PATENTSA GUIDESecond edition

BARRY FOX

Hybrid Publishers

Published by Hybrid Publishers

Melbourne Victoria Australia

© Barry Fox 2009

This publication is copyright. Apart from any use as permitted under the Copyright Act 1968, no part may be reproduced by any process without

prior written permission from the publisher. Requests and inquiries concerning reproduction should be addressed to the Publisher, Hybrid

Publishers, PO Box 52, Ormond, Victoria 3204, Australia.

www.hybridpublishers.com.auFirst published 2009

This publication is not intended to be and is not a complete or definitive statement of the law on the relevant subject matter. It is sold with the

understanding that the author and publisher are not engaged in rendering legal advice. No person should take any action or refrain from taking

any action in reliance upon the contents of the publication without first obtaining advice from a competent practitioner. The authors and the

publisher and each of them expressly disclaim liability for any loss or damage suffered by any person arising out of any errors or omissions in this publication or any reliance in part or in full upon the contents of this

publication.

National Library of Australia Cataloguing-in-Publication data: Author: Fox, Barry

Title: Patents / Barry Fox.Edition: 2nd ed.

ISBN: 9781876462710 (pbk.)Notes: Includes index.

Subjects: Patent laws and legislation – Australia. Patents – Australia – Handbooks, manuals, etc.

Dewey Number: 346.940486

Printed in Australia by Corporate Printers

To Andrew Knox and to Ginger

“Nothing is more common in intellectual pursuits than for men

to sell beforehand the future intellectual product before it is

made or even conceived”

Printing and Numerical Registering Company v Sampson(1875) LR 129Eq 462 at 465 per

Sir George Jessel MR

v

PREFACE

I have maintained the same format in this second edition as in the first, simply stating in short paragraph form the proposition for which the cited cases are authority or

illustrate and leave the reader to go to the cases and appreciate the circumstances which have given rise to the questions which in turn have resulted in the authority for which they stand. I have tried to so arrange the statements of principle so that the relevant aspects of the law on each topic follow in logical order, so making the topic to which they relate easily understood. I hope I have succeeded. However, complete understanding and insight can only be gained by careful perusal of the reported cases in which the circumstances which gave rise to them are set out.

The steady evolution of the patent law has continued apace since the first edition with the inevitable consequence that this edition is more expansive.

Of the many important cases decided since the first edition, the High Court has decided Alphapharm and twice pronounced upon Lockwood v Doric.

Alphapharm settled the question whether long and continuous experiments involving extensive trial and error was an answer to the allegation of obviousness.

Lockwood v Doric was more complicated. Almost every issue that can reasonably be raised, was: common general knowledge, the significance of admissions made in specifications, the construction of claims, the prior art, the use that may be made of the consistory clause to satisfy the requirement for fair basing and, one is tempted to say, “many more”.

Lockwood v Doric expounded and clarified the law in relation to the vexed issue of fair basing, a deceptively simple concept, easier to state in principle than apply in practice, although it really means no more than logical connection. It also expounded and clarified the law about what constitutes prior art for the purpose of determining common general knowledge, determination made difficult by complicated association between s 40, s 7(3), and Schedule 1 of the Act and, about using the content of the consistory clause to satisfy the requirement for fair basing.

In consequence I have expanded the reference to the consistory clause in Part 2 and common general knowledge in Part 6.4.2.

The content of the concept of obviousness continues to be the subject of judicial exegesis and it shows no signs of abating. The increase in the number and sophistica-tion of biological and complicated chemical and biochemical patents will see to that. It reflects a new era of industrial and technological advancement. Eli Lilly v Pfizer and Alphapharm are just two of the most well known recent cases which reflect this time-honoured defence in its twenty-first century setting.

vi PATENTS: A GUIDE

The perennial problem of determining what constitutes infringement and the continuing debate over the “pith and substance” test as against the substantive infringement test received consideration in the series of cases Sachter v RE Miller, Synthetic Turf v Sports Technology, Fresenius v Gambro, and KD Kanopy Australia v Insta Image.

