2.9 Annex A - History of Manner of Manufacture

The following cases are among the more significant ones in the development of the "traditional principles" underlying the concept of manner of manufacture:

Muntz v Foster (1843) 2 WPC 93

A person who discovers a "hidden and concealed virtue" in something known that enables him to apply the known thing to some useful manufacturing purpose to which it has not been applied before, is entitled to patent the novel application.

In this case, the invention lay in the application of plates made from a particular known alloy for sheathing the bottom of ships, such alloys being found to prevent fouling.

Harwood v Great Northern Railway Co. (1865) 35 LJQB 27

"You cannot have a patent for a well known mechanical contrivance merely because it is applied in a manner or to a purpose which is analogous to the manner, or for the purpose in or to which it has been hitherto notoriously used."

Gadd & Mason v The Mayor etc. of Manchester (1892) 9 RPC 516

The law on new use of old contrivances is set down at page 524 (and adopted by the High Court of Australia in Willmann v Petersen 2 CLR 1 at page 17).

"1. A patent for the mere use of a known contrivance, without any additional ingenuity in overcoming fresh difficulties, is bad and cannot be supported. If the new use involves no ingenuity but is in manner and purpose analogous to the old use, although not quite the same, there is no invention; no manner of new manufacture within the meaning of the Statute of James. 2. On the other hand a patent for a new use of a known contrivance is good and can be supported if the new use involves practical difficulties which the patentee has been first to see and overcome by some ingenuity of his own."

British Liquid Air Co. Ltd. v British Oxygen Co. Ltd. (1909) 26 RPC 509

The principle underlying the doctrine of analogous use was stated at page 532:

"the application of a known device to its ordinary purpose under analogous circumstances is not good subject matter for Letters Patent, because it does not involve invention."

B.A.'s Application (1915) 32 RPC 348

When once a substance is known and its characteristics well defined, the mere use of the substance for purposes not previously known is not patentable. However, a substance cannot be "known" unless its characteristics are well defined; and using a substance because of a property hitherto unknown or unsuspected for a purpose to which it has not formerly been applied would indicate that the chemical was a "known" substance only partially and as far as the new property is concerned, it was unknown.

L. & G.'s Application (1941) 58 RPC 21

The use of a known material in the manufacture of known articles for the reason that it possesses a known property which renders it useful for that purpose is not a manner of new manufacture. Thus, an application for the manufacture of the parts of electricity meters, which are subject to wear, from oxide-coated aluminium, was rejected, since it was known that the coating of aluminium with oxide rendered it resistant to wear.

G.E.C.'s Application (1943) 60 RPC 1

A test for assessing whether a method or process is a manner of manufacture was formulated by Morton J:

"In my view a method or process is a manner of manufacture if it (a) results in the production of some vendible product or (b) improves or restores to its former condition a vendible product or (c) has the effect of preserving from deterioration some vendible product to which it is applied."

Note: It must be kept in mind that Morton's rules are only a guide to assessing whether a method or process is a manner of manufacture. The NRDC case (below) has made it clear that where these rules are used as a guide, the words "vendible" and "product" should be given a broad interpretation. Thus, a product is "vendible" if the question "Is the significance of the product of economic value to the community?" can be answered affirmatively. Moreover, a "product" need not be something in the sense of a tangible article, it may be any artificially created state of affairs.

Cementation Co. Ltd.'s Application (1945) 62 RPC 151

A fire quenched subterranean formation is a vendible product according to Morton's rules.

Rantzen's Application (1947) 64 RPC 63

A "product" under Morton's rules could well be an electrical oscillation.

Elton and Leda Chemicals Ld.'s Application (1957) RPC 267

A fog-free atmosphere is a vendible product under Morton's rules.

Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232

The case related to rocket projectors comprising tubes of reinforced synthetic resinous plastic material.

The High Court held that there was:

"in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject-matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".

