03/05/14: Section 18(1) of Patents Act 1990 (Cth) a threshold test?

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Was Section 18(1) meant to be a threshold test for “new” and “inventive” as separate to method of manufacture?

Many would argue it clear that the intention of section 18(1) of the Patents Act 1990 (Cth) was that the two modern tenements of patentability, namely newness and inventiveness, be for the first time explicitly codified into Australian patent legislation, but not to also render them a separate threshold test.

The meaning of patentable subject matter defined as a ‘manner of new manufacture’ under the 1623 legislation Statute of Monopolies has, over centuries and many complex decisions, come to signify something no longer immediately apparent from the words themselves[1].  In Australia, this evolution culminated with the ‘watershed’ decision of NRDC v Commissioner of Patents[2] (‘the NRDC case’) which confirmed that manner of manufacture no longer meant ‘vendible products’[3], but rather that the invention ‘must…offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art’.[4] The elements of newness and inventiveness were thereafter separate.  This decision has been widely cited with approval.[5]

In keeping with the long history of teasing out elements from the manner of manufacture definition, the Australian legislature did the same under the Patents Act 1990 and finally codified newness and inventiveness as a requirement to patentability[6] rather than part of the ‘manner of manufacture’.  This intention is revealed by the wording of section 18(1)(a) itself which removed ‘new’ from ‘manner of new manufacture’ as used in previous patent legislation[7].  This was no oversight.  As illuminated in the explanatory memorandum for the Act itself (at paragraph 31):

The requirement in paragraph 18(1)(a) that an invention…must be a “manner of manufacture” invokes a long line of UK and Australian court decisions. It means little more than that an invention must belong to the useful arts rather than the fine arts.[8]

Somewhat regrettably, shortly after the legislation came into force the decision in Philips v Mirabella[9], in what some have called a ‘tortured construction’[10] of the meaning of ‘manner of manufacture’, resulted in two tests for ‘inventiveness’.  The main one, as outlined in section 18(1)(b) based on the prior art, but also a threshold test of inventiveness based on ‘manner of new manufacture’ and an on the face of the specification type test.  No surprise, then, that recent decisions have cast doubt on the applicability of Mirabella as authority for a threshold test.  In Lockwood Security Products Pty Ltd v Doric[11], the High Court recently commented that ‘the decision in Microcell has not always been properly understood; it does not involve a separate ground of invalidity or a discrete “threshold” test’[12].   However, this comment was obiter dicta, and there does remain some uncertainty as to whether the separate threshold test for newness and inventiveness still applies.

In summary, it seems likely that the legislature intended section 18(1) to give expression to Australian patent law principles, as laid down in NRMC, and to separate out the tests for ‘new’ and ‘inventive’ from the archaic and confusing ‘method of manufacture’ language.  The question is perhaps not whether the legislatures had the intention to separate them out, as in the writer’s view they clearly had, but rather, whether case law today as it stands has kept them separate.


[1] For example, the “generally inconvenient” initially was used to exclude subject matter that was analogous uses of a known thing, “manner of new manufacture” was for a significant time taken to include only purely physical products or processes that produce them (under Morton’s Rules).

[2] National Research Development Corp v Commissioner of Patents (1959) 102 CLR 252

[3] As per Morton’s Rules

[4] NRDC (1959) 102 CLR 252; 1A IPR 63 at CLR 275; IPR 74 (High Court of Australia).

[5] Even in other jurisdictions such as New Zealand where it was described as a “landmark decision” by the Court of Appeal (Wellcome Foundation Ltd v Commissioner of Patents [1983] NZLR 385 per Cooke J at 387).

[6] Even in 1990, Inventiveness was not a precondition to patent grant, other than as a precursory “on the face of it” test (as per NRDC).  Similarly, the element of “newness” was not yet separate from “manner of new manufacture” as reflected by the case law.

[7] Compare section 18(1)(a) of Patents Act 1990 (Cth) to the Definitions in Schedule 1 which includes the word “new” under the definition of an invention, as follows, “invention means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention.”  Compare to section 35(1) of Patents Act 1952 (Cth).

[8] Quoted text taken from High Court case of Mirabella.

[9] NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15; (1995) 183 CLR 655

[10] Dr Mark Summerfield, Patentology Blog, see:http://blog.patentology.com.au/2013/03/inventiveness-its-just-not-obvious.html

[11] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21

[12]Ibdid at [106]

May 3rd 2014 |

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