obvious, that is likely to be a very rare occurrence. It is undoubtedly likely to be a rare occurrence ‑ ‑ ‑
DEANE J: Yes, but that is the difference, is it not? I mean, the way I was querying whether the judgment was saying you look at the specification, you look at its contents and you say, “Is this capable or is what it discloses capable of being an inventive idea or step?” If you answer that, “No,” then a fortiori to Justice Burchett’s position that is the end of the inquiry, but if you say, “Yes, it is capable of being,” you then must proceed to 18(1)(b)(ii) and say, “Does it in fact?” I am not putting to you a point of view, I am just inquiring of your reaction.
MR EMMERSON: No, I understand what your Honour is putting to me and that is perhaps something rather similar to the view that Justice Burchett took, but we would say that it is wrong because it ‑ ‑ ‑
DEANE J: Yes, I follow that.
MR EMMERSON: ‑ ‑ ‑is introducing newness but getting, as it were, the evidence for non-newness from the body of the specification.
DEANE J: All it really does is it says you understand manner of manufacture in a context where the relevant questions to patentable invention can be factually addressed.
MR EMMERSON: Yes.
DEANE J: That possibly puts it a little bit more against your argument than I intended to.
MR EMMERSON: Yes. The difficulty is, of course, that the expression “manner of manufacture” does raise a question about inherent patentability. For instance, to take the example of something which is merely a scheme for winning at the races or something of that sort which falls outside the general notion of patentability, then section 18(1)(a) undoubtedly provides a threshold and if you stumble at that threshold you do not go on to ask whether what is claimed is new, but the way in which his Honour approaches the question before him we say is replete with analyses of whether what is done is new and we say that is wrong.
McHUGH J: But his Honour, it seems to me, makes it plain at 839 at line 15 that he sees ‑ well, he says:
Likewise, the requirement that a patentable invention be a manner of new manufacture is inherently distinct from the requirements of novelty, lack of obviousness, involving an inventive step and utility as required by s. 18 of the 1990 Act.
Now, whatever else you might say about the previous law, you could not say it was inherently distinct from those, because they were all embraced.
MR EMMERSON: Yes. We would say manner of manufacture, leaving out the word “new”, is inherently distinct.
McHUGH J: Yes.
BRENNAN J: Thank you, Dr Emmerson.
MR EMMERSON: If the Court pleases.
BRENNAN J: Yes, Mr Catterns?
MR CATTERNS: May it please the Court. Your Honours, before turning to the first legal question which is what one may call the special leave legal question, which really, as I understand it, has gone away, may I submit that the discussion that my learned friend just had with your Honour Justice Deane holds the key to the case. Our submission is that Justice Wilcox and the majority in the Full Court correctly approached the question, namely whether or not what was described here in this specification was capable of being a manner of new manufacture within the meaning of the Act, which has not changed, which I will try and make good in a moment.
We can win this case simply, we believe, by persuading your Honours that the NRDC Case and the Microcell Case were manner of manufacture cases. They were not obviousness cases. If they are manner of manufacture cases, as we submit, and I will try and make good, they do allow consideration of some concept of newness. Now, the phrase “newness” is our friend’s phrase and not the Full Court’s phrase, nor Justice Wilcox’s phrase but we can use it as a shorthand even though we do not like it. This residual concept of newness ‑ it is clearly in Microcell and NRDC because their Honours say, in those two decisions, unanimously, that a new use of a known thing for which its known properties make it suitable, is not a manner of manufacture.
Now, there is newness in that formulation, as your Honour Justice McHugh pointed out this morning. Now, we say that those cases correctly state the law ‑ there has been no suggestion that they do not here; no leave has been sought to say that they do not ‑ and if we can make it good that they are manner of manufacture cases, not as our friend says, obviousness cases, then we will make good the proposition that in the field of manner of manufacture or manner of new manufacture, some residual concept of newness, as our friend puts it, is there. And the short point is, if you only claim in your specification, a new use of an old thing for which its known properties make it suitable, you are not claiming something that is capable of being an invention.
