Watson v Commissioner of Patents

In the matter of Watson v Commissioner of Patents, the appellant, Mr. Watson, contested the revocation of his innovation patent by the Commissioner’s delegate under the Patents Act 1990 (Cth). The crux of the dispute was whether the invention claimed in the patent was a patentable invention, specifically whether it was a manner of manufacture within the meaning of the Statute of Monopolies 1623 (UK) section 6. The invention at issue involved the engagement of an intellectual property professional to invent an intellectual property right, with the engager agreeing to pay a reward contingent upon certain conditions. The core legal issues the court had to determine were whether the claimed invention was merely a business method and abstract idea, and if the reward agreement was sufficiently certain.

The court examined whether the invention claimed was patentable, considering the principles established in Myriad Genetics Inc v Commissioner of Patents [2006] HCA 35 and RPL Central Pty Ltd v Commissioner of Patents [2004] FCA 878. The court found that the claimed invention did not produce a tangible or material product but was rather an abstract idea for a business model. The reward agreement lacked certainty, amounting to an agreement to agree, which the court deemed insufficient for patentability. The court held that allowing the patent would stifle innovation and the engagement of intellectual property professionals by creating a risk of infringement for those who successfully produced an intellectual property right.

The court concluded that the appeal must be dismissed, as the claimed invention was not patentable. The court held that the invention was merely a business method for engaging an innovator to produce an intellectual property right for an undefined reward, and that such a method did not qualify as a manner of manufacture. Allowing the patent would have a chilling effect on innovation and the engagement of intellectual property professionals. Consequently, the court ordered that the appeal be dismissed and that the appellant pay the respondent's costs.