Just who is an inventor is another perennial question easy to ask but not always so easy to answer and of course always liable to arise where the prospect of monopoly profits appears. It came before the court again in Colleg v Merck & Co, Mackay v Mackay and Merck & Co v Sherman; so, I have expanded Part 1.4.

As for the procedural aspects of the patent law, I have added a section dealing with the principles relating to the giving of undertakings, Part 9.3. Undertakings are important; they are an integral part of any application for an injunction and are invariably, or almost invariably, required when an injunction is sought. Their implications may be far-reaching therefore they need to be carefully considered by both parties, whether applicant or respondent.

What constitutes expert evidence and its admissibility has been the subject of consideration in a number of cases: Pfizer v Eli Lilly, Clorox, Nutrasweet v Ajinomoto, EI DuPont v ICI, Kirin Amgen v Trans Kariotic, Synthetic Turf v Sports Technology and Lockwood v Doric.

The influence of multinational corporations and international trade (globalisation) continues to insinuate itself in various areas of the patent law, more especially common general knowledge, the admissibility of evidence from overseas witnesses who have or have had little or no contact with Australia, and the reliance to be placed on overseas authorities. This increasing influence manifested itself in a number of cases: Eli Lily v Pfizer Overseas, Nutrasweet v Ajinomoto and Gambro v Fresenius.

Finally, it is to be noticed that a new trend has begun to emerge: because the expertise offered by the Patent Office enables it to decide relevant questions appropriately, thereby avoiding the time and expense of legal proceedings resort to it for the re-examination of patents has increased, so, the number of reported re-examination cases has increased. There is no reason to think that this will not continue.

I have tried to state the law as it is at 1 August 2008. I accept all the usual responsibility attributed to authors.

BF1 August 2008Owen Dixon Chambers Melbourne

vii

CONTENTSPREFACE v

PART ONE PRELIMINARY 1

PART TWO THE PROCEDURE TO OBTAIN A PATENT 21

PART THREE THE REQUIREMENTS OF A PATENT:

PATENTABILITY 53

PART FOUR COMBINATION PATENTS 87

PART FIVE THE CONSTRUCTION OF PATENT

SPECIFICATIONS AND CLAIMS 95

PART SIX CHALLENGES TO THE VALIDITY OF PATENTS 119

PART SEVEN INFRINGEMENT 179

PART EIGHT DEFENCES TO ACTIONS FOR INFRINGEMENT 197

PART NINE REMEDIES 199

PART TEN LEGAL PROCEEDINGS 213

TABLE OF CASES 239

TABLE OF STATUTES, REGULATIONS AND TREATIES 261

INDEX 269

1

PART ONE1. PRELIMINARY

1.1 JURISPRUDENCE

1.1.1 Patents are: • created exclusively by statute • choses in action: being personal property and rights in personam

capable of assignment and devolution by law [ss 13 & 14] • monopoly rights granted by statute to inventors for inventions – they

are the grant of an exclusive power • rights treated as property; and are called “the owner’s property” • granted for the invention of new ways making things or new ways of

doing things or new processes, including the treatment of the human body

• granted to exploit an invention for economic gain for a limited period of time at the end of which the invention becomes available for the use and exploitation by the public at large.

1.1.2 The letters patent granted by the Commissioner of Patents pursuant to the Patents Act 1990 (Cth):

• are granted to the true owner and first inventor (the patentee) for a period of 20 years which may be extended if the patent is for a standard patent and for a period of eight years if it is granted for an innovation patent which may not be extended [ss 69 & 76]

• are recorded in the Register held by the Commissioner • allow the patentee the exclusive right to exploit the patent

commercially and authorise others to exploit it – the meaning of exploit is defined in Schedule 1 to provide for those cases where the invention is a product, a method, or a process

• prevent anyone else from lawfully using the invention without the patentee’s approval

2 PATENTS: A GUIDE

• protect the holder, i.e. the patentee, against the unlicensed use of his invention – even if someone else had discovered it through independent research and

• can be amended in accordance with the provisions of the Act before or after grant

• create a monopoly right valid against all the world unless successfully challenged

• may be surrendered at any time – by writing to the Commissioner offering to do so [s 137]

• may be assigned.