McHUGH J: Well, that means, does it not, that you could have knocked the specification out as a matter of law on 18(1)(b)(ii) on the ‑ ‑ ‑
MR CATTERNS: No, your Honour, and that is the distinction between the NRDC Case and the present case, because “obviousness” means, did not involve an inventive step over what was common general knowledge in the art. Now NRDC and Microcell do not for a moment make a finding of the common general knowledge and then do a step above to see whether it is an inventive step. They are talking about a different concept, your Honour, although, I confess, the word “inventive” is used.
McHUGH J: Well, that is right ‑ ‑ ‑
MR CATTERNS: But, your Honour, here ‑ let us make it clear at the outset, if I may ‑ we did not press 18(1)(b)(ii). So, his Honour Justice Lockhart is wrong, with respect, at 819. We do not press lack of an inventive step, because we could not prove common general knowledge; the reason being there is nobody in the field in Australia. There are no Philips or Westinghouse researchers of the calibre involved in Australia so we just could not prove it. We could prove publication of the articles without difficulty, but we could not prove common general knowledge. Therefore, we could not make a case on obviousness or lack of inventive step in 18(1)(b)(ii), but there remains a separate ground ‑ there is no doubt it is a separate ground ‑ in 18(1)(a), of manner of manufacture, which means the same as, it now appears to be conceded, manner of new manufacture.
Certainly, it appears to be conceded, we can go back to NRDC and Microcell, and those cases, with their careful discussion of the earlier cases, and the passage from Terrell, which is clearly referring - the passage that their Honours quote in Microcell - clearly referring to the question of manner of manufacture and not obviousness. Those cases say that in the question of manner of manufacture some residual concept of newness is there. If you merely claim ‑ to repeat myself, I hope, for the third and last time ‑ this new use, which is the ratio of Microcell ‑ new use of the known product, you are not claiming something that is capable, that is distinct from something that is, in fact, obvious. And that is the distinction, your Honours.
That might be right or wrong on those cases, and if I am wrong and my friend is right about NRDC being an obviousness case, at least so far as it treats this question, and if our friend is right on Microcell being an obviousness case, well then, your Honours will see that the first half of how the Full Court dealt with us is wrong ‑ dealt with our case on manner of manufacture is wrong.
McHUGH J: I must say, just reading this thing quickly, I see it as a subject matter case, that ‑ ‑ ‑
MR CATTERNS: Yes, your Honour. The Terrell passage that is in our friend’s materials in the chapter on subject matter says that the phrase “subject matter” is used with respect to two things: one, manner of manufacture ‑ that is the left‑hand side of the very first page ‑ two, obviousness. Terrell’s discussion begins the manner of manufacture ‑ ‑ ‑
McHUGH J: This is the 8th Edition of Terrell, is it?
MR CATTERNS: Yes, your Honour. It is in our friend’s bundle.
McHUGH J: It is not the 13th Edition - - -
MR CATTERNS: Yes, your Honour. I accept with my friend that the phrase “subject matter”, if I say so with respect, is a bit risky because, at the time of Terrell’s 8th Edition, it covered both concepts. It is not proper subject matter for a patent if it is not a manner of manufacture or if it is obvious. So, with respect, to say subject matter about NRDC in a way begs the question. The proper question, we submit, is to say NRDC is a manner of manufacture case, because it was looking at the 1952 Act and, on opposition, section 59(1)(f) was:
that the invention, so far as claimed in any claim, is not a manner of manufacture.....
(g) that the invention.....was obvious ‑
It is clearly a manner of manufacture case; it is a famous manner of manufacture case. It is the case that holds that type of process for improving crops. It is famous around the world as a manner of manufacture case. That will not win me the argument just saying that, but its real importance is that all through it, and including its discussion of Microcell, contrary to the CCOM’s single line which says the opposite, pages 261 to 268, which are the critical pages referred to in CCOM, are all discussion of the question of manner of manufacture, and so that is true of Microcell. May I take your Honours to all of those in a moment and, after that introductory and excitable flurry, go back to the question that began this morning.
DEANE J: I said to Justice Brennan I did not think somebody could be enthusiastic about a patents case.
