Winner v Ammar Holdings Pty Ltd
[1993] FCA 134
•16 MARCH 1993
Re: JAMES EARL WINNER and DONNA C. WINNER
And: AMMAR HOLDINGS PTY LIMITED
No. G555 of 1992
FED No.134
Number of pages - 18
Intellectual Property
(1993) AIPC 90-971
(1993) 113 ALR 63
(1993) 25 IPR 273
(1993) 41 FCR 205
COURT
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Davies(1), Morling(2) and Cooper(3) JJ.
CATCHWORDS
Intellectual Property - patent law - revocation of patent for want of inventive step - whether improvement of anti-theft device involved an invention - - distinction between obviousness and novelty - common general knowledge in the art - whether mosaic can be made of prior patents - alleged misrepresentation of state of prior art in United States.
Crane v. Price, (1842) 134 ER 239, 1 Web's Pat Cas 393;
Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 272;
Horton v. Mabon (1864) 16 CB(NS) 141;
Harwood v. Great Northern Railway Co. (1862) 31 LJR (NS) QB 198;
Minnesota Mining and Manufacturing Co v. Beiersdorf (Australia) Ltd (1980) 144 CLR 253;
R.D. Werner and Co Inc v. Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565;
Nicaro Holdings Pty Ltd v. Martin Engineering Co (1990) 91 ALR 513.
Statute of Monopolies (1624)
Patents Act 1952 (Cth) s.100
Patents Act 1990 (Cth) ss.7, 18, 233
HEARING
SYDNEY, 22 and 23 October 1992
#DATE 16:3:1993
Counsel for the Appellant: Mr D.K. Catterns
Solicitors for the Appellant: Williams Niblett
Counsel for the Respondent: Mr J.J. Garnsey QC
Solicitors for the Respondent: Baskin and Lewis
ORDER
THE COURT ORDERS THAT:
1. The appeal be dismissed.
2. The appellant pay the costs of the appeal.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
DAVIES J. This is an appeal from a judgment of a single judge of the Court, Heerey J., in which, on a cross-claim in a patent suit, his Honour found that the applicant's Australian Patent No. 599863 was and always had been invalid. His Honour ordered that the patent be revoked on the ground that the claimed invention or inventions did not involve an inventive step. The respondent has given notice that it supports his Honour's judgment not only on the ground upon which his Honour relied but also on the grounds that the patent was invalid for want of novelty and that there was false suggestion or misrepresentation made to the Patents Office in the course of the application for the letters patent.
The patent application was a convention application and the priority date of the patent was 20 December 1988.
The letters patent were granted under the Patents Act 1952 (Cth) ("the "1952 Act), which has since been repealed and replaced by the Patents Act 1990 (Cth)("the 1990 Act"). The transitional provisions in s.233 of the 1990 Act provide inter alia:-
"233(1) Subject to this Chapter and the regulations, this Act applies in relation to a standard patent or a petty patent granted under the as if the patent had been granted under this Act.
...
(4) Objection cannot be taken to a patent mentioned in subsection (1), and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the patent under the 1952 Act."
Accordingly, revocation in the present case must satisfy the provisions of both the 1952 Act and the 1990 Act.
INVENTIVE STEP
4. The patent was granted for an anti-theft device designed to be attached to the steering wheel of a motor vehicle. Devices made in accordance with the patent are sold under the name "Super Club". The learned trial Judge described the device as follows:-
"The Super Club is a telescopic tubular metal device which can be fitted to the steering wheel of a motor vehicle. One end protrudes beyond the rim of the wheel so that, until the device is unlocked and removed, contact with the windscreen or other parts of the vehicle will prevent the steering wheel being turned.
At each end of the tube there is a U shaped hook which fits against the inside of the steering wheel rim. The tube consists of an outer sleeve and an inner shaft. The device is fitted by moving the shaft outwards until both hooks engage the inside of the rim of the wheel, one opposite the other.
The critical feature of the Super Club for present purposes is that the shaft has ratchet teeth which are engaged by a pawl on the sleeve. The pawl is lockable. When in a locked position, the shaft can be moved outwards so as to engage the rim, but not inwards. The practical effect is that a user can unlock the device, remove it from the steering wheel and lock it. When the time comes to fit the device again, there is no need to use the key. The shaft is simply extended outwards until the lock engages the rim. Once in position, the device cannot be removed without using the key."
There was evidence that the Super Club was a successful device. The evidence shows that the respondent imported 5 container loads each containing 3660 units of its version of the device into Australia during the second half of 1991. There was no evidence as to the extent of the sales of a predecessor, "the Club", or of other such devices, although there was evidence that some had been on sale. It was conceded that the Club was sold prior to 20 December 1988, the priority date of the subject patent. The evidence of Mr Ross Douglas Squire, a locksmith, to which I shall later refer in more detail, and the recitation of facts in the complete specification of the subject patent disclose that there had been sufficient use of the Club device for it to appear that there were aspects of that device which could be improved. But the evidence does not show the number of Club devices sold or how the sales of the Super Club compared.
It is not in dispute that the Super Club is a useful device or that it was an improvement on the Club, being easier to manage. The crux of the dispute is whether the development of the Super Club involved an inventive step or whether what was achieved was an improvement which would have been obvious to a skilled tradesman, such as a skilled locksmith.
I assume that the Super Club and the Club devices, as actually manufactured, have several differences including different locks, and that the Super Club as manufactured is a successful combination of its several individual elements. But for the purpose of the issue of inventiveness, the sole question is whether the conception of the combination constituting the anti-theft device, particularly the conception of ratchet teeth on a movable shaft and a lockable pawl on the sleeve such that the shaft may be extended without using a key, involved an inventive step. An integer of the claimed invention was:-
"locking means adapted to permit telescopic movement of said shaft member out of said sleeve member when locked, and to permit telescopic movement of said shaft member into said sleeve member only when unlocked"
Both the Club and the Super Club are large metal items and may be somewhat awkward to handle. But the Club had the disadvantage that, to engage the device and to remove it from the steering wheel, a key must be inserted into the lock on the sleeve before the sliding shaft can be extended or retracted. It was awkward to extend the shaft and to hold the hooks firmly in place against the steering wheel whilst at the same time locking the shaft into position. The Super Club overcame this problem in that the shaft may be extended whilst the pawl is locked. In the Super Club, it is only necessary to engage the key when removing the device from the steering wheel.
The lack of an inventive step, as a ground for revocation, was first expressed in legislation in the Patents Act 1932 of the United Kingdom. The 1952 Act specified the ground of revocation as follows:-
"100(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other ground: ...
(e) 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, was obvious and did not involve an inventive step having regard to what was known or used in Australia on or before the priority date of that claim"
The 1990 Act provides inter alia:
"18(1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim: ...
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) ...
