The Scope of ‘Manner of Manufacture’ under the Patents Act 1990 (CTH) after Grant V Commissioner of Patents
| Author | Ann L Monotti |
| DOI | 10.22145/flr.34.3.4 |
| Published date | 01 September 2006 |
| Date | 01 September 2006 |
| Subject Matter | Article |
PATENTS ACT 1990 (CTH) AFTER GRANT V COMMISSIONER
OF PATENTS
Ann L Monotti*
INTRODUCTION
From the time of the Statute of Monopolies 1623, 21 Jac 1, c 3 ('Statute of Monopolies'), the
flexible concept of a 'manner of manufacture' was understood to involve some form of
limitation which was expressed in the statute as being 'mischievous to the State … or
hurt of trade, or generallie inconvenient'.1 Years of judicial consideration resulted in
various classes of subject matter being carved out as unpatentable. Apart from non-
contentious material such as discoveries, ideas and principles of nature, these classes
included methods of medical treatment for humans, horticultural and agricultural
methods, computer programs, presentations of information, plans and business
schemes.2 The classes were relatively clear by 1959 when the High Court in National
Research Development Corporation v Commissioner of Patents3 was asked to judge the
patentability of an invention in an excluded class, namely a horticultural method. The
trouble was that there were no consistent rationales to justify the excluded classes and
to distinguish patentable from non-patentable subject matter. The High Court faced the
quandary squarely, dismissed the proposition that horticultural and agricultural
methods are unpatentable as a class and opened the way for future courts to approve
the patentability of inventions that fell within this and other formerly excluded
classes.4 In consequence of NRDC, the mere fact that an invention may be called a
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*
Associate Professor, Faculty of Law, Monash University. My thanks to the two anonymous
referees for their comments on an earlier version of this work.
1
Statute of Monopolies s 6.
2 For a detailed discussion of the development of inherent patentability and restrictions on
this concept, both prior to and after National Research Development Corporation v
Commissioner of Patents (1959) 102 CLR 252 ('NRDC'), see Justine Pila, 'Inherent Patentability
in Anglo-Australian Law: A History' (2003) 14 Australian Intellectual Property Journal 109.
3
(1959) 102 CLR 252.
4
Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1; Bristol-Myers Squibb Co v F H
Faulding & Co Ltd (2000) 97 FCR 524 (methods of medical treatment); International Business
Machines Corporation v Commissioner of Patents (1991) 33 FCR 218; CCOM Pty Ltd v Jiejing Pty
Ltd (1994) 51 FCR 260 (computer programs); Grant v Commissioner of Patents (2006) 154 FCR
62, 69 (plans and schemes).
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method for medical treatment, a business method or a plan or scheme, for example, no
longer prevents it being properly the subject of a patent.5
The present scope for restricting patentable subject matter is limited to the
application of the ratio of NRDC (whatever that may be)6 and to the minimal
exclusions in the legislation.7 These include the proviso to s 6 of the Statute of
Monopolies, referred to as 'generally inconvenient', and human beings, and the
biological processes for their generation.8 In the case of innovation patents, plants and
animals, and the biological processes for the generation of plants and animals are also
expressly excluded.9 Also excluded are inventions, the use of which would be contrary
to law.10 A further vehicle for exclusion comes from the requirement in s 18(1) and
s 18(1A) that the invention is a 'manner of new manufacture', so that a claim for the use
of a known material in the manufacture of known articles for a purpose for which its
known properties make that material suitable cannot be subject matter for a patent.11
However, this latter ground is related more to concepts of inventiveness than subject
matter per se. In the absence of any of these limitations, patentability of the invention
falls to be considered only upon compliance with the novelty, inventive step and
utility requirements in s 18.
This article is not concerned with the express exclusions of patentable subject
matter that appear in the Patents Act 1990 (Cth). Nor is it concerned with entering the
debate about whether we should introduce express exclusions of classes of subject
matter into the Patents Act 1990 (Cth) along the lines of the patent laws of countries
that are party to the Convention on the Grant of European Patents.12 There is a lively
debate as to the proper scope of patentable subject matter, particularly in the context of
inventions in the fields of biotechnology13 and business methods or systems,14 but
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5
Grant v Commissioner of Patents (2006) 154 FCR 62, 69.; Welcome Real-Time SA v Catuity Inc
(2001) 113 FCR 110.
