Case: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239
Outcome: applied
In these circumstances, the transitional provisions in s 234 of the 1990 Act apply. Section 234(2) and (5) provide: '(2) Where, before the commencing day: (a) a patent application had been lodged under the 1952 Act; and (b) a complete specification, or a petty patent specification, had been lodged under that Act in respect of the application; and (c) the application had not been withdrawn or finally dealt with; then, subject to this Chapter and the regulations, this Act applies on and after that day: (d) in relation to the application as if it were a complete application made under this Act; and (e) in relation to the petty patent specification as if it were a complete specification filed under this Act in respect of the application. ... (5) Objection cannot be taken to: (a) an application mentioned in subsection (2); or (b) a patent granted on such an application; 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 application or patent, as the case may be, under the 1952 Act.' The effect of these provisions is that the Enantiomer Patent can only be revoked under the 1990 Act on a ground of invalidity that would also have been available under the 1952 Act. Where the relevant ground of invalidity under the 1952 Act is narrower than the corresponding ground under the 1990 Act, the patentee has the benefit of the narrower ground. Thus, an applicant for a patent under the 1952 Act is not to be worse off than if the 1952 Act had continued to operate: NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-254 per Lockhart J; and ICI Chemicals &amp; Polymers Ltd v The Lubrizol Corporation Inc [2000] FCA 1349 ; (2000) 106 FCR 214 at 224 [23] per Lee, Heerey and Lehane JJ. 176 In Philips , the patent in question was granted under the 1952 Act. However, the proceedings were commenced on 5 July 1991, after the commencement of the 1990 Act, and sought revocation of the patent under s 138 of the 1990 Act. In those circumstances, s 233 of the 1990 Act operated in much the same way as s 234 operates in the present case. Section 233(1) provides that the 1990 Act applies to a standard patent granted under the 1952 Act as if the patent had been granted under the 1990 Act. Section 233(4) provides that objection cannot be taken to such a patent, 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. As Lockhart J explained in the Full Court, this meant that the elements of each ground of revocation under the 1990 Act applied only to the extent that they replicated in substance the elements that previously constituted a ground of revocation under the 1952 Act: (1993) 44 FCR 239 at 253-254 per Lockhart J, and also at 268 per Burchett J. 177 Another similarity between Philips and the present case is that the respondent, Mirabella, abandoned the ground of obviousness but persisted with the argument that the subject of the patent was not an invention amounting to a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. At trial, Hill J held that the 1990 Act required that the subject matter of a patent be an invention as defined by that Act, that is to say it must be a manner of new manufacture within the meaning of s 6 of the Statute of Monopolies, and that this requirement did not differ in substance from that pertaining under the 1952 Act. His Honour found that the invention lacked inventiveness on the basis that it was no more than a use of a selection of known phosphors, in known compact fluorescent globes, being a purpose for which the known properties of the phosphors indicated suitability. All of this information was apparent on the face of the specification. Accordingly, the trial judge made an order revoking the patent under s 138(3)(b) of the 1990 Act. 178 The Full Federal Court reached the same conclusion. Lockhart J (with whom Northrop J agreed) said that the combination of s 18(1)(a) of the 1990 Act and Sch 1 thereto continued in force the notion of 'manner of new manufacture' present in s 100(1)(d) of the 1952 Act: at 263. His Honour also said at 263 that 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. Although Burchett J reached a different conclusion on the facts, he also considered that the language of s 18, read in the light of the definition of invention, imposes a threshold test of patentability by reference to the expression 'manner of new manufacture'. The test requires that the subject matter of the patent must not fall outside the whole scope of what is known as an invention: at 269-270. 179 A majority of the High Court affirmed the Full Court's decision. In their joint majority judgment, Brennan, Deane and Toohey JJ said at 663-664: 'The effect of those opening words of s 18(1) is that the primary or threshold requirement of a "patentable invention" is that it be an "invention". Read in the context of s 18(1) as a whole and the definition of "invention" in the Dictionary in Sch 1, that clearly means "an alleged invention", that is to say, an "alleged" "manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies". In the light of what has been said above about what is involved in an alleged manner of new manufacture, that threshold requirement of "an alleged invention" will, notwithstanding an assertion of "newness", remain unsatisfied if it is apparent on the face of the relevant specification that the subject matter of the claim is, by reason of absence of the necessary quality of inventiveness, not a manner of new manufacture for the purposes of the Statute of Monopolies. That does not mean that the threshold requirement of "an alleged invention" corresponds with or renders otiose the more specific requirements of novelty and inventive step (when compared with the prior art base) contained in s 18(1)(b). It simply means that, if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further.' In reaching this conclusion, their Honours expressly rejected Philips' argument that s 18(1)(b) was exclusive and exhaustive insofar as inventiveness is concerned and that, as a result, there was no scope to raise an argument under s 18(1)(a) or any other part of s 18(1) that the subject matter of the claim as identified in the specification lacks the quality of inventiveness required by s 6 of the Statute of Monopolies. More particularly, they rejected Philips' argument that, aside from s 18(1)(b), there was no scope to argue that a claimed use is 'nothing but ... a new use of an old substance' so that it falls outside the whole scope of what is known as an invention: at 663. 180 Although it was strictly unnecessary for their decision, Brennan, Deane and Toohey JJ also said that they would reach the same conclusion under s 18(1)(a). In their view, the preferable construction of s 18(1)(a) is that the phrase 'manner of manufacture' within the meaning of s 6 of the Statute of Monopolies should be understood as referring to a process which is a proper subject matter of letters patent according to traditional principle: at 667. The Court endorsed the factual conclusion reached by the trial judge and the Full Court that the relevant process was no more than a new use of a particular known product. It therefore followed that the claimed invention was not a manner of manufacture for the purposes of s 18(1)(a) and consequently not a 'patentable invention': at 668. 369 These provisions are directed to the question whether the invention enables the addressee to attain the result promised by the patentee in the patent specification: see Rehm Pty Ltd v Webster's Security Systems (International) Pty Ltd (1981) 81 ALR 79 ( 'Rehm' ) at 96; NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267 per Lockhart J; Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 ( 'Old Digger' ) at [216]; Wrigley at [134]-[141]. Want of utility in this sense is different from want of utility in the broader commercial sense that the invention is useless for any purpose whatsoever: see Alsop's Patent (1907) 24 RPC 733 at 752; and Lane-Fox v Kensington &amp; Knightsbridge Electric Lighting Co Ltd [1892] 3 Ch 424 at 431.