(ii) involves an inventive step;"
Section 7 of the 1990 Act defines "an inventive step" as follows:-
"7(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with 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 as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately:
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area< would treat them as a single source of that information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
However, it is to be kept in mind that the transitional provisions of s.233 require that the ground of revocation also be available under the 1952 Act. Accordingly, this case must be considered under the words "having regard to what was known or used in Australia on or before the priority date", words which are accepted as encompassing what, to a person skilled in the art at the relevant time, would have been common general knowledge, but as not encompassing the additional knowledge which may now be taken into account under s.7(3) of the 1990 Act. See Minnesota Mining and Manufacturing Co v. Beiersdorf (Aust) Ltd (1980) 144 CLR 253.
Mr D.K. Catterns, counsel for the appellants, took the Court back to the Statute of Monopolies (1624) and to subsequent statutes and cases in support of a submission that the requirement that there be an inventive step was a recent development of the courts, first raised as an issue in Crane v. Price, (1842) 134 ER 239, 1 Web Pat Cas 393. Mr Catterns submitted that there is a present tendency of courts to set aside patents on the ground of lack of invention, which elevates the requirement of invention to a status which it does not deserve. Mr Catterns submitted that the essential element of a patent is that it involves something new. Mr Catterns relied upon comments of H.G. Fox in "Doctrinal Trends in the Concept of Invention: a Comparison and Historical View", to which Aickin J., with whom Gibbs A.C.J., Stephen, Mason and Wilson JJ. agreed, referred in Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 272.
I do not accept the development of the law as Mr Catterns has submitted it to be. The remarks of Fox are informative and of great interest, but the views expressed rely in part on two aspects of patent law which are not of assistance for present purposes. The first aspect is that, at the time of Case of Monopolies (1602) and of the Statute of Monopolies, the policy underlying the grant of a monopoly patent or privilege was to develop trade and manufacture. Naturally, emphasis was placed upon manufactures which were new in England and the term "inventor" was applied in that context. This policy aspect, to which Fox adverted, has long since ceased to guide judicial decisions with regard to the patent laws. A second aspect of Fox's discussion is that the alleged judicial requirement that there be an inventive step, inventive ingenuity, scarcely left a place for developments discovered by accident. As we are not concerned with any such circumstance, I need develop that point no further.
A basic contention of Fox and of Mr Catterns is that, until the middle of the 19th century, it was sufficient that the patent be granted in respect of a new manufacture and that the early law did not require that that manufacture involve invention. This was said to be illustrated by the fact that the manufacture may have been well known overseas or may have resulted from discovery and not ingenuity. Fox relied upon Mr Thomas Webster's Patent Cases, (1844), in which Webster noted with respect to Crane v. Price at 410:-
"It may be observed, that no case is reported or mentioned in any of the books in which a patent has failed, simply on the ground of the invention being the subject-matter of letters patent; some other ground, as want of novelty, or defective specification, having been the real cause of failure."
However, subject matter, in the sense that there be a development which was not obvious, was always a requirement of a valid patent. Thus, 1 Web's Pat Cas at 6-7, refers to Matthey's Patent in which a patent for the making of knives with bone handles was held to be invalid for the reason that it was proved that cutlers had previously made similar knives though not with bone handles. The report records the finding "they did use to make knives before, though not with such hafts, that such a like difference or invention should be no cause to restrain them, whereupon he could never have benefited this patent, although he laboured very greatly therein." Likewise, Sir Edward Coke's Third Part of the Institutes of the Laws of England, the first edition of which was published in 1644, in commenting upon the Statute of Monopolies, states at p 184:-
"Fourthly, the privilege must not be contrary to law: Such a privilege, as is consonant to law, must be substantially and essentially newly invented; but if the substance was in esse before, and a new addition thereunto, though that addition make the former more profitable, yet is it not a new manufacture in law: and so it was resolved in the Exchequer Chamber (Pasch. 15 Eliz.) in Bircot's case for a privilege concerning the preparing and melting, andc. of lead ore: for there it was said, that that was to put but a new button to an old coat: and it was much easier to add than to invent."
This observation is apposite to the present case, as I shall later mention.
The development of the law in respect of invention is discussed in Edmunds on Patents, 2nd Ed (1897) at 80-100. Edmunds expressed the result of the early cases up to 1857 in this way, at 89:-
"...the Judges were straining to support patents for meritorious discoveries ... On the other hand, there was an anxiety to protect the public against monopolies where the alleged inventions were not of any real merit. Amount of invention has so far not consciously become a matter of serious consideration."
It may be noted that Webster of counsel appeared in Horton v. Mabon (1864) 16 CB(NS) 141, a case which was heard in the Exchequer Chamber. Cockburn C.J., Martin B. Crompton J., Channell B., Blackburn J., Mellor J. and Pigott B. rejected his submission that it was sufficient that the claimed invention be a new manufacture and that an inventive step was not required. The Court did not call upon counsel for the defendants. Cockburn C.J. said at 142:-
"Now it was a matter of general knowledge, that the cups might be formed by riveting two pieces of single angle-iron to a plate: and we agree with the court of Common Pleas in thinking that the mere substitution of double angle-iron, - an article well known in the trade, - is not an invention for which a patent can be granted."
That decision was an appeal from Horton v. Mabon (1862) 12 CB(NS) 437, where a similar argument had been put by Bovil QC and Webster and rejected by Erle C.J., Willes and Byles JJ. At 451, Willes J. said:-
"No doubt a new combination of old machinery or instruments whereby a new and useful result is attained, may be the subject of a patent but there must be some invention. There is none here."
It is interesting to note that, a few years thereafter, in White v. Toms (1867) 37 L.J. Ch 204, Mr Webster led Mr Cotton and Mr Law in the successful argument that "a new material will not do; it must be a new manufacture by some process of your own invention; if you produce a new thing out of old materials, you must show ingenuity and skill in the manufacture." Mallons V.C. agreed with the submission and applied the principles laid down by Erle C.J. and Willes J. in Horton v. Mabon. The Vice Chancellor referred to similar cases, Thompson v. James (1863) 32 Beav 570 and Harwood v. Great Northern Railway Co. (1862) 31 LJR (NS) QB 198.
By 1865, Mr Alexander Mann M.A., in his "Remarks on the Administration and Defects of the Patent Laws" said at p 32:-
"Injustice is frequently occasioned by allowing Patents for mere applications of known means, involving neither invention nor discovery. Such Patents, it is true, cannot be defended at law, but the general public are not aware of that, and cannot ascertain the fact without incurring expense, even were it easy to obtain trustworthy information."
Thus, the general concept that the subject of a patent should involve an inventive step seems always to have been a requirement of the Statute of Monopolies. Where, for present purposes, the early approach mainly differed from the current law is not that the concept of invention was absent, but rather that the distinction between obviousness and novelty was not clearly drawn until the second half of the 19th century.
Even in this century, the concept has gone undergone considerable refinement as is shown by the discussion of Aickin J., with whom Barwick C.J., Stephen, Mason and Wilson JJ. agreed in Minnesota Mining and Manufacturing Co v. Beiersdorf (Australia) Ltd and by the judgments of Lockhart and Gummow JJ. with whom Jenkinson J. agreed, in R.D. Werner and Co Inc v. Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565.