National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252; (1961) RPC 134; 1A IPR 63

The concept of a patentable process was considered (CLR at 275):

"The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art ... that its value to the country is in the field of economic endeavour."

and CLR at 269:

"The word "manufacture" finds a place in the present Act, not as a word intended to reduce a question of patentability to a question of verbal interpretation, but simply as the general title found in the Statute of Monopolies for the whole category under which all grants of patents which may be made in accordance with the developed principles of patent law are to be subsumed. It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: "Is this a manner (or kind) of manufacture?" It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because "manufacture" as a word of everyday speech generally conveys that idea. The right question is: "Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the Statute of Monopolies?""

University of Sydney's Application (1970) AOJP 2438

A method of treating livestock with hormonal substances in order to regulate the ovulating period was considered to be of economic significance by aiding the control of the breeding season.

Bernhard Joos v Commissioner of Patents 126 CLR 611; (1972) AOJP 3431

Barwick CJ decided that cosmetic processes or methods for improving or changing the appearance of the human body or any part of it which have a commercial application are proper subject matter for the grant of letters patent. The claim, the subject of the decision, was for a process for improving the strength and elasticity of keratinous material, especially human nails and hair, comprising applying thereto a particular composition.

Ranks Hovis McDougall Ltd's Application (1976) AOJP 3915

The question of patenting living organisms was considered. The hearing officer decided that:

no objection can be taken to a claim to a new organism on the ground that it is something living;
any new variants claimed must have improved or altered useful properties and not merely have changed morphological characteristics which have no effect on the working of the organism;
naturally occurring micro-organisms per se are not patentable as they represent a discovery and not an invention; and
a claim to a pure culture of the micro-organism would satisfy the requirements for technical intervention.

Wellcome Foundation Limited v The Commissioner of Patents (1980) AOJP 2759

"The claims in dispute are package claims, i.e. claims to a container with its contents together with a set of written directions. The circumstances in which such package claims will be valid are limited. Novelty in the process for which the package may be used will not be sufficient."

International Business Machines Corporation v Commissioner of Patents (1991) 22 IPR 417

The use of a mathematical formula in a computer to produce an improved curve image was held to be patentable, since the production of the improved curve image is a commercially useful effect in computer graphics. Specifically Burchett J found:

“Although there was nothing new about the mathematics of the invention what was new was the application of the selected mathematical methods to computer, and, in particular, to the production of the desired curve by the computer. This involved steps which were foreign to the normal use of computers and, for that reason, were inventive. A method of producing that by computer, which is novel and inventive, is entitled to the protection of the patent laws.”

Anaesthetic Supplies Pty Ltd v Rescare Ltd

The specification related to a method of treating snoring and/or obstructive sleep apnoea. The court decided that similar principles applied to methods of treatment of the human body for therapeutic purposes as for cosmetic purposes. It held that there was no justification in law or logic to distinguish a process of curative treatment of the human body from that of cosmetic treatment, and that both of these forms of treatment may constitute a manner of manufacture provided they have commercial application. In arriving at its conclusion, the court commented that Parliament, having the opportunity to exclude matters from patentability under the 1990 Act, chose to limit the exclusions to those of sec 18(2).

This decision appeared to reinforce the practice adopted by the Office following the Joos decision that no objection need be taken to methods or processes for the treatment of human beings on that basis alone.

CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168

The described apparatus in a broad sense consisted of conventional computer equipment including a database, a visual display and a keyboard. Generally, CCOM claimed an interface with a database that contained a data structure of Chinese language characters which encoded strokes by stroke type and in an order in which the strokes are written (if writing by hand). The claim also defined software that presented the strokes on the display for the user. The interface also provided a retrieval program and graphic representation of each character that enabled the user to select the character using the keyboard. The overall outcome was an efficient way of retrieving Chinese characters. Cooper J found that:

“The NRDC Case (102 CLR at 275-277) requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour. In the present case, a relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result achieved is the retrieval of graphic representations of desired characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of data as to Chinese characters analysed by stroke-type categories, for search including ‘flagging’ (and ‘unflagging’) and selection by reference thereto.”

NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449

The majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that:

the phrase “manner of manufacture within the meaning of section 6 of the Statute of Monopolies” in s 18(1)(a) should be understood as referring to a process which is a proper subject matter of letters patent according to traditional principles.”