MR CATTERNS: Your Honour ought to hear my learned junior speaking to me about it, but it is her victory at first instance we are upholding. It seems to be conceded that there is no change in the law in the 1990 Act.
BRENNAN J: Whatever the law may be.
MR CATTERNS: Yes, your Honour. That means that the question that his Honour Justice Deane read out to my friend from the transcript of the special leave application has gone away, which was that his Honour the Chief Justice asked Mr Ellicott:
Do you contend that the meaning of that expression ‑
in 18(1)(a) ‑
is less in content than “manner of new manufacture” under the 1952 Act?
MR ELLICOTT: Yes, we do, and we say that the Parliament purposely took out the word “new” ‑ ‑ ‑
I think three times in answer to something your Honour the presiding Judge put to my friend, he accepted that and, with respect, he has to. It is clear that the removal of the word “new” in 18(1)(a) was not intended to throw away the old law of manner of manufacture. But in case there is any argument on that, your Honours, could we just quickly ‑ we rely on the definition point that your Honour Justice Toohey raised. Within 18(1)(a) itself, it does not just say “is a manner of manufacture”. So the first point is that the preamble ‑ a patentable invention is an invention. It picks up the definition of invention in the schedule which uses the words “manner of new manufacture” within the meaning of section 6.
DEANE J: Yes, except the alternative, “an alleged invention”, might be a more appropriate definition there.
MR CATTERNS: Yes, your Honour, but the reason the phrase “an alleged invention” is there is just to let you begin the process of applying for a patent. Secondly, your Honours, in 18(1)(a), again, section 6 of the Statute of Monopolies is invoked. So, again, as the IPAC Report and the explanatory memorandum say, what is being intended is to invoke a long line of cases which have explained what the term means and, as the High Court pointed out in the NRDC Case, it means a lot more than manufacture in the sense of something you manufacture and it means a lot more than vendible product; just as an example, picking a scheme for the races. A scheme for winning money at the races can be a perfectly vendible product, they are advertised in the papers every week. You can subscribe to them and buy them, the little magazines that contain such schemes, but they are not a patentable invention, as our friend agrees, because they are not capable of being something that fits within what the courts have held for 350 years is the widened ambit of the phrase.
Your Honours, still on this statutory construction point, the strict carving out, as your Honour the presiding Judge puts it, of novelty and obviousness that is evident in 18(1)(a) and (b) was precisely evident - as your Honours remember in the 1932 amendment Act UK - and in section 100 and section 59 of the 1952 Act here because in section 100(1)(d) was the ground of:
not an invention within the meaning of this Act -
and then the meaning was found in the definition, section 6, of “invention” which is:
any manner of new manufacture the subject of letters patent.....within section six of the Statute of Monopolies ‑ ‑ ‑
BRENNAN J: Mr Catterns, is this the problem though: one could understand how a new use for an old product does not amount to a manner of manufacture but if you take old products and then make a new manufacture it is a different kettle of fish?
MR CATTERNS: No, with respect, your Honour, because Microcell, there was a new product, there was a new plastic shell, cartridge‑type shell or rocket casing being made, but the making of the new thing and the new thing was held not to be a manner of manufacture. I would respectfully submit the Microcell Case is exactly against what your Honour just said to me.
BRENNAN J: I must confess, conceptually, I cannot understand how (1)(b) can be separate from (1)(a). If it is conceded that (1)(a) can extend to new uses for old products, where does (1)(b) come in?
MR CATTERNS: (1)(b)(ii) obviousness or lack of inventive step, your Honour, is a separate nice little ground which says you look at the common general knowledge of the competent skilled workman in the field, as explained by the High Court in the 3M Case, and you ask yourself the question, “Was it an inventive step” - and there is a lot of law about what an inventive step is - “above that base to make this invention?”, whereas, the section 18(1)(a) question is a different one, namely, as the High Court explained in NRDC, “Is this the kind of thing which as the principle is developed is held to be patentable within the concept of invention as it is developed?” If I may say so with respect, your Honour, I think the flaw in the way your Honour puts it to me is it is not an answer to the question to say, “This is a manufacture, a manufactured thing or a vendible article or a lamp.” That does not answer the question of manner of manufacture because, as the High Court points out, we have moved a long way from just the mere dictionary meaning of “manufacture”. I submit that is how one resolves it, your Honour.