In the latter case, Lockhart J. said at 571-2:-
"A manner of manufacture to be patentable must involve invention. The word 'invention' is not found in the Statute of Monopolies. Indeed, the definition in s 6 of the Act incorporates by reference the essential integers of the word as defined by the courts since the Statute of Monopolies. The use and meaning of 'invention' had been interpreted and applied by the courts even before the Statute of Monopolies was enacted. In Darcy v Allin (supra), it was held that a monopoly may lawfully be granted to any person who brings any new trade into the realm of his own wit or invention. In Clothworks of Ipswich Case (supra), it was said that a monopoly may be granted over a new invention. The Statute of Monopolies and subsequent statutes incorporate or adopt the requirement that the grantee of letters patents must have exercised inventive ingenuity.
The terms 'subject matter', 'obviousness', 'novelty' or 'invention' are also not to be found in s 6 of the Statute of Monopolies or subsequent statutory definitions in England or this country. Obviousness and novelty are expressions which are used in the Act but in a context to which I shall refer later. A study of the reported cases before and after the Statute of Monopolies discloses that until recently no sharp distinction was drawn between these expressions and that the questions of novelty and inventiveness were generally considered as part of the same essential requirements of a patent. As mentioned earlier, absence of subject matter or obviousness involve the same notion and the terms are often used interchangeably."
And at 573:-
"There is nevertheless logically a fundamental distinction between the two requirements for validity of a patent, a distinction recognised in some of the earlier cases though not in others, notwithstanding that the two were often not treated separately. The tendency in later decisions this century has been to treat novelty and invention or subject matter as distinct matters; see Graham Hart (1971) Pty Ltd v SW Hart and Co Pty Ltd (1978) 141 CLR 305, per Aickin J (at 330), with whose judgment Barwick C.J. agreed, and Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) 35 ALJR 212, per Windeyer J (at 217-218). It must not be forgotten that the two are usually closely connected in patent cases."
See also the extensive discussion of the development of invention and of novelty as separate concepts which appear in the judgment of Gummow J. at 595-602.
The requirement that the subject matter of the patent must involve an inventive step and be not obvious is now specifically expressed both in s.100 of the 1952 Act and s.18 of the 1990 Act.
In R.D. Werner and Co Inc v. Bailey Aluminium Products Pty Ltd at 574-5, Lockhart J. expressed the principle of invention in these words:-
"Invention means more than novelty. Novelty alone will not sustain a patent. There must in addition be some difficulty overcome, some barrier crossed. The distinction drawn by the courts between the two characteristics is illustrated by reference to some of the cases.
...
In Cole v Saqui (1889) 6 RPC 41 at 44, Lindley L.J. said that the grant of a patent requires that there must 'be some ingenuity of that which is new'. In Riekmann v Thierry
(1896) 14 RPC 105 at 114 (arguendo) Lord Halsbury said '(a) thing may be new, but unless it has some invention it is not patentable'. A similar statement was made by Lord Davey (at 121). See also to the same effect Nicholl v Swears and Wells (1893) 10 RPC 240; Gadd and Mason v Manchester Corp,
(supra), per Lindley L.J. (at 524); Lane Fox v Kensington and Knightsbridge Electric Lighting Co (1892) 9 RPC 413 at 416;
(1892) 3 Ch 424."
His Honour referred to the decision in Britain v. Hirsch (1888) 5 RPC 226, wherein Cotton L.J. stated at 232:-
"I do not agree with the view ... that when anything is done which has not been done before, that is sufficient to justify a patent being obtained for it. In my opinion, it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown for the particular thing."
What is required is an element of invention or inventive ingenuity. Frost's Patent Law and Practice, 3rd Ed., expresses the view that a mere "scintilla" of invention is sufficient. Frost refers at p 35 to the remarks of Blackburn J., delivering the opinions of himself and Shee J. with which the Lords agreed in Harwood v. Great Northern Railway Co. (1865) 11 HLC 654. At 667, Blackburn J. said:-
"Mr Grove, in his very able arguments, contended, we believe correctly enough, that if there was any real invention, though a slight one, producing a practical beneficial result, the patent was good."
As Frost states at 31:-
"If an invention is disclosed, it is quite immaterial from the point of view of the validity of the patent as regards the subject matter, whether the invention is a great one or a small one."
See also Meyers Taylor Pty Ltd v. Vicarr Industries Ltd (1973) 137 CLR 228 at 249 per Aickin J.
This principle is the same when it is described in obverse terms, namely that the improvement claimed be not obvious to a skilled tradesman having regard to common general knowledge in the art at the time of the improvement. In Minnesota Mining, Aickin J. said at 292-3:-
"The notion of common general knowledge itself involves the use of that which is known or used by the in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge. I do not with respect think that it is correct to describe that process as the making of a mosaic although it has often been so described, a usage which however may be misleading. The process of applying such common general knowledge to the solution of a problem is not a process of picking out individual pieces of information and combining them, including inferences from known facts and known principles, as well as the application of such principles. The making of a mosaic prohibited in the case of an allegation of want of novelty is the picking out of individual items of information from prior publications or prior objects and assembling them together so as to give them an appearance of unity and then alleging that such mosaic reveals the very thing claimed. That is an understandable, though not a permissible, process. In the case of alleged lack of an inventive step the question of making a mosaic must operate (if at all) in a very different matter. An allegation of want of inventive step is not made out by saying you may take one or two, or twenty-one or twenty-two, prior publications and then select from them appropriate extracts or pieces of information, which will add up to the invention claimed and so demonstrate that it was obvious. So to proceed is to mistake the nature of an invention and the nature of the objection of obviousness. The question is, is the invention itself obvious, not whether a diligent searcher might find pieces from which there might have been selected the elements which make up the patent."
In Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 Aickin J. said at 270-1:-
"It is well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge. The question is not whether it was or would have been obvious to the inventor or to some other particular worker in the field: Minnesota Mining and Manufacturing Co v. Beiersdorf Aust. Ltd"
Another approach to the same point, and one which is referred to in Blanco White on Patents 4th ed at para 4-212, is to ask whether the improvement represents a mere workshop adjustment or a workshop alteration. See British Westinghouse Electric Manufacturing Co v. Braulik (1910) 27 RPC 209 at 230; Samuel Parkes and Co Ltd v. Cocker Bros Ltd (1929) 46 RPC 241 at 252; Cincinnatti Grinders (Inc.) v. BSA Tools Ltd (1931) 48 RPC 33 at 75; Non-Drip Measure Co Ltd v. Strangers Ltd (1943) 60 RPC 135 at 142.
The test of inventiveness is an objective one for the judge to assess in the light of his understanding of the world. As was laid down in Wellcome Foundation, evidence as to the research and experiments undertaken by the inventor is generally admissible although not always likely to be helpful. There was no such evidence in the present case. Expert evidence from persons skilled in the field of the alleged invention as to whether the step was obvious or inventive is relevant and helpful though not determinative of the issue. There was such evidence before the trial Judge.
Evidence that there has been a long-felt want or problem which was resolved by the claimed invention may indicate that there was an inventive step. See eg. the remarks of Tomlin J. in Samuel Parkes and Co Ltd v. Cocker Bros Ltd, cited above. As Frost states at 32:-
"The practical success of a new article is in itself cogent evidence from which the conclusion may be drawn that the exercise of invention was necessary to the first production of the article, but practical success is by no means in all cases proof of the exercise of invention."