6 Although many cases have considered the meaning of 'manner of manufacture within the
meaning of s 6 of the Statute of Monopolies', NRDC remains the binding authority for
determining what is patentable: Grant v Commissioner of Patents (2006) 154 FCR 62, 64.
7
Patents Act 1990 (Cth) ss 18(2) (human beings, and the biological processes for their
generation), 18(3) (for innovation patents — plants and animals, and the biological
processes for the generation of plants and animals), 50(1).
8
Patents Act 1990 (Cth) s 18(2).
9
Patents Act 1990 (Cth) s 18(3). The need for this exclusion was explored by the Advisory
Council on Intellectual Property ('ACIP') in ACIP, Should Plant and Animal Subject Matter be
Excluded from Protection by the Innovation Patent? (November, 2004).
10 Patents Act 1990 (Cth) ss 50(1)(a) (standard patents), 101B(2)(d) (innovation patents).
11 Commissioner of Patents v Microcell Ltd (1958–59) 102 CLR 233; Dyno Nobel Asia Pacific Ltd v
Orica Australia Pty Ltd (1999) 99 FCR 151.
12 Opened for signature 5 October 1973, 1065 UNTS 254 (entered into force 7 October 1977)
('European Patent Convention').
13 Australian Law Reform Commission, Genes and Ingenuity: Gene Patenting and Human Health,
Report No 99 (2004); Miranda Forsyth, 'Biotechnology, Patents and Public Policy: A
Proposal for Reform in Australia' (2000) 11 Australian Intellectual Property Journal 202. There
is extensive literature in this area — see Sam Ricketson and Megan Richardson, Intellectual
Property: Cases, Materials and Commentary (3rd ed, 2005) 718 n 4; Luigi Palombi, 'Patentable
Subject Matter, TRIPS and the European Biotechnology Directive: Australia and Patenting
Human Genes' (2003) 26 University of New South Wales Law Journal 782.
2006
Manner of Manufacture 463
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there is no engagement with this debate in this article.15 Rather, it explores the scope
for restricting patentable subject matter through the judicial approach to both the
principles for which NRDC is authority and reliance upon matters of public policy.
The vehicle for this exploration is the recent litigation in Grant v Commissioner of
Patents.16 This case involved an invention for structuring a financial transaction
designed to protect an individual's assets against the lawful claims of the individual's
creditors. The invention was outside the scope of what was generally considered as
appropriate subject matter for a patent because it was not within a recognised field of
science or technology and involved no technical application. Also, it fell within a
general category of inventions that had traditionally been regarded as unpatentable,
namely a financial or business scheme or plan. In this case, it was a scheme that took
advantage of gaps or loopholes in the laws of Australia which made it even more
controversial. An instinctive reaction is to reject this type of invention as unpatentable
subject matter and to rely upon the authority of NRDC to reach this conclusion.
However, as the litigation unfolded, it became obvious that the principles in NRDC
were far from clear.
NRDC AND THE MEANING OF 'MANNER OF MANUFACTURE'
In order to place the discussion of Grant v Commissioner of Patents in a context, it is
necessary to provide some explanation of how the concept of 'manner of manufacture'
was understood at the time of NRDC. In addition to the restrictions imposed upon this
concept through the development of unpatentable classes of subject matter, another
general limitation that had no connection with a specific class of subject matter arose
from the case of Re Application by GEC.17 When this latter case was argued, the scope
for processes to be patentable was unclear. In an attempt to clarify principles and to
remove what might be unnecessary fetters on what might be patentable as a process,
Lord Morton proposed guidelines that were based upon the development of the law to
that point. He stated that a process would be patentable if it led to the production,
preservation from deterioration, restoration or improvement of some vendible product
to which the process is applied. He expressly disclaimed any intention that this
proposition should become a rule that is applicable in all cases.
Despite the disclaimer, subsequent courts tended to apply these guidelines
('Morton's Rules') as a formula or definition which had the potential to limit...
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