In section 18 (1)(a) there is a category of things which do not come within the meaning of the 1623 Act as expanded. They include mere schemes, there is an express exception in section 18(2); human beings and the biological processes for their generation. It was thought that it excluded methods of treatment of humans and there are various other categories including mere discoveries, and we say, your Honour - which is the second limb of our case on which we won and the second limb of the ratio of the Full Court which is not even touched by these two legal points today, merely to claim desirable properties. That is the distinction between claim 6 which claims a lamp with particular phosphors and claim 1 which claims lamps with phosphors possessing desirable properties.
Your Honours have seen our written submissions and I hope that is not the argument today. That is an entirely distinct though related basis and probably the principal basis on which the Full Court found for us. It is not the Microcell point, it is a different point. To merely claim desirable properties is not the kind of thing that is patentable. The way Justice Deane put it in argument, a claim for desirable properties is not capable of being a manner of manufacture.
So there is a very broad concept in 18(1)(a) as IPAC and the explanatory memorandum recognised, one little branch of which is this new use of old thing, which the Court here held applied. And we submit that the new use of old thing territory is expressly recognised by NRDC and Microcell in this context of 18(1)(a) or its predecessors and allows this residual concept of newness contrary to our friend’s submissions.
DEANE J: Is what you say this: that what 18(1)(b)(ii) asks is, “Is the claimed inventive step which is inherent in the specification in fact an inventive step when compared with the relevant prior art base?”?
MR CATTERNS: Yes, your Honour and that is made very clear by 7(2) because section 7(2) says exactly what your Honour says, in fact. It says:
an invention is to be taken to involve in an inventive step when compared to the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge ‑
and so on. That is a codification of the old approach discussed, for example, in the 3M Case. It was in 144 CLR, your Honours; it is on our list. Yes, your Honour, and that is a separate question and to make it perfectly clear, we had to abandon it because we could not prove the factual basis, the prior art base.
Your Honours, on the first question, the pure question of statutory construction, on which I think there is little debate so I will not take much time on it, may I point out that the Full Court in CCOM agreed with Justice Burchett in holding that there was no change wrought by the new Act, although it criticised the Mirabella Case in the passages our friend took your Honours to. The no change holding below was approved in CCOM. The reference to that, your Honours, is in 51 FCR 260 at 289. So, your Honours, that is the first legal question on which special leave was granted which, as we now take it, is in fact conceded, namely that there is no change wrought by the deletion of the word “new”, and we respectfully submit the Court might consider rescinding special leave in light of that.
But the question that now really seems to be argued between us is, “Is there a residual concept of newness?”, and may I say again that is not our phrase nor is it the Full Court’s phrase, but if we could use that as the shorthand to describe what comes up in Microcell and NRDC.
DEANE J: But what you are putting is not really right, is it, in that what is put against you is that 18(1)(a) is different if viewed in isolation to the old law, but that if you look at 18(1) as a whole it is in the senses we are talking about not different because the query whether there is any claimed inventive step and whether there is any actual inventive step has been moved into 18(1)(b)(ii) and resolved against you by concession.
MR CATTERNS: No, your Honour, that would be wrong, with respect, because it has ‑ ‑ ‑
DEANE J: I am not saying it is right, but I think the first question remains relevant on Dr Emmerson’s argument because that is put.
MR CATTERNS: Well, your Honour, it is unattractive of me to try and argue what my friend did and did not concede. He will say what his position is.
DEANE J: I thought he said that on his argument the whole query involving inventive step had been moved into 18(1)(b)(ii).
MR CATTERNS: But, your Honour, I thought he did answer his Honour Justice Brennan by agreeing that there was not a substantial and deliberate change in the concept of manner of new manufacture.
DEANE J: But it was an extraction from it into another part of the section even though there may not be any practical difference and I can see that you have got an argument against that.