However, Lord Herschell warned in Longbottom v. Shaw (1891) 8 RPC 333 at 336:-
"Great reliance is placed upon the fact that when this patent was taken out and frames were made in accordance with it, there was a larger demand for them ... I do not dispute that that is a matter to be taken into consideration; but, again, it is obvious that it cannot be regarded in any sense as conclusive.....If nothing be shown beyond the fact that the new arrangement results in an improvement, and that this improvement causes a demand for an apparatus made in accordance with the patent, I think that it is of very little importance."
Frost states two guides which are useful:- at 33:-
"The conception of the idea is, in many cases, the whole merit of the invention; and its application, when once conceived, becomes the simplest thing in the world, and, consequently, does not evidence the expenditure of much thought, design, or skilful ingenuity."
at 42:-
"It is not invention to adapt, without ingenuity, a well-known idea in a well-known manner for a well-known purpose, though the identical adaptation has not been made before and a very useful effect is the result, or merely with greater skill to apply well-known tools and processes, and so to satisfy a want felt by persons in a particular trade, or the mere judicious carrying out of a well-known method together with mere adaptive skill in manufacture."
In respect of the first of these, Aickin J. has warned against ex post facto dissection of an invention. In Meyers Taylor Pty Ltd v. Vicarr Industries Ltd at 242-3, his Honour said that "subsequent analysis of the invention - 'the dissection of the invention' is not often helpful in resolving the question of obviousness". His Honour referred to the comments of Menzies J. in Commonwealth Industrial Gases Ltd v. W.G. Holdings Pty Ltd (1970) 44 ALJR 385 at 386-7 on the undesirability of analysis by hindsight. See also National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 at 264.
Mr Catterns submitted that the invention in the present case lay in the conception of the combination. He did not suggest that, once the idea had been entertained, any inventive ingenuity was required to produce a shaft with ratchet teeth to combine with the sleeve having a lockable pawl. Indeed, the evidence was that a ratchet and pawl was a well known arrangement which was used as long ago as Roman times. The remarks of Dixon C.J., Kitto and Windeyer JJ. in National Research Development Corporation v. Commissioner of Patents, cited above, express the point on which Mr Catterns relied.
The specification described the invention as an improvement to an existing workable device. The complete specification described the problem to be overcome as follows:-
"The prior patented steering wheel lock (the Club) of the present assignee successfully overcomes the disadvantages in adjustment and handling discussed above with respect to the previously known steering wheel locks, but still is not ideally convenient and easy to use. Although the retainer conveniently holds the hooks in the desired spaced location on the steering wheel rim, the user must use a key to lock the telescopic members in that position. Use of the key is again required when the steering wheel lock is to be removed. Each use of the steering wheel lock between operations of the motor vehicle thus requires two operations with the key lock. Since speed and convenience are strict requirements of most motorists, and since one usually operates an automobile several times daily, these repeated operations with a key in addition to those normally required to enter and operate an automobile could be prohibitively cumbersome whereby a motorist may frequently neglect to use the steering wheel lock and may ultimately abandon it."
The problem was that the Club was "not ideally convenient" in that the user must use a key to lock the shaft and sleeve into position when fitting the device and again when removing it.
An inference may, and in my opinion should, be drawn from the words of the specification and from the fact that the Club was on sale to the public, that the inconvenience of having to use the key both on installation and removal, particularly on installation, was known and recognised. Mr Catterns submitted to the contrary, but it seems to me to be inevitable that the inconveniences of the Club device were recognised. Indeed, Mr Squire's evidence that in early 1989 he was requested to give advice on improving the Club device establishes the point.
Mr Squire, a skilled locksmith, was personally aware that the Club was sold in retail outlets prior to 20 December 1988. Mr Squire deposed:-
"If I had been asked as at 20 December 1988 to solve the 'problem' identified in the complete specification of the Patent in Suit, and said to be overcome by claims 1-14 and each of them, I would have been able to do so as a matter of routine design by recourse to the general knowledge and information which I had, or was available to me, in the field of mechanical engineering and in my daily practice as a locksmith.
In my opinion, none of the 'solutions' defined by the patentee in claims 1-14 of the Patent in Suit and each of them constituted an advance over the prior art as I knew it as at 20 December 1988."
Mr Squire said in oral evidence that he had, in fact, been asked by a firm, Purity Products, to suggest improvements that might be made to the Club. He said that he believed his first personal meeting with officers of Purity Products was in approximately June or July 1989 though contact had been made earlier in 1989. Mr Squire said:-
"They were looking at the time for an improved design of their product. There were considerable pressures from the marketplace, that the device was not living up to expectations, and the serviceability and life of the product was quite poor. Also there were complaints of its function in some areas. It was considered awkward to use. The ratchet method came up very early in my conversation where I suggested that an auto locking device may be well considered, and within a matter of minutes I had literally talked myself out of using that system. I had brought the idea forward and then rejected it in my own conversation with the client."
Thus the substance of Mr Squire's evidence was that, when the problem was raised with him, he immediately considered the possibility of using a ratchet and pawl. However, he rejected the idea for he was otherwise dissatisfied with the Club device. He said:-
"It was always a concern to me, having seen a device similar to the Club device, that in a collision it had separated from the body member and actually projected through the seat of the motor vehicle."
Accordingly, Mr Squire went on to recommend changes which, in his opinion, would produce a more secure device.
Professor N.L. Svensson, Professor of Mechanical Engineering at the University of New South Wales, also gave evidence that the improvements claimed were not inventive. Professor Svensson deposed:-
"I am of the opinion that the addressee of the patent, as at 20 December 1988, would have had information available to him in the form of his common general knowledge which, in my opinion, would have led him to conclude, as a matter of routine design, that one of the well known alternatives available to him in the prior art which he would have considered worthwhile trying, was a ratcheted device containing the essential elements of integer 4."
That evidence was not contradicted.
The evidence adduced on behalf of the appellant was not as forceful. Mr D.W. Lumby, a design engineer, stated as follows in his affidavit:-
"In my opinion this automatic locking mechanism represents a significant advantage over the Lock 4 and the steering wheel lock described in the Club Patents.
...
As a designer, I believe the simplified mechanism of the Super Club device would be very attractive to the consumer and that the advantages of the simplified mechanism could effectively be promoted by the supplier of the Super Club device.
In my opinion as a key is not required to fit the Super Club lock it is more likely to be used regularly by the consumer and is more attractive as a product."
Mr L.P.C. Mills deposed:-
"In my opinion the automatic locking means of the SUPER CLUB Lock is of considerable benefit. It makes the SUPER CLUB Lock much simpler and quicker to instal particularly in the dark."
The evidence of Mr Lumby and Mr Mills went no further than to show that the improvements for which the patent was claimed were useful improvements to the Club device.