1.1.3 A patent is granted as a reward not only for the benefit to the public but also to the first inventor.Cornish v Keane (1885) 1 WPC 501 at 507 per Tindal CJ

1.1.4 A patent is a monopoly right granted not to reward genius but to encourage the disclosure of information which is of value to the public in that it takes the store of knowledge ahead by the requisite inventive step. It is granted in consideration for the disclosure of the invention to the general knowledge base of society.ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (1999) 45 IPR 577 at 601 per Emmett JClorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 251 at 254

1.1.5 The principle underlying the grant of a monopoly by the Crown or the State is that the grant confers a monopoly upon its holder which involves a surrender of public rights by the Crown as guardian of the public good. The justification for the grant is that the patentee gives [what is described in the cases] as adequate consideration. A new and useful invention is regarded by the law as such considera-tion. If the invention is new then in the sense of not having been done before the grantee of the patent gives a benefit to the public, by disclosing the content of the invention. The public has been told something which they did not know before. But if what is claimed as an invention is not in fact new the grantee has nothing to give the public; hence if a patent were granted the Crown would give all and receive nothing. So an invention that is already in the public domain cannot be the subject of valid letters patent.

31. PRELIMINARY

R.D.Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565; 85 ALR 679 at 687–8 per Lockhart J

1.1.6 “A petitioner for a patent alleges to the Crown that he has made a new and useful discovery. As a just reward for such discovery assuming the allegation to be true the Crown grants him the exclu-sive use of his invention. If the allegation turns out to be untrue the grant becomes void.”Murray v Clayton (1872) LR 7 Ch App 570 at 574n per Bacon VC

1.1.7 A patent is a public document given legal force by the Act. It can be amended as the Act provides both before and after grant.Eli Lilly v Pfizer Overseas Pharmaceuticals (2005) 64 IPR 506 at 541, para [202]

4 PATENTS: A GUIDE

1.2 LEGISLATION

1.2.1 Patents became the subject of statute in England in 1624 when the English Parliament passed the Statute of Monopolies (21 Jac c 3) to curb the Royal abuse of the prerogative to grant letters patent. The Act was declaratory of the common law.

1.2.2 Before the Statute the common law required three conditions to be satisfied for the grant of letters patent, namely: that the subject of the grant must be a manner of manufacture, it must be a manner of new manufacture, and the grantee must be the true and first inventor.In the centuries that have followed the proviso to s 6 has come to form the basis of the patent law. The proviso required that letters patent should be granted only if there is an invention which is a new (novel) manner of manufacture that is not inconvenient (useful) and does not increase prices, and then only to the true and first inventor.From the mid- to late-nineteenth century onward, with each new statute Parliament has continued to add to these basic requirements for the grant of letters patent.The English Patent Act 1852 laid the foundations of the modern patent practice. It established a Patent Office and made the filing of a patent specification a requirement for an application for a patent.

1.2.3 The 1624 English Statute of Monopolies is still the basis of the patent law in Australia.The power to legislate for patents is in s 51(xvii) of the Commonwealth Constitution.The first Act was the Patents Act 1903 (Cth) which was modelled on the English Patents Designs and Trade Marks Act 1883 from which the modern patent law has developed. Prior to the 1903 Patents Act each State had a Patents Act which was either copied from or based on the 1883 English Act. Subsequently the Federal Parliament has passed two further Acts, viz. the Patents Act 1952, and the current Patents Act 1990.

1.2.4 The extent of the power in s 51(xvii) was considered in Grain Pool of Western Australia v Commonwealth of Australia (2000) 202

51. PRELIMINARY

CLR 479; 170 ALR 111 in the course of a challenge to the constitu-tional validity of the Plant Breeders Rights Act 1994 (Cth).

1.2.5 The operation of the Patents Act 1990 is subject to a number of international treaties and conventions as well as a number of other Acts of the Commonwealth Parliament. These are referred to in the Table of Statutes Regulations and Treaties.

6 PATENTS: A GUIDE

1.3 THE PURPOSE & POLICY OF THE PATENTS ACT

1.3.1 The purpose of the Patents Act 1990 (Cth) is to create a compulsory examination and registration system whereby formal application must be made for an invention for which a patent is sought.