MR CATTERNS: Yes, your Honour. Well, if he says that, he says that, your Honour. Our argument is - and I am sorry if I have misstated his position - that the carving out took place in the 1952 Act where the three grounds were separately set out as subparagraphs of section 100(1)(a) and they had, in fact, been carved out beforehand.
McHUGH J: But could you just make this clear to me: does your argument involve the proposition that manner of manufacture within section 18(1)(a) involves the notion of an inventive idea?
MR CATTERNS: Yes, your Honour, and I accepted the wording “inventive idea” is risky because it looks like “inventive step” in section 18(1)(b)(ii). The phrase “inventive idea” was used by Justice Lockhart picking up Justice Wilcox who picked up NRDC. So my answer to your Honour’s question is yes, to the extent permitted by NRDC and Microcell.
McHUGH J: To put it another way: you say that it involves the idea of invention?
MR CATTERNS: Yes, your Honour. If the specification itself claims something that is capable of being an invention it crosses that hurdle; if not, it falls at the first hurdle. That is how it fell in Microcell.
McHUGH J: That is why I do not follow your answer to an earlier question I asked you. If that is the right way to approach it, if you say the specification on its face is bad because it does not show an invention, why could you not reach the same result by saying, “Well, we succeed on section 18(b)(ii)”?
MR CATTERNS: You might, your Honour, and in most cases you would not bother and there would not have been a special leave because the court would have held that the Full Court said it was obvious and that there is no question of law involved.
McHUGH J: Now, this is what I am interested in. Where do these two circles intersect? There must be some overlapping on your argument then.
MR CATTERNS: No, your Honour, because the inventive step is ‑ let me think about the actual overlap, your Honour , but they are distinct concepts. The inventive step is inventive step as section 18 says, above a prior art base, and that is a factual question to be determined, and the specification can make admissions as to the state of the prior art but, generally speaking, it is a matter of fact that you prove by calling all the experts who worked in the field whereas the manner of manufacture question is a narrower question dependent on the specification.
DAWSON J: One involves a comparison and the other involves no comparison.
MR CATTERNS: Yes, your Honour, precisely.
McHUGH J: So, your argument is essentially, if not identically, the same as Justice Burchett’s.
MR CATTERNS: Your Honour, we do not disagree with his Honour Justice Burchett until he gets to the application of it to the instant facts; that is right. But we do not take his Honour to disagree with their Honours ‑ with the other judges on that point. But we do not disagree with Justice Burchett up to that.
McHUGH J: Justice Burchett articulates the argument quite explicitly. But are you saying that it is implicit in the majority argument?
MR CATTERNS: Yes, your Honour. They followed the same approach, we say. We submit that their Honours did not go outside the specification in applying Microcell. They did not; they were looking at the character of what described and claimed, in the four walls of the specification and, picking up what his Honour Justice Dawson just said, their Honours did not do that by comparing it with the prior art base, and 18(1)(b) has the notion of comparison in the beginning of it, whereas 18(1)(a) does not. It is an absolute question of capability ‑ a threshold question in 18(1)(a) - whereas 18(1)(b) is a factual comparison.
McHUGH J: You would have to compare it with something, would you not? It just does not exist out there on its own, somewhere in space time.
MR CATTERNS: It is what they say their invention is, your Honour, in the whole of the document. For example, if we could say, “This is a new game of cards”, it will not be granted.
McHUGH J: But that itself must refer back to some general body of knowledge, somewhere or other. When you talk about construing the specification, you have got to construe it by reference to something, even on your argument. There must be some understanding of what has gone before.
MR CATTERNS: Yes, your Honour, that is true because to say that it is known means it has that inherent in it, but that is in the specification, your Honour.
McHUGH J: I suppose it is in this particular case anyway, but it need not necessarily always be the case then.
MR CATTERNS: No, your Honour. This is a case where the patentee said these are known per se, et cetera. In other cases of a new use of the old thing it might not be clear from the specification and you might have to try your chances on obviousness, although there are other cases where if it is on its face without any reference to comparison, for example, if it is a claim for a human being or the process if it is for their generation it will be excluded by statute.
