Case: Commissioner of Patents v Microcell Limited [1958] HCA 58 ; (1959) 102 CLR 232
Outcome: cited
In relation to manner of manufacture, the Full Court decisions in Bristol-Myers Squibb Company v FH Faulding [2000] FCA 316 ; (2000) 97 FCR 524 and Merck &amp; Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91 ; (2006) 154 FCR 31 establish that a party challenging the validity of a patent on this ground must demonstrate such invalidity by reference to matters that are apparent on the face of the specification, in light of the common general knowledge: see also Commissioner of Patents v Microcell Limited [1958] HCA 58 ; (1959) 102 CLR 232; NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited [1995] HCA 15 ; (1995) 183 CLR 655. Rockwool, relying upon these cases, said it should not be required to discover any documents solely on the ground that they are relevant to the manner of manufacture. 26 Philips [1995] HCA 15 ; 183 CLR 655 was considered by the Full Federal Court in Bristol-Myers [2000] FCA 316 ; 97 FCR 524, where Black CJ and Lehane J said the following in relation to the requirement that a patentable invention be a manner of new manufacture (at [19] and [30]): A "patentable invention" must be an "invention" as defined, and thus a "manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies " The primary judge held, following NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 ; (1995) 183 CLR 655, that the opening words of s 18(1) impose a threshold requirement of inventiveness: a requirement independent of the specific provisions of s 18(1)(b) as to novelty and an inventive step, judged by comparison with the prior art base as it existed before the priority date. His Honour held that the claimed invention... did not meet that threshold requirement. He held also that it did not involve an inventive step when compared with the prior art base. His Honour's conclusions were based upon two findings. One of them involved an application of the well known principle which denies patentability to a claimed invention which is "nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable": Commissioner of Patents v Microcell Ltd [1958] HCA 58 ; (1959) 102 CLR 232 at 251... The majority of the High Court in Philips explicitly say that their observations about a case where want of the threshold requirement of inventiveness is not apparent on the face of the specification are not necessary to their decision. And, in discussing the commencement point (what is "known") of the inquiry about inventiveness, their Honours refer only to the Microcell principle. In our view, in the light of the authorities to which we have referred, Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step... then the threshold requirement of inventiveness is not met. Some elaboration, however, is required in relation to what the specification reveals as "known". If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court or the Commissioner would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of "the common general knowledge as it existed in the patent area". In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips . If, however, the body of prior knowledge disclosed by the specification is insufficient to deprive what is claimed of the quality of inventiveness, then the only additional knowledge or information which will be taken into account is knowledge or information of a kind described in s 7(2) of the 1990 Act. That again, in our view, is consistent with the approach taken in Microcell.