1.3.2 The applications are examined by Examiners in the Patents Office which is established by the Act. (Chapter 9A; Chapter 21)

1.3.3 After examination if they are found to have satisfied the criteria set out in the Act and any objection letters patents are granted and the grant is entered in the Register kept by the Commissioner of Patents. (Chapter 19; ss 186–97)By the process of application, examination, grant by the Commissioner of Patents and registration, a personal property right is created and vested in an inventor.

1.3.4 Patents may be extended, revoked, infringed [ss 117–23], chal-lenged, assigned [s 14], the subject of a licence – including a com-pulsory licence if they are not exploited – restricted in their use, extended and finally they may expire. Unless there is some good reason for declining to do so, an order granting a compulsory licence should be made if it is established that the reasonable requirements of the public with reference to the patented invention have not been satisfied.Fastening Supplies Pty Ltd v Olin Mathieson Chemical Corporation (1969–70) 119 CLR 572

1.3.5 The grant of letters patent does not guarantee that the patent is valid but it gives the holder the benefit of a prima facie assumption that the grant was valid. Issues as to the validity of a patent are concerned with whether the patent could properly have been granted.Lahore & ors Patents Designs and Trade Marks Law Australia Butterworths 1981 para 1.5.042

1.3.6 The policy of the Act is to deal with ownership of a patent by the registration of the original grant and any subsequent dealings in or

71. PRELIMINARY

with the patent, subject to any interests in it by the owner and regis-tered in the Register.

1.3.7 The scheme of the Act is to treat the registered proprietor as the owner of the patent, subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as to the title to patents.

1.3.8 Registration in the Register while prima facie evidence of any par-ticulars in it [s 195] and prima facie evidence of entitlement to own-ership says nothing about the validity of the patent.Stack v Brisbane City Council (2000) 47 IPR 525

1.3.9 “The Act does not attempt to give absolute certainty to third parties as to the nature and scope of potential patent protection as of the filing date or the publication date, or even acceptance, but allows time for refinement of the application both in response to examina-tion and also on the applicants volition.”Sunnyfield Association v Cronk (2006) 68 IPR 161

8 PATENTS: A GUIDE

1.4 INVENTORS

1.4.1 Letters patent: • are granted to inventors who satisfy the criteria for patentability laid

down in the Patents Act and • may be granted for an invention to a single inventor or to two or more

inventors where more than one person has made the invention.[ss 15 & 16]

1.4.2 There may be co-inventors. Co-inventors are entitled to the grant of a patent jointly. [s 63]Where one co-inventor is nominated as the “nominated person” – being the person identified in the patent request as the person to whom the patent is to be granted: Schedule 1 – that person is not entitled to the grant of a patent to the exclusion of the other co-inventor simply because he (the nominated person) was the co-inventor.

1.4.3 A patent is only to be granted to the true or actual inventor or a person claiming through or under the inventor, and a patent which is granted jointly to two or more persons one of whom was not the inventor is not granted to the inventor under s 15(1)(a).In the case of a joint invention a patent issued to only one is void.A patent issued to joint patentees will, unless all of them are the inventors, be void. Conor Medsystems Inc v University of British Columbia (No2) (2006) 68 IPR 217 at 222

1.4.4 A person may qualify as joint inventor of an improved device where their suggestions of ways for aiding the design or operation of the device give a result or advantage not contemplated by the person who originally conceived the device, and where the improvement is not merely a workable embodiment of the original concept for the device.Mackay v McKay (2005) 63 IPR 441

1.4.5 Where one party takes an initial step leading from the problem toward the ultimate solution and that party’s work is taken up and finalised by another, both may be considered to have jointly contributed to

91. PRELIMINARY

the invention. Another way of putting the question to determine the ownership of the invention is by asking whether the invention would have occurred without the involvement of the parties seeking to claim entitlement.Primmcoy Pty Ltd v Teer (2004) 60 IPR 164 at 170 para [26] McGill University v Bionomics Ltd (2007) 72 IPR 149

1.4.6 The inventor is not entitled to make an application nor to have a patent for the invention granted to him where an invention is made in the course of his employment while performing the duties of his employment.Stack v Brisbane City Council (1999) 47 IPR 525 at 539–41Pancreas Technologies Pty Ltd v Queensland (2005) 64 IPR 577 at 589 ff

1.4.7 The registration procedure does not require an employer-patentee to identify the inventor in an application for a patent and there is no procedure whereby the inventor can challenge the attribution of ownership made by the employer-patentee.