The trial Judge formed the view that no inventive step was involved in the improvements claimed. His Honour referred to Acme Bedstead Co Limited v. Newlands Bros Limited (1937) 58 CLR 689, Wellcome Foundation Ltd v. V.R. Laboratories (Aust) Pty Ltd, Adelmann and Ham Boiler Corporation v. Llanrwst Foundry Co (1928) 13 RPC 413 and Longbottom v. Shaw, cited above. These authorities were all apposite to the issue confronting his Honour and supported his Honour's conclusion. It is of interest that the device which was considered in the Acme Bedstead Co also involved a ratchet and pawl. As the High Court said:-
"If one wished to achieve a particular result, the means of doing so were obvious to persons skilled in the trade."
In that case, the conception, that of having a hospital bed which could easily be raised at one end, was held not to be inventive.
Likewise in the present case, it is difficult to see how it could have been inventive to consider that there were aspects of the operation of the Club device that could be improved. And as the effect of the evidence before the trial Judge was that the means adopted for improving the device would have been obvious to skilled persons, there remained no part for invention or inventive ingenuity to have played.
It seems to me that his Honour's conclusion was the correct one and well based on the evidence before him.
Mr Catterns criticised his Honour's reasons for judgment in that much of his Honour's discussion concentrated upon the patent specification and what it stated about the claimed invention or inventions and concerning the prior patents. Mr Catterns made the point that the question of obviousness is different from that of novelty and that the test of what is obvious depends on the common knowledge of persons skilled in the art, and generally not upon what is contained in patent specifications available in the Patents Office. See Minnesota Mining v. Beiersdorf, cited above.
Mr Catterns submitted, and I would agree, that it is not necessary for a patent specification to identify the inventive step, but is sufficient that the specification describe in a claim or a series of claims what is or are claimed to be the patentable subject matter. I accept also Mr Catterns' submission that the trial Judge discussed the prior art outlined in the specification without identifying whether or not that art was the subject of common general knowledge amongst persons skilled in the art.
Notwithstanding these submissions, however, I am satisfied that his Honour dealt with the matter having regard to the facts proven before him. The crux of his Honour's finding is set out in the following passages:-
"The fact that the Club lock has to be locked with a key is something which would be obvious to the user, as would the corollary that it would be convenient to be able to secure the lock without a key.
...
I note that the cross-respondents did not call any direct evidence as to invention nor evidence of a long-felt want: cf Longbottom v Shaw (1891) 8 RPC 333 at 336. In my opinion, the invention claimed is for a combination patent for an invention to achieve a known result by a combination of known means operating in a known manner. It is a mere collocation, without invention."
In these passages, his Honour had in mind the evidence that was given before him, though his Honour did not discuss it. This lack of discussion is understandable as the evidence would have appeared to his Honour to establish that the improvements made were obvious improvements to an obvious problem. It seems to me, as it must have seemed to his Honour, that the Club was an anti-theft device developed to the point where it was a useful device which still had some unnecessary inconveniences, so that the next step was to make an improvement to the design. The step taken did not involve inventive ingenuity.
In my opinion, the changes that occurred were no more an invention than were the knives which were considered in Matthey's Patent in the 16th century. And as Coke's Third Institute stated at p 184, in the passage I have set out above: "... if the substance was in esse before, and a new addition thereunto, though that addition make the former more profitable, yet is it not a new manufacture in law .... it (is) much easier to add than to invent."
NOVELTY
45. It was submitted that Mr J.J. Garnsey, QC, counsel for the respondent, that the trial Judge was wrong in failing to set aside the patent on the ground of novelty.
The 1952 Act provided:-
"100(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other ground: ...
(g) 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, was not novel in Australia on the priority date of that claim"
The 1990 Act provides:-
"18. (1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim: ...
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel
..."
and: "7. (1) For the purposes of this Act, an invention is to be
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:
(a) prior art information (other than that mentioned in paragraph (c) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph
(b) (ii) of the definition of 'prior art base' in Schedule 1."
The general principles with respect to novelty under the 1952 Act were enunciated by Lockhart, Jenkinson and Gummow JJ. in Nicaro Holdings Pty Ltd v. Martin Engineering Co (1990) 91 ALR 513. At 517, Lockhart J. said:-
"In revocation proceedings the prior publication must disclose all of the integers with the possible exception of the substitution of 'mechanical equivalents to perform analogous purposes': Sunbeam Corp v Morphy-Richards (Aust) Pty Ltd (1961) 35 ALJR 212 per Windeyer at 220; RD Werner and Co Inc v Bailey Aluminium Products Pty Ltd, supra; Dennison Manufacturing Co v. Monarch Marking Systems Inc (1983) 66 ALR 265 at 273, 274, 276 and 286. Although nothing turns on it in this case, I accept the correctness of the submission of counsel for the respondents that the term 'mechanical equivalents' is properly used in cases of want of novelty and the term 'workshop improvement' is essentially a term applicable to cases of obviousness: see Blanco White, Patents for Inventions, 5th ed, para 4.212 and Terrell, The Law of Patents, 13th ed, para 5.108; cf Terrell, para 6.52. The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is, however, permissible to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross-referencing system solely as a shorthand means of incorporating a writing disclosing the invention: George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 37 AOJP 2513 at 2516; Blanco White, 5th ed, at para 4.107 and Gratwick, 'Having Regard to What was Known and Used" (1972) 88 LQR 341 at 343."
Gummow J., with whom Jenkinson J. agreed, examined the matter in depth at 532-8.
Mr Garnsey relied upon a number of prior patents of which particulars were given in amended particulars of objection dated 23 April 1992. However, none of the prior patents of itself disclosed all the integers of the claimed invention. As this aspect is clear, I need not discuss it.
Mr Garnsey submitted that a mosaic could be made of the patent Winner US 4 738 127 and the patent Moore US 3 462 982. However, to do so would conflict with the principles enunciated in Nicaro Holdings Pty Ltd v. Martin Engineering Co and with the principle specified in s.7(1) of the 1992 Act. These two patents are not a single source of information nor do they incorporate each other by reference.
Mr Garnsey submitted that a cross reference was made by the subject complete specification which discussed both patents. But that specification discussed them separately, not as a single source of information and the specification itself was, of course, not part of the prior art base.
It was submitted by Mr Garnsey that the Winner US 4 738 127 patent had noted on it as a citation the Zaidener US 3 664 163 patent. The citation was said by Mr Garnsey to be a cross-reference requiring the two patents to be read together. But this is not so. Such a citation is a note made by the Patents Office of a matter which may affect the validity of the patent or of one or more of its claims. The citation does not operate as a shorthand means of cross-referencing the one patent to the other intending them to be read together as a single source. No such inference can be drawn.
Accordingly, the objection on the ground of novelty must fail.
MISREPRESENTATION
52. It is alleged that the patent was granted on false suggestion or misrepresentation. The 1952 Act provides:-
"100(1) A standard patent may be revoked, either wholly or in so far as it relates to any claim of the complete specification, and a petty patent may be revoked, on one or more of the following grounds, but on no other ground: ...
(k) that the patent was obtained on a false suggestion or representation"
The 1990 Act provides:-
"138(3) After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:
...
(d) that the patent was obtained by fraud, false suggestion or misrepresentation."
