Case: N.V. Philips Gloeilampenfabrieken v Mirabella International Pty limited [1995] HCA 15 ; (1995) 183 CLR 655
Outcome: followed
N.V. Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1995] HCA 15 ; (1995) 183 CLR 655 ( Philips ), the High Court (Brennan, Deane, and Toohey JJ with Dawson and McHugh JJ dissenting) held that the primary or threshold requirement of a patentable invention under s 18(1) of the Act was that it should be an alleged invention, meaning an alleged manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statue of Monopolies 1623 (Imp). In the majority judgment at 663-6: The primary focus of inquiry should, as we have indicated, be upon the opening words ("... a patentable invention is an invention that ...") of that sub-section which impose a threshold requirement which must be satisfied before one reaches that contained in the body of par (a). 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... [W] hat 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. ... The High Court in Philips dismissed an appeal from a majority of the Full Federal Court that the subject matter of the patent in suit as disclosed by the specification when read as a whole, was merely a new use of a particular known product. The respondents' cross-claim that the applicant's Patent is invalid on the grounds that it is not a patentable invention or a manner of manufacture with the meaning of s 18(1) of the Act is framed as follows: Not a patentable invention (section 181(1)) The alleged invention so far as claimed in each claim of the Patent is not a patentable invention within the meaning of the Act in that, so far as claimed in each and every claim, it does not satisfy the threshold requirement of 'an invention' and is not properly the subject of letters patent. Particulars (1) The Patent does not, on the face of the specification, disclose an invention. (2) The alleged invention amounts to no more than the incorporation of a 'guard member' to overlie a series of barrier elements for the purpose of guarding the barrier elements against collisions which the barrier elements are expected to incur in their usual operation. Mr Yates SC, counsel for the respondents, submitted that all that was claimed as the invention is, in fact, the use of a guard rail: All that's being provided is a guardrail to barriers for the purpose of protecting the barriers, including protecting the connection between barriers. So it is simply a guardrail for the barrier system, and that, we submit, is simply just another use of a known product for its known purpose, and for which its properties make it suitable.