1.4.8 If a person who is not the inventor applies for and is granted a patent for an invention, application under s 138(3)(a) may be made for the revocation of the patent.

1.4.9 A disagreement between co-inventors gave rise to CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 ALR 417

1.4.10 A person who contributes one of two main ideas in an invention is a co-inventor.Norris’ Patent (1988) RPC 159

1.4.11 A person who contributed an idea thought to be essential by the collaborators – without regard to whether it was known or obvious – was a co-inventor.Viziball’s Application (1988) RPC 213Staeng’s Limited’s Patent (1996) RPC 183

1.4.12 If the final concept of the invention would not have come about without that person’s involvement then that person has entitlement to the invention. The inventiveness of a person’s contribution is a secondary issue.

10 PATENTS: A GUIDE

In deciding the question of entitlement the issue can be considered from the point of view of whether a person either solely or jointly with others made a contribution which had a material effect on the final concept.Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400

1.4.13 If there have been a number of different contributions to the inven-tive concept or concepts it is not correct to look simply at those contributions that were inventive to determine the overall question of inventorship. And if the invention is a combination, the ques-tion to be asked and answered is, “Who was responsible for the combination?”Colleg Corp v Merck & Co Inc (2003) FSR 263

1.4.14 A person has an entitlement to an invention if that person’s contribu-tion either solely or jointly with others had a material effect on the invention.Stockstill Ltd v Catford (2006) 66 IPR 350

1.4.15 The alleged unauthorised obtaining and use of information which led to an application for a grant of a patent gave rise to RGC Mineral Sands Ltd v Wimmera Industrial Minerals(1999) 163 ALR 93

1.4.16 Where a party before the court claims that he is the inventor of an invention for which a patent has been granted, when he has misrepre-sented to the Commissioner of Patents his status as a person entitled to apply for a patent, it should be inferred that if the true position had been disclosed the patent would not have been granted.Martin v Scribal Pty Ltd (1954) 92 CLR 17Atlantis Corpn Pty Ltd v Schindler (1997) 39 IPR 29

1.4.17 For historical reasons the term “inventor” has been extended to include somebody bringing another’s invention into the realm but it does not include a person who for the first time publishes another’s invention that has been communicated to him.

1.4.18 An inventor may assign his right to apply for a patent. George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75

111. PRELIMINARY

1.4.19 Either the actual inventor or an assignee may make an application for a patent.Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543

1.4.20 To describe oneself as an inventor is merely to say something about one’s capacity to identify and solve a problem. The line between a competent technician and an inventor is not always easy to discern. A person who is an inventor can also perform non-inventive work.Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280; 54 IPR 449

1.4.21 Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a person’s involve-ment then that person has an entitlement to the invention. Regard must be had to the invention as a whole as well as the component parts and the relationship between the participants.JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (No 2) (2005) 67 IPR 68 at para [132] per Crennan JMerck & Co v Sherman (2007) 72 IPR 418

1.4.22 The function of the court is to identify the inventive concept of the specification and then to determine who devised the inventive concept.Henry Brothers (Magherafelt) v Ministry of Defence (1999) RPC 442Colleg Corp v Merck & Co Inc (2003) FSR 263

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1.5 INVENTIONS

1.5.1 Whether or not something claimed as an invention is an invention depends on the nature of the result ultimately claimed when consid-ered against the background of the common general knowledge.Inventions may be the result not only of experiments conducted over a long time but also of chance, sudden lucky thought or mere acci-dental discovery.Not all inventions are to be classified as successful solutions to a problem which presented “a long-felt want” but to the contrary, inventions which are an advance of contemporary expectations and so reveal an “unfelt want” may well involve an inventive step. And in those cases where the invention is in advance of contemporary expectations experiments and research would throw no light on the quality of what was claimed in an inventive step [para 3.5] The Wellcome Foundation v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262; 34 ALR 213Aktiebolaget Hassle v Alphapharm Pty Ltd (2003) 212 CLR 411 at 428