The false suggestion or misrepresentation alleged is that, by lodging the convention application under Part XVI of the 1952 Act, the appellants represented that they were entitled to a patent in the United States for the invention as described and claimed in the complete specification in the application for Winner U.S. 4 953 047, which corresponded with the Australian application. It is alleged and not contradicted that:-
"The Applicant did not bring to the attention of the Commissioner of Patents the prosecution of and the results of the examination of the corresponding Patent EJH 2
(AB1/228)."
Mr Garnsey submitted that the application for the patent in the United States misrepresented the state of the prior art and the allowable scope in the United States of the invention for the patent.
However, the application lodged in Australia complied with the requirements of Pt XVI of the 1952 Act and was processed in accordance with Australian law. It may be accepted that the claims originally made in the U.S. were narrowed before the acceptance and grant of a patent. Nevertheless, the processing of the application in Australia was in no way dependent upon what occurred in the United States. Once the convention application was lodged in Australia, its fate depended on the prior art, the common general knowledge and the law in Australia. None of these factors were the same or interdependent with the position in the United States. The effect of the Pt XVI application was merely that the priority date was determined by reference to the date of the application in the United States.
Correlation between the application in Australia and the application in the United States was not required save that s.141(1) of the 1952 Act required the claims made in the Australian application to be "fairly based on matter disclosed in the basic application". It has not been suggested that they were not. I see no element of misrepresentation so far as the Australian application was concerned.
I have not examined the individual items of material which Mr Garnsey described as being relevant to the application in the United States but as not disclosed to the Australian Patents Office. The material was not relied upon in relation to obviousness or novelty. It does not appear to have any other relevance in the Australian context.
The points raised in the notice of contention should therefore be rejected.
ORDER
58. The appeal should be dismissed. In my opinion, the appellant should pay the costs of the appeal.
JUDGE2
MORLING J: I have had the benefit of reading the reasons for judgment prepared by Davies J. I agree with them and with the orders he proposes.
JUDGE3
COOPER J. On 6 August, 1992 Heerey J., in the respondent's cross-claim for revocation of Australian Patent 599863, declared that the patent was, and had always been, invalid and ordered that the patent be wholly revoked. The ground upon which his Honour made the declaration and revocation order was that the alleged invention, the subject of the claims in the patent, was not a patentable invention. His Honour found that the invention claimed in the patent did not involve an inventive step as was required by section 18(1)(b)(ii) of the Patents Act 1990 ("the 1990 Act") and thus was not a patentable invention under that Act. His Honour found that :-
"...the invention claimed is for a combination patent for an invention to achieve a known result by a combination of known means operating in a known manner. It is a mere collocation, without invention".
His Honour rejected the contention of the cross-claimant that the patent in suit lacked novelty and the further contentions that the patent had been obtained by misrepresentation and was not fairly based.
The appellant appeals against the declaration and orders made. The respondent appears in support of the judgment and, in addition to arguing the correctness of his Honour's finding as to no inventive step, by notice of contention seeks to maintain the judgment on the basis of the contentions rejected by Heerey J. at first instance.
The appellant was granted the patent in suit under the Patents Act 1952 ("the 1952 Act"). The application for the patent was a Convention application. The priority date of the patent was 20 December, 1988.
By section 233(1) of the 1990 Act, standard patents and petty patents granted under the 1952 Act were subject to the provisions of the 1990 Act as if the patent had been granted under that Act. However, by section 233(4) of the 1990 Act, no objection to validity could be taken on a ground that would not have been available under the 1952 Act.
The grounds for revocation contained in the 1990 Act are set out in section 138(3) which relevantly provides :-
"Grounds of revocation After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following
grounds, but on no other ground:
"....
(b) that the invention is not a patentable invention;
....
(d) that the patent was obtained by fraud, false suggestion or misrepresentation; ...."
The requirements for a patentable invention under the 1990 Act are contained in section 18, which provides :-
"18(1) Subject to subsection (2), a
patentable invention is an invention that, so far as claimed in any claim :
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim :
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d) was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee's or nominated person's
predecessor in title to the invention. 18(2) Human beings, and the biological processes for their generation, are not patentable
inventions".
An "inventive step" is defined in section 7 of the 1990 Act which relevantly provides :-
"7(2) Inventive step For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with 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 as it existed in the patent area before the
priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
7(3) Information For the purposes of
subsection (2), the kinds of information are :-
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be
reasonably expected to have ascertained,
understood and regarded as relevant to work in the relevant art in the patent area".
An invention for the purposes of the 1952 Act was defined by section 6 of that Act as :-
"'invention' means any manner of new manufacture the subject of letters patent and grant of privilege within section six of the Statute of Monopolies, and includes an alleged invention."
The grounds upon which a patent could be revoked under the 1952 Act were contained in section 100 which provided, so far as is presently relevant :-
"100(1) A patent may be revoked, either
wholly or in so far as it relates to any claim of the complete specification, on one or more of the following grounds, but on no other ground :- .....
(d) that the invention, so far as claimed in any claim, is not an invention within the meaning of this Act;
(e) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim; .....
(g) that the invention, so far as claimed in any claim, was not novel in Australia on the priority date of that claim;
.....
(j) that the patent was obtained on a false suggestion or representation;
....."
Insofar as the question of obviousness is concerned, under section 100(1)(e) of the 1952 Act, prior art information as defined in the 1990 Act was not to be considered unless that information was shown to have been part of the common general knowledge as it existed in Australia on or before the priority date to a person skilled in the relevant art (see Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Ltd. (1976-1977) 144 CLR 253 at 294-295). Thus, any additional information which might by the operation of section 7(3) of the 1990 Act be relevant to the issue, is for the purposes of this case excluded from consideration by the operation of section 233(4) of the 1990 Act.
It was submitted on behalf of the appellant that the standard of inventive steps required by section 18(1)(b)(ii) of the 1990 Act was lower than that applied by Heerey J., and by this Court in recent judgments. It was submitted that the statutory requirement for the existence of an inventive step was a recognition of an idea judicially developed in the second half of the nineteenth century almost as a de minimus limitation on patents otherwise new. Accordingly, it was submitted section 18(1)(b)(ii) ought to be interpreted, and the standard of inventiveness, set to give effect to such a limited purpose.
In support of his submissions, Counsel referred the Court to the discussion in H.G. Fox on Monopolies and Patents (1947) at pp 214 - 233, and the observation of Aickin J. (with whom Gibb A.C.J., Stephen, Mason and Wilson JJ. agreed) in Wellcome Foundation Limited v. V.R. Laboratories (Aust.) Proprietary Limited (1980 - 1981) 148 CLR 262. Aickin J. said (at 272) :-
"Crane v. Price was not concerned with the issue of obviousness, a conception which did not emerge until later in the nineteenth century; see the discussion in H.G. Fox on Monopolies and Patents (1947), pp 214 - 243, where the
development is traced. It was however well established by the end of that century
notwithstanding protests by some judges; see for example Lord Esher M.R. in Edison Bell Phonograph Corporation Ltd. v. Smith (1894) 11 RPC 389, at p 398. The objection of
obviousness has however had a statutory basis in the United Kingdom since the Patents Act 1932 and in Australia since the Patents Act 1952".
