Patent Claims for Analogous Use and the Threshold Requirement of Inventiveness

Date01 June 1997
DOI10.22145/flr.25.2.2
Published date01 June 1997
Subject MatterArticle
PATENT CLAIMS FOR
ANALOGOUS
USE
AND
THE
THRESHOLD REQUIREMENT OF INVENTIVENESS
David
JBrennan*
and
Andrew
FChristie**
INTRODUCTION
Invented
by
Thomas
Edison, the electric light
bulb
was
the subject-matter of
United
States
Patent
Number
223,898
granted
on
27
January
1880. The electric light
bulb
has
come
to
be
recognised universally as the symbol of invention.
Patent
claims
providing
for a
compact
fluorescent light
bulb
have, over one
hundred
years later
in
the
N.
V.
Philips
Gloeilampenfabrieken
and
Another v
Mirabella
International Pty Ltdllitigation,
been
held
by
a
court
at
first instance
and
two
appeal
courts to
be
not
claims for a"patentable
invention"
under
s18 of
the
Patents Act 1990 (Cth).
Anglo-Australian
patent
law
has
been
vigilant to
deny
patentability where,
on
the
face of
the
specification, aclaim is "nothing
but
aclaim for the
use
of a
known
material
in
the
manufacture
of
known
articles for a
purpose
of
which
its
known
properties
make
that
material
suitable"2 -referred to herein as
an
"analogous use" claim. The outcome
in
Philips v
Mirabella
is explained
by
the courts
on
this basis. Aclaim which,
on
the
face
of
the
specification, is to
no
more
than
an
analogous use
was
characterised
by
the
High
Court
as
an
instance of aclaim failing to satisfy athreshold
requirement
of
inventiveness. The
High
Court
thus
recognised
that
there is a"threshold requirement"
of patentability,3
being
the requirement
that
claimed subject-matter exhibit "the quality
of inventiveness" necessary for there to
be
an
"invention".4 The claims
in
Philips v
Mirabella,
when
read
through
the eyes of
the
person
skilled
in
the
relevant field of
technology (the so-called "skilled addressee"),
were
said to
be
for
no
more
than
a
use
of
aselection of
known
phosphors,
in
known
compact fluorescent globes for a
purpose
which
the
phosphor's
known
properties indicated suitability. Therefore,
without
resort
to
the
patentability requirements of novelty
or
inventive step expressed
in
s18(1)(b) of
the
Patents Act 1990 (Cth), the claims
were
found
to
be
for
unpatentable
subject-matter
for failure
to
meet
this threshold
requirement
of inventiveness.
1
BComm
LLB
(Hons) (Melb). Legal Counsel, Audio-Visual
Copyright
Society Limited.
BSc
LLB
(Hons) (Melb), LLM (Land),
PhD
(Cantab). Senior Lecturer,
Law
School,
University
of
Melbourne.
(1992) 24 IPR 1(Federal Court, Wilcox
J),
(1993) 44 FCR 239 (Full
Court
of
the
Federal
Court), (1995) 132 ALR 117 (High Court).
Commissioner ofPatents v
Microcell
Ltd (1959) 102 CLR 232
at
251
per
the
Court
(Dixon
CJ,
McTiernan, Fullagar, Taylor
and
Wind
eyer
JJ).
(1995) 132 ALR 117
at
121
per
Brennan,
Deane
and
Toohey
JJ.
Ibid
at
122.
238
Federal
Law
Review
Volume
25
Philips
v
Mirabella
poses
the
question
whether
such
denials of patentability are
desirable
and
ought
be
made
under
a
proper
construction of the Patents Act 1990 (Cth).
Further,
the
case raises the issue
whether
the
patent
in
suit
indeed
claimed
an
analogous
use. This article will explore those questions
through
an
examination of
the
origin
and
history of the analogous
use
principle
and
its
treatment
in
the
watershed
Australian
decisions of
Commissioner
of
Patents
v
Microcell
Ltd,S
National
Research
Development
Corporation
v
Commissioner
of
Patents
6
and
Philips
v
Mirabella.
ANALOGOUS
USE
CLAIMS
UNDER
THE
PREVIOUS
LAW
Background
Grants
of
monopoly
rights to exploit inventions
have
been
made
in
England
since
~
Elizabethan times. Such grants
were
matters of the Crown's grace,
and
we~e
made
by
I
the
issue of Letters Patent.7It
was
owing
to the abuse of the general
power
to
grant
I
monopolies
that
the
Statute of Monopolies (1623)8
was
passed. The objects of the!
statute
were
to limit those monopolies
already
granted
and
to define
in
wllat
I
circumstances
the
royal prerogative
might
be
exercised
in
future.
The Statute of Monopolies declared
that
monopolies
in
general
were
bad,
but
saved
I
in
s
6:
grants
of
privilege for
the
term
of fourteen years
or
under,
hereafter to
be
made
of
the
sole
working
or
making
of
any
manner
of
new
manufacture
within
this Realm, to
the
true
and
first
inventor
and
inventors
of
such
manufactures,
which
others
at
the
time
of
making
such
Letters
Patent
and
Grants shall
not
use, so as also
they
be
not
contrary
to
the
law
nor
mischievous to
the
State,
by
raising prices of commodities
at
home,
or
hurt
of
trade
or
generally inconvenient.
It is
apparent
that
the
words
"be
not
contrary to the
law
nor
mischievous to
the
State'l
by
raising prices of commodities
at
home,
or
hurt
of
trade
or
generally inconvenient",I
when
read
in
the
context of the Statute of Monopolies as awhole,
operate
aSi
proscriptive criteria
marking
out
the province of patentability for
manners
of
new
l
manufacture. The policy
behind
the principle of analogous
use
can
be
shown
to
be!
linked
to
the
criterion
which
speaks of
wrongful
injury to
the
State's trade.
Between
the
passing
of
the
Statute of Monopolies
and
the
Patents Act 1990 (Cth)"
courts
have
developed
a
body
of
law
as to the
meaning
and
operation of s
6.
This
:hae'
formed
the
basis of
patent
law.9
One
comJ'0nent of
patent
law
is
the
requirement
thai
an
invention
disclose
an
inventive step.1Within the
requirement
that
the
inventior
disclose
an
inventive step lies
the
principle of analogous use.
11
The principle states tllai
5
6
7
8
9
10
11
(1959) 102 CLR 232.
(1959) 102 CLR 252.
The
right
of
the
Crown
to
make
such
a
grant
was
derived
from its
Common
La\-\.
prerogative
to
reward
services to
the
State: see Halsbury's Statutes
4th
ed,
vol 33,
1.
21
Jac 1 c
3.
See
in
particular
the
discussion
in
Ccom
Pty
Ltd
v
Jiejing
Pty
Ltd
and
Others
(1994) 28 IPR
48~
at
509-510.
Minnesota Mining
and
Manufacturing
Company
v
Beiersdorf
(Australia)
Ltd
("3M") (1980)
14~
CLR 253
at
287-292
per
Aickin J(Stephen
and
Mason
JJ
concurring). I
Ccom
v
Jiejing
(1994) 28 IPR
481
at
510.
An
interesting question
beyond
the
scope
of
thil
article is
whether
all cases
of
absence
of
inventive step (or obviousness)
can
be
analysed aj
being
claims for
analogous
uses.

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