1.5.2 Invention means more than novelty. Novelty alone will not sustain a patent. In addition there must be some difficulty overcome, some barrier crossed.Werner v Bailey Aluminium FCR at 574–5 & ALR at 689

1.5.3 “You cannot take out a patent for a principle; you may take out a patent for a principle coupled with the mode of carrying the princi-ple into effect, provided you have not only discovered the principle but invented some mode of carrying it into effect; if you have done that you are entitled to protect yourself from all other modes of car-rying the same principle into effect; that being treated by the jury as piracy of your original invention.”Jupe v Pratt (1837) 1 Web PC 145 per Alderson B

1.5.4 The subject of the patent is not a mere principle but a method of putting a new idea into practice.Otto v Linford (1882) 46 Law Times (NS) 35

1.5.5 In Hickton’s Patent Syndicate v Patents and Machine Improvement Co. Ltd. (1909) 26 RPC 339 at 347 Fletcher Moulton LJ said,

131. PRELIMINARY

speaking of Watt’s invention for the condensation of steam, out of which the steam engine was developed: “Now can it be suggested that it required any invention whatever to carry out that idea once you had got it? It could be done in a thou-sand ways and by any competent engineer, but the invention was in the idea, and when he had once got that idea, the carrying out of it was perfectly easy. To say that the conception may be meritorious and may involve invention and may be new and original, and simply because when once you have got the idea it is easy to carry it out, that that deprives it of the title of being a new invention according to our patent law, is I think, an extremely dangerous principle and justified neither by reason nor authority.”

1.5.6 In Gottschalk, Acting Commissioner of Patents v Benson (1972) 409 US 63 a case about the rejection of an application for letters patent for a computer program, Douglas J spoke to the same effect at 67: “[there is] the long standing rule that a[n] idea of itself is not patentable – ”.

1.5.7 It is the whole process that must be considered; and he [the inventor] need not show more than one inventive step in the advance which he has made beyond the prior limits of the relevant art.The patent is in the entire combination (in the case of a combina-tion patent) but there is or may be an essence or substance of the invention underlying the mere accident of form; and that invention, like every other invention, may be pirated by a theft in disguised or mutilated form, and it would be in every case a question of fact whether the alleged piracy is the same in substance and effect or is a substantially new or different combination.”Clark v Adie (1875) LR 10 Ch App 667 at 675

1.5.8 A mere variation is not an invention.Sharpe & Dohne Inc v Boots Pure Drug Co Ltd (1918) 45 RPC 153

1.5.9 A mere method or scheme is not an invention.Welcome Real – Time SA v Catuity Inc (2001) 113 FCR 110; 51 IPR 327 at paras [106]–[107]

1.5.10 A “mere desideratum”, that is to say, something which is disclosed as no more than a wished for result, is not an invention.

14 PATENTS: A GUIDE

NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 265; 117 ALR 79 at 104; 26 IPR 513 at 538

1.5.11 The idea of an invention being a new thing includes a “new result”, i.e. a new way of achieving an old purpose or the fulfilment of a new purpose and a new combination of features so as to obtain an improved result. Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 at 182; 40 IPR at 246–7

1.5.12 Apart from the requirements of s 18 there are three questions to ask to decide whether what is claimed as an invention is actually an invention, namely:

• what is the inventive idea • where is it manifested, and • how is it inventive.

These criteria are to be applied to the specification on its face.NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 663; 132 ALR 117 at 1121–2; 32 IPR 449 at 453–4

1.5.13 An invention should only enjoy the protection of a patent if the cost of the resulting restrictions upon the use of the invention is counter-balanced by resulting social benefits.Grant v Commissioner of Patents (2006) 67 IPR 1

1.5.14 The relevant question is whether the invention is a proper subject for letters patent according to the principles developed for the applica-tion of s 6 of the Statute of Monopolies.NRDC v Commissioner of Patents (1959) 102 CLR 252

1.5.15 The notion of what is patentable must remain flexible for the patent law to keep pace with scientific and technical developments.Grant v Commissioner of Patents (2006) 67 IPR 1

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1.6 TYPES OF PATENTS

1.6.1 STANDARD INNOVATION AND PETTY PATENTS

1.6.1.1 The Act provides for two types of patent which it classi-fies as standard [ss 18(1), 61] and innovation [ss 18(1A), 62].The Act also makes specific provision for standard patents to be issued for micro-organisms [ss 41, 42] and for pharmaceutical substances. [ss 70–9A]

1.6.1.2 Apart from the statutory classification patents are also classified by reference to their various characteristics, any of which may be either a standard patent or an inno-vation patent.