TOOHEY J: But it might be thrown out simply because it is not a manner of manufacture. You are not comparing it with anything.
MR CATTERNS: Yes, your Honour. Yes, it might be equals MC squared without any even attempt to apply it in the practical manner.
BRENNAN J: Then is this the proposition: where it is an attempt to apply it in a practical manner that 18(1)(a) requires something which on its face appears to be an invention as ordinarily understood, then ‑ ‑ ‑
MR CATTERNS: As understood in the cases, as ordinarily understood in the line of authority.
BRENNAN J: As understood in the sense that it is something that is useful and is a new way of doing something or producing something and that it is only when this basic inventive idea is incorporated in some way in the specification that one then goes to the stage of saying, “We have now identified the inventive idea. Let’s look at the prior art face and see whether anybody else has had this same inventive idea or whether this inventive idea is so obvious having regard to the prior art base that we won’t grant it a patent”.
MR CATTERNS: Generally speaking, with respect, I agree with your Honour, although, with respect, in the end we prefer, if your Honour does not mind me saying so, the page in NRDC ‑ ‑ ‑
BRENNAN J: Do not mind at all because I must confess I can not quite articulate for myself what this conception is, that is, in section 18(1)(a). Perhaps I should look at NRDC overnight and this might be a convenient time to start the process.
DEANE J: Might I just leave you with this thought that if you agree with what has been put to you by Justices Brennan and McHugh, I cannot for the life of me see how if you fail to satisfy section 18(1)(a) by reference to “inventive idea”, you can ever satisfy section 18(1)(b)(ii).
MR CATTERNS: Does your Honour mean how a patentee satisfy it?
DEANE J: Yes.
MR CATTERNS: The patentee would be able to satisfy ‑ ‑ ‑
DEANE J: If the specification does not satisfy section 18(1)(a) because it fails to contain an inventive idea which, as it were, is capable of disclosing or involving an inventive step, I just do not see how such a specification could ever satisfy section 18(1)(b)(ii). You might answer it tomorrow if you would like to think about it.
McHUGH J: You seek to use it the other way around, do you not? You say you can satisfy section 18(1)(a), but you may be destroyed on section 18(1)(b).
MR CATTERNS: I do say that, your Honour, but I think I also accept what his Honour says, because you just never get to section 18(1)(b). You fall at the first hurdle though, your Honour.
DEANE J: If you were to concede that section 18(1)(b)(ii) was satisfied and all that that involved ‑ ‑ ‑
MR CATTERNS: Which we did not here, is your Honour saying then, maybe, section 18(1)(a) would follow?
DEANE J: Well, I would have thought if you were disputing 18(1)(a) you would always as a practical matter dispute 18(1)(b)(ii).
MR CATTERNS: Except as here, your Honour, where you just could not prove the prior art base.
DEANE J: But you are disputing an inventive step.
MR CATTERNS: In 18(1)(a)?
DEANE J: If you dispute it in 18(1)(a), you necessarily dispute 18(1)(b)(ii) because you are saying what is involved is incapable of being an inventive step.
MR CATTERNS: Your Honour, it is incapable of being an invention within the meaning of the statute, which is something different.
TOOHEY J: It may be incapable of being manufactured.
MR CATTERNS: Yes, your Honour.
TOOHEY J: And, therefore, full stop, but it does not necessarily involve a question of inventiveness in terms of paragraph (b), does it?
DEANE J: But that is not what I am talking about.
TOOHEY J: No, I realise that, but on that question of new and alleged, there is a comment in the end of the NRDC Case, Mr Catterns, at the foot of page 261. I will not ask you to go to it now, but it might just be relevant to what you are being asked about the use of the term alleged and new.
MR CATTERNS: Yes, your Honour, thank you. May I take all of those questions on board, your Honour?
BRENNAN J: I think this would be a good time for you to do so, Mr Catterns.
MR CATTERNS: May it please the Court.
BRENNAN J: We will adjourn until 10.15 am tomorrow morning.
AT 4.20 PM THE MATTER WAS ADJOURNED
UNTIL WEDNESDAY, 15 MARCH 1995
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