This case sets a threshold requirement that an “alleged” invention must possess the necessary quality of inventiveness, i.e. be an “alleged invention”, on the face of the specification. Simply put, a specification should not “self-admit” a lack of novelty or inventive step. Here, their honours in majority said that if the threshold is not met, then “one need go no further”.

Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604; (1998) AIPC 91-401; 40 IPR 243

The High Court upheld an appeal against a decision taken by the Federal Court, in which that court held that an inventive step had to be present in a "combination" invention in order for it to be patentable under sec 18(1)(a). After commenting that:

"['merit'] was used sometimes in reference to subject-matter, sometimes in reference to novelty. The phrase invites error through imprecision of legal analysis ..."

it concluded:

"In that respect the Full Court [of the Federal Court] was in error in considering under the ground of revocation in sec 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side."

This decision makes it clear that novelty and inventive step are separate grounds to manner of manufacture, and it is wrong to find that a claim lacks a manner of manufacture because it is not novel or not inventive (aside from the “threshold test” of Philips v Mirabella).

Grant v Commissioner of Patents [2006] FCAFC 120

The requirements for a patentable process were considered by the Full Court at [47]:

“It is necessary that there be some "useful product", some physical phenomenon or effect resulting from the working of a method for it to be properly the subject of letters patent.”

The court also held that:

“Legal advices, schemes, arguments and the like are not a manner of manufacture.”

Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150

The Full Court of the Federal Court dismissed an appeal from a decision of a single judge of the Federal Court finding that a method of generating a weighted share index was not a manner of manufacture. The Full Court found that where it is clear from the specification as a whole that an invention is truly a scheme, an abstract idea or mere intellectual information, which are not patentable themselves, then implementing that invention on a computer is not an artificially created state of affairs that can be held to be patentable.

D’Arcy v Myriad Genetics Inc [2015] HCA 35

The High Court overturned the finding of the Full Court of the Federal Court that isolated nucleic acid sequences coding for mutated or polymorphic forms of the human polypeptide BRCA1 (relating to breast cancer) are patentable. The High Court found that the information stored in the nucleic acid sequences coding for the mutated or polymorphic BRCA1 polypeptide is the same as that contained in the DNA of the person from which the nucleic acid is isolated. This information (which constitutes the substance of the claimed invention) is not ‘made’ by human action and consequently the isolated nucleic acid sequences do not meet the manner of manufacture requirements.

Commissioner of Patents v RPL Central Pty Ltd [2015] FCAFC 177

The Full Court of the Federal Court upheld an appeal by the Commissioner of Patents confirming the Commissioner’s decision that an online method for collecting evidence of skills and knowledge to meet a recognised qualification standard (e.g. within the Australian Vocational Education and Training Sector) is not patentable. Extending principles from its decision in Research Affiliates, the Full Court found that the implementation of the method by computer and the internet was insufficient to confer patentability. The Court considered the recent decision of the High Court in D’Arcy v Myriad Genetics Inc [2015] HCA 35, which identified the key requirement to consider the substance of the invention, and found that the present case could be determined under existing principles applicable to computer implemented business methods and did not involve a new class of claim involving a significant extension of the concept of manner of manufacture.

Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161

An enlarged bench of the Full Court dismissed an appeal by Encompass Corporation in relation to a finding that a method and apparatus for displaying information relating to “entities” (exemplified as, “individuals, corporations, businesses, trusts or any other party involved in a business or other commercial environment”) was not directed to a manner of manufacture. The Full Court reaffirmed the principles developed in Myriad, RPL Central and Research Affiliates. Their Honours made the following observations in deciding that the substance of the claimed invention was nothing more than an abstract idea:

“We observe that the description is largely agnostic as to how the method should be implemented.” [22]

“…the method is really an idea for a computer program, it being left (as we have said) to the user to carry out that idea in an electronic processing device.” [101]

“… the method, as claimed, is no different in principle to the methods claimed in Research Affiliates and RPL Central.” [101]