1.6.1.3 Until 2001 the Act provided for petty patents which were initially granted for twelve months but were able to be extended for a further six years – [1990 Act s 65]. Accordingly petty patents are liable to be before the courts for consideration until 2007 or thereabouts.

1.6.1.4 Micro-organisms may be the subject of a patent.[ss 41 & 6] Patents for micro-organisms are governed by the Budapest Treaty 1977.

1.6.2 INNOVATION PATENTS

1.6.2.1 This class of patent has been created by the Patents Amendment (Innovation Patents) Act, 2001. They may be granted for eight years (s 68) but without any right to an extension – in this respect it is to be contrasted with the repealed petty patent system which allowed for an extension. It has been created to permit inventors to obtain the benefit of patent rights quickly without incur-ring the cost and delay involved in obtaining a standard patent.Although innovation patents must satisfy the requirements

16 PATENTS: A GUIDE

of s 18(1A), which are the same as those for a standard patent, they may be re-examined by the Commissioner of his own motion, and, must be re-examined if the Commissioner is asked by the patentee or some other person. In such an event the Commissioner may revoke the patent. The procedure for this is set out in ss 101G – 101P.

1.6.2.2 These new patents are limited to five claims only and may not be granted for inventions of plant material, animal material or biological processes.

1.6.3 COMBINATION PATENTS

1.6.3.1 These are not uncommon and are dealt with separately in Part Four. They are defined by reference to the nature of the invention. They were first described in Crane v Price (1842) 1 WPC 393 and confirmed in Moser v Marsden (1893–6) 10 RPC 205.

1.6.3.2 “ [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.”Horton v Mabon (1862) 142 ER 1213 at 1218 per Willes J

1.6.3.3 “… a new material will not do: it must be a new manu-facture 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.”White v Toms (1867) 37 LJCh 204 per Malins VC agreeing with the argument of Mr Webster, Mr Cotton and Mr Laws

1.6.3.4 With a combination patent the “integers”, whether new or old, or partly old or partly new are “ – combined so that they are not a mere collocation of separate parts but interact to make up a new thing.”Welch Perrin & Co Py Ltd v Worrel (1961) 106 CLR 588 at 611Ramset Fasteners (Aust) Pty Ltd v Advanced Building

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Systems Pty Ltd 194 CLR 171; 152 ALR 604; 40 IPR 243 at para [12]An integer is an essential element quality or character-istic of an invention without which it will not operate or perform or be capable of doing what the inventor claims. (see generally para [4.1])

1.6.3.5 On the face of the specification there must be synergy or a working relationship between the integers.Sabef SpA v MFI FurnitureCentres Ltd (2004) UKHL 45 at paras [17], [24]–[27]

1.6.3.6 The usual objection to a combination patent is that on a proper analysis it is really just a collocation of integers. WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd (2006) 66 IPR 298 at 315, para [94]

1.6.3.7 Disputes over combination patents present special prob-lems because they consist of the combination of a number of known integers which work in relation to one another so as to produce a new or improved result.