Fox in his work bases his thesis on the premise that the word "inventor" in section 6 of the Statute of Monopolies (21 Jac 1 C3) (1624) meant, as a matter of common understanding and usage, no more than "discover" and that the concept of "invention" as then understood was that of mere "discovery" void of any element of inventive ingenuity on the part of the discoverer. Fox summarised his thesis (at 227) :-
"It is, therefore, suggested that, at the time of the Statute of Monopolies, the word
"inventor" was used as synonymous with
"discoverer" or "the first finder-out". The submission now made, and which we shall proceed to discuss, is that there is no justification in the terms of the Statute of Monopolies for the presence of the ingredient of invention or subject matter, as it is used in the modern sense, in a patent in order to make it valid. The Statute of Monopolies made only two
amendments to the common law - the one relating to the trial of disputes concerning patents by the courts of common law, and the other setting the term at fourteen years. The consideration for the grant remained unchanged. At common law there was required as consideration the
introduction of a new manufacture; the true and first inventor meant, at common law, not only the first person who discovered a new process but also a person who brought into England a process or machine not previously worked in England. In these requirements the statute made no change: they remained as before. The present requirement of inventive ingenuity is simply a refinement which has been added to the patent law by the courts as the history of patent litigation has developed. There is no justification in the Statute itself and there is no justification in the meaning of the word as it was used at the time of the Statute. Thus, as late as 1778, we have Lord Mansfield using the following expression: "Inventions are of various kinds; some depend on the result of figuring, others on mechanism, etc.; others depend on no reason, no theory but a lucky discovery; water tabbies were discovered by a man spitting on the floor".
Whether or not the thesis is correct, and the observations in Wellcome Foundation would support the view that it is correct (but see the observations of Lockhardt J. in R.D. Werner and Co. Inc. v. Bailey Aluminium Products Pty. Ltd. (1989) 25 FCR 565 at 571 - 572), the requirement of an inventive step is now, and has been for many years, part of the statute law governing the grant of patents. Nor, in my view, is the meaning and nature of the word "invention" where it appears in the 1952 Act and the 1990 Act, nor the meaning and magnitude of the inventive step required by the statutes, to be found by ascertaining the meaning and usage of the terms at the time the Statute of Monopolies was passed. Such an approach was rejected by the High Court (Dixon C.J., Kitto and Windeyer JJ.) in National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252 at 269 :-
"It is of the first importance to remember always that the Patents Act 1952 - 1955 (Cth), like its predecessor the Patents Act 1903 (Cth) and corresponding statutes of the United Kingdom (see the Patents, Designs and Trade Marks Act
(1883), s. 46; the Patents Act 1907, s. 93; and the Patents Act 1949, s. 101), defines the word "invention", not by direct explication and in the language of its own day, nor yet by carrying forward the usage of the period in which the Statute of Monopolies was passed, but by reference to the established ambit of s.6 of that Statute. The inquiry which the definition demands is an inquiry into the scope of the permissible subject matter of letters patent and grants of privilege protected by the section. It is an inquiry not into the meaning of a word so much as into the breadth of the concept which the law has developed by its consideration of the text and purpose of the Statute of
Monopolies. One may remark that although the Statute spoke of the inventor it nowhere spoke of the invention; all that is nowadays
understood by the latter word as used in patent law it comprehended in "new manufactures". The word "manufacture" finds a place in the present Act, not as a word intended to reduce a question of patentability to a question of verbal
interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: "Is this a manner (or kind) of manufacture?" It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because "manufacture" as a word of everyday speech generally conveys that idea. The right question is: "is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of
Monopolies?"
One of the principles which has developed for the application of section 6 of the Statute of Monopolies is that a patentable invention must involve the taking of an inventive step which involves the exercise of the inventive faculty. (See R.D. Werner and Co. Inc. v. Bailey Aluminium Products at 573-575; Allsop Inc. v. Bintang Ltd. (1989) 15 IPR 686 at 701; and the cases there cited).
What is common to all the cases since the late nineteenth century is that the claimed invention must not be obvious to a person skilled but uninventive in the patent because "obviousness denies the presence of any inventive step whatever" (Martin and Biro Swan Ltd. v. Millwood Ltd. (1954) RPC 458 at 466).
The concept of what is required to constitute an inventive step has been stated a number of ways. In Vickers Sons and Co. v. Siddell (1890) 15 App Cas 496 at 501 - 502, Lord Hershell posed the question:-
"Whether (the invention) was so obvious that it would at once occur to anyone acquainted with the subject and desirous of accomplishing the end, or whether it required some invention to devise it".
In Blakey and Co. v. Latham and Co. (1889) 6 RPC 184 at 189, Lopez L.J. also posed the requirement in a series of questions :-
"The objection is old, but it is said the means by which the object is to be effected are new. Is there such an exercise of skill and
ingenuity, or such discovery in the new means, as to entitle the Patentee to the protection of a patent? Is there such an addition to the stock of human knowledge as to entitle the Patentee to a monopoly? It is impossible to lay down an abstract definition of what is or not the subject-matter of a patent - to fix what degree of invention or discovery will entitle a Patentee to a monopoly. Each case must depend so much on its own peculiar circumstances. A discovery may be new and useful, and yet there may be no invention in it. The material
question to be considered in a case like this is, whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject: it must not be the obvious or natural suggestion of what was previously known."
In Wellcome Foundation (at 286) Aickin J. observed:-
"What is important is that the patent itself should involve an inventive step, whether or not it was consciously taken by the patentee and whether or not it appeared obvious to the patentee himself. The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not".
The degree of inventiveness required to satisfy the principle is a separate matter. The question raised by Lopez L.J. in Blakey and Co. v. Latham and Co.: Is there such an addition to the stock of human knowledge as to entitle the patentee to a monopoly? gives some guidance to the degree required. This is so because the underlying rationale of the Statute of Monopolies was that the consideration given by the patentee, by adding the invention to the wealth of public knowledge, justified the granting of a monopoly for a limited period to protect the patentee's exclusive commercial exploitation of the invention. Once the patent expired the invention could be exploited by the public generally for the betterment of society as a whole. Monopoly rights are not given for "discovery" which lies on the track of what is already known or so close to it that the discovery would naturally occur to a person thinking on the subject (Penn v. Bibby (1866) LR 2 Ch App 127 at 136).
The degree of invention may be small and has been described as a "scintilla" (Meyers Taylor Pty Ltd. v. Vicarr Industries Ltd. (1976 - 77) 137 CLR 228 at 249; Samuel Parkes and Co. Ltd. v. Cocker Bros. Ltd. (1929) 46 RPC 241 at 248, 250; Wellcome Foundation at 280). The required degree of inventiveness also has been described as "slight" (Harwood v. Great Northern Railway Co. (1865) 11 HLC 654; "little" (Thomson v. American Braided Wire Co. (1889) 6 RPC 518 at 527); "quite small" (Allsop Inc. v. Bintang Ltd. at 701) and a "very slight advance" (Killick v. Pye Ltd. (1958) RPC 366 at 377).
