Approach in Lockwood v Doric

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed before 15 April 2013.  
  • innovation patents with an examination request filed before 15 April 2013.
  • innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see What is the Invention?

The High Court in Lockwood v Doric [2004] HCA 58 did not explicitly construe the specification to determine the invention described in the specification.  However, they agreed (at paragraphs 29 and 38) with the trial judge that the invention was that described in the broad consistory clause.  In the High Court’s view (paragraph 59), this broad invention was “a new result by existing means used in combination” and hence fell within the principle stated in Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701:

"When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved.”

The Shave v H V McKay principle is similar to that adopted by Lord Hoffmann in Biogen v Medeva [1997] RPC 1 at page 34, when he considered how to determine the nature of the invention:

"Whenever something is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge.  Sometimes it is the idea of using established techniques to do something which no one had previously thought of doing.  In that case the inventive idea will be doing the new thing.  Sometimes, it is finding a way of doing something which people had wanted to do but could not think how.  The inventive idea would be the way of achieving that goal.  In yet other cases, the many people may have a general idea of how they might achieve the goal but not know how to solve a particular problem which stands in their way.  If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it."

Although Biogen v Medeva was criticised by the High Court in Lockwood v Doric, the primary criticism was related to the Biogen v Medeva requirement that each embodiment should be enabled (see paragraphs 66, 67 and 95 of Lockwood v Doric).  Biogen v Medeva also relied on Mullard Radio Valve Co Ltd v Philco Radio and Television Corporation of Great Britain Ltd (1936) 53 RPC 323 which Lockwood v Doric also severely criticised (at paragraphs 55-57), with particular reference to the following paragraph from page 347 of Mullard v Philco:

"The consideration which the patentee gives to the public disclosing his inventive idea entitles him in return to protection for an article which embodies his inventive idea but not for an article which, while capable of being used to carry his inventive idea into effect, is described in terms which cover things quite unrelated to his inventive idea, and which do not embody it at all.”

However, the Lockwood v Doric criticism is in the context of the word “entitles” which the High Court found to inappropriately introduce the notion of “fair reward” for the invention described.  In fact, the term has been used in a number of decisions (including Biogen v Medeva) merely to ensure consistency between the invention described and the claims.  This type of approach is actually endorsed by the High Court in Lockwood v Doric.  Therefore, despite their criticism of Mullard v Philco, the High Court noted that the result in that case may have been the same if sec 40(3) had applied (at paragraph 58).  It came to the same finding (at paragraph 56) with respect to the Australian High Court decisions in Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 (at 597) (the majority decision despite their acceptance of Barwick CJ’s dissenting view above) and Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 (at 263) which both relied on Mullard v Philco.