1.6.4 PRODUCT PATENTS

1.6.4.1 These are defined by the product the invention produces. The Act, in the definition of “exploit” set out in Schedule 1, distinguishes between those inventions which are for a product – product patents – and those which are for a process – process patents.NRDC v Commissioner of Patents (1959) 102 CLR 252 at 2Minnesota Mining v Beiersdorf (1980) 144 CLR 253; 29 ALR 29 at 37Rescare Ltd. v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 241; 25 IPR 119 at 15; (1994) 28 IPR 383 (Fed Full Court)Sartas (No 1) Pty Ltd v Koukourou and Partners Pty Ltd (1994) 30 IPR 479 at 495Leonardis v Theta Development Pty Ltd (2001) 51 IPR 546 at 561 ff

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1.6.5 PROCESS PATENTS

1.6.5.1 This is the name given to those patents which are for inventions which perform a function. That a process itself could be the subject of a patent was first established in Crane v Price. For a process to be patentable it must be one that offers some advantage which is material and belongs to a useful art as distinct from a fine art and its value is in the field of economic endeavour.NRDC v Commissioner of Patents (1959) 102 CLR 252

1.6.5.2 Combination patents are often also process patents by reason of the combination of the integers resulting in a new process or method.Leonardis v Theta Development Pty Ltd (2001) 51 IPR 546 at 561 ff

1.6.5.3 There cannot be a process patent which does not result in a vendible product.

1.6.6 SELECTION PATENTS

1.6.6.1 These may be granted where the invention applies only to a limited number of members of a known class. The criteria for a selection patent are that the selected members will provide some substantial advantage and all the selected members possess the advantage. In re IG Farben Industries’ Patents (1930) 47 RPC 289Pfizer Inc v Commissioner of Patents (2005) 64 IPR 547

1.6.6.2 Selection patents are based on a selection of related com-pounds which have been described in general terms and claimed in an originating patent. The selected compounds have not been made before or the patent would fail for want of novelty. If the selected compounds being novel possess a special property of an unexpected character

191. PRELIMINARY

there is a fresh inventive step similar to a production of a new result by a new combination of well known parts. A selection patent to be valid must be based on some substantial advantage to be secured by the use of the selected members. The whole of the selected members must possess the advantage and the selection must be in respect of a special character which can fairly be said to be peculiar to the selected group. Beecham Group Ltd’s (Amoxycillin’s) Application(1980) RPC 261 at 292

1.6.6.3 “If the patent is a selection patent there is an additional requirement for sufficiency, that the special advantage obtained from the selection must be stated in the specifi-cation. More generally the advantage resulting from the invention must be stated whenever failure to do so leaves the invention inadequately defined.”Blanco White, Patents for Inventions and the Protection of Industrial Designs (5th ed. 1983) at 4–5111

1.6.6.4 “On the subject of drafting a selection patent it is neces-sary for the patentee to define clearly the nature of the characteristic which he alleges to be possessed by the selection for which he claims a monopoly. He has in truth disclosed no invention whatever if he merely says that the selected group possesses advantages. Apart alto-gether from what is called sufficiency he must disclose an invention: he fails to do this in the case of selection for special characteristics if he does not adequately define them.”In re IG Farben Industrie Patents (1930) 47 RPC 289 at 322–3 per Maugham J

1.6.6.5 Selection patents proceed on the basis that there has been a disclosure in general terms of a broad description or claim covering a large number of compounds. There is then a further inventive step in the identification of the characteristics of a sub-class of those compounds.Re Institut Francais du Petrole des Carburants et

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Lubricants Application (1972) FSR 147 at 154.

1.6.7 CONVENTION PATENTS

1.6.7.1 These may be any of those described which have been granted by an overseas country which is a party to the Washington Patent Cooperation Treaty 1970 upon compliance with its national laws. They are commonly referred to as international patents. The procedure for the application and registration of such patents is set out in Chapter 8 of the Patents Act 1990.

1.6.8 METHOD PATENTS

1.6.8.1 These are patents for a method of performing some task. They must satisfy all the criteria of the Act.

1.6.8.2 A method of medical treatment of the human body is patentable. Anaesthetic Supplies Co Ltd v Rescare Ltd (1994) 50 FCR 1; 122 ALR 141

1.6.8.3 The difficulty presented by a method patent is that the patentee runs the risk of having it declared invalid because it is not a method of new manufacture within the meaning of s 6 of the Statute of Monopolies 1603 and is no more than a series of directions for the use of a known substance for a known purpose in a known manner. Coopers Animal Health Australia Ltd v Western Stock Distributors Ltd (1986) 67 ALR 390; 15 FCR 382Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 68 IPR 511 at 526 para [49]