The gravamen of the investigation by the courts of inventiveness is that the court must come to a conclusion it exists as a fact before there can be a finding that a patentable invention exists. Whether or not the claimed invention involves an inventive step is ascertained on an objective basis (Allsop Inc. v. Bintang Ltd. at 701; General Tyre and Rubber Company at 498; Wellcome Foundation at 280). Because the test is objective it is irrelevant whether the invention was a matter of chance or luck or the result of long experiment or great intellectual effort (Wellcome Foundation at 279; Surface Silos Ltd. v. Beal (1960) RPC 154 at 161). Nor does it matter that the person thought that he or she had made an invention if all that had occurred was that he or she had merely worked out independently what others already knew (British United Shoe Machinery Company Ltd. v. A. Fussell and Sons Ltd. (1908) 25 RPC 631 at 652). Likewise, the fact that an invention is simple, and may have been obvious to the inventor, will not prevent the invention having the requisite degree of invention if when viewed objectively the invention was not obvious to a skilled but uninventive person knowledgeable in the art.
The question is not whether the invention claimed is de minimus and as such not to be treated as either an invention, in fact, or, as a patentable invention. Rather the question is whether the subject matter sought to be patented was beyond the skill of the calling at the priority date (Allsop Inc. v. Bintang Ltd. at 701 citing with approval Graham v. John Deere Co. (1966) 383 US 1 at 15 (footnote)). If the answer to the question is "yes" and the subject matter was the product of the exercise of the inventive faculty of the inventor, then there will be a patentable invention even though the inventive step forward from the common knowledge of the calling is small.
In order to ascertain whether or not the subject matter sought to be patented was beyond the skill of the calling, the courts have adopted a number of different approaches directed to the same end: for example, was the invention obvious or not?; does the invention solve an important problem "unsuccessfully attacked by previous inventions"? (Wood v. Gowshall (1937) 54 RPC 37 at 39).
Notwithstanding that the inventive step may lie in the choice and management of integers in a combination patent (Wellcome Foundation at 281), where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step "unless the combination is substantially a new thing" (May v. Higgins (1916) 21 CLR 119 at 121; see also Sami S. Svendsen Inc. v. Independent Products Canada Ltd. (1968) 119 CLR 156 at 164-165).
In Acme Bedstead Co. Ltd. v. Newlands Brothers Ltd. (1937) 58 CLR 689 the patent in suit concerned a claim for a hospital bed which allowed for one end of the bed to be raised to facilitate movement of the bed. The elevating means consisted of a hollow member with a telescopic post mounted in it. A pawl and ratchet device was used for raising or lowering the post thus elevating and lowering the bed. The patent in suit differed from an earlier patent of the same patentee by substituting the ratchet and pawl mechanism for a previous mechanism involving the insertion of bolts through aligned holes in the hollow member and inner post. The High Court (Latham C.J., Starke and Dixon JJ.) found that there was no inventive step in the combination of integers. In the course of his judgment Latham C.J. said (at 700) :-
"The evidence shows that the plaintiff's bed possessed new features as compared with all known previous beds. The ratchet and pawl device had not previously been actually
incorporated in a bed nor had a rectangular or other non-rotatable telescopic member been used in a bed for the purpose for which it was used in the plaintiff's bed. It is not disputed that a ratchet and pawl is an old device for
procuring freedom of movement in one direction and arrest of movement in the opposite
direction. A common form of lifting jack and many other mechanical devices embody this feature. The other distinctive feature, the non-rotatable member, whether in rectangular or other form, is shown by the evidence to be a device which would readily suggest itself to the mind of a competent workman if he was asked to prevent a telescopic member from rotating within another member.
The evidence also shows that hospital
authorities had desired to obtain a bed with the features of the plaintiff's bed, namely,
possibility of elevation of one end to a desired height, and safety and mobility of such a bed. The plaintiff's bed is plainly a good and effective article. But it is necessary for the plaintiff to show that an inventive step was involved in designing the bed. He has combined together well-known mechanical integers and has used each of them for its natural and well-known purpose. I agree with the Full Court that there is no inventive ingenuity in using a rectangular or other non-rotatable leg instead of a round leg or in using a ratchet and pawl for a purpose for which a ratchet and pawl has always been used. The plaintiff has simply applied well- known things to an article to which they had not formerly been applied".
The Chief Justice in Acme Bedstead Co. (at 701) cited with approval the statement in Adelmann and Ham Boiler Corporation v. Llanrwst Foundry Co. (1928) 45 RPC 413 at 420 :-
"The alleged invention, though possessing the advantages of being an excellent design, is simply the application of a well known and well understood piece of mechanism to achieve an obvious advantage, and is not the proper subject of letters patent".
as support for the proposition :-
"If a competent workman, seeing either a given specification or an article in actual use, could, upon a defect being pointed out, devise, without the exercise of any inventive ingenuity, a means of overcoming the defect, there would not be invention in the result which he so achieved".
I do not consider that it is part of the ratio of the decision in Acme Bedstead Co., as was submitted by Counsel for the appellant, that the defect must be one which is pointed out to the hypothetical competent workman before the test of obviousness is to be applied. In my view it is sufficient if the workman or the user of the article would as a matter of observation and use himself or herself recognise the defect which it is alleged the invention overcomes to call in question the issue of obviousness.
I have had the opportunity to read the draft reasons of my brother Davies J. where his Honour sets out the evidence before the trial judge. I agree with his Honour, for the reasons that he gives, that the perceived deficiency in the Club lock, which was sold and used in Australia prior to 20 December, 1988, was the inconvenience in having to use a key to adjust the moveable shaft upon installation and removal of the lock from the steering wheel of a car. Likewise, I agree that the desirable improvement to overcome the deficiency was to add to the existing product an automatic means of adjustment of the shaft upon installation. The problem and the solution were readily apparent to a person skilled in the patent area. Mr Square, the locksmith, was such a person and had knowledge of the Club lock and sales of it in retail outlets in Australia prior to 20 December, 1988.
Heerey J. was entitled to rely upon the evidence of Mr Squire irrespective of whether the disclosures in the patent in suit, under the heading "Background of Invention", of the practical disadvantages of the known device (the Club) constituted admissions of obvious problems as found by his Honour or, whether the disclosures were merely descriptive of the identification of the problem by the patentee which identification, together with the solution, constituted the inventive step as contended by the appellant.
On the evidence, it was open to Heery J. to conclude that the means adopted to improve operation of the existing device to enable automatic adjustment of the shaft during installation without the use of a key was obvious to persons skilled in the patent area. His Honour's reference to and use of, the decisions in Acme Bedstead and Adelmann and Ham Boiler Corporation disclose no error in principle. Nor did his Honour purport to apply a greater degree of invention than required by the authorities to which I have referred earlier in these reasons.
I agree with my brother Davies J. for the reasons that he has given that the respondent fails to make out the grounds of lack of novelty, misrepresentation and lack of fair basing raised by the respondent's notice of contention.
I agree that the appeal should be dismissed and that the appellant should pay the costs of the appeal.
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