Combinations, Collocations, Kits, Packages and Mere Admixtures

Date Published

Key points:

(1) If an invention comprises a collocation in which one of the integers is new, then the invention will be a manner of manufacture.

(2) Where an invention consists of a collocation of known integers, the primary consideration in relation to manner of manufacture will be whether there is a working interrelationship or potential working interrelationship between the integers.

(3) If the integers of a combination are defined to be in a physical arrangement that in ordinary use provides for such a working interrelationship, or the claim includes a limitation as to the use, then the combination will be a manner of manufacture (see Collocations).

(4) In the case of chemical combinations and the like, if the integers are in admixture, then a potential working interrelationship is provided and a manner of manufacture objection will generally not apply (see Admixtures). However, there may be residual novelty and/or inventive step considerations.

(5) In the case of “kits” of separate and known integers, a manner of manufacture objection should be taken if there is no feature defined that provides for the working interrelationship (for example, the kit is not limited to when it is used in a particular method). Additional considerations of novelty and inventive step will apply and objection under these grounds taken as appropriate. If an integer is only disclosed in a P, X or E document, then a manner of manufacture objection should not be taken as the integer was not “known” at the priority date of the claim(s).

(6) An objection under sec 50(1)(b) (food or medicines being mere admixtures) should only be taken in the case of simple recipes. Where there is a reasonable basis for an inventive step objection, then this should be taken in preference.

Note: Much of the judicial guidance in relation to collocations and mere admixture is old law. At that time, these concepts encompassed a variety of patentability considerations, including inventive step. With the introduction of the 1990 Act, the ground of inventive step was clearly distinguished from manner of manufacture.

As a consequence, some of the previous considerations of manner of manufacture or mere admixture are now more appropriately taken under inventive step. Certain types of collocations have been found by the courts to be unpatentable (see Collocations). These are generally collocations in which each part performs its normal function, and is not functionally dependent on any other part. In such cases, manner of manufacture is an appropriate objection.

A patentable combination is a new combination of old integers having a working interrelationship or a potential working interrelationship. In British Celanese Ltd. v Courtaulds Ltd. 52 RPC 171 at pages 193-194, it was stated:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

In 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 referred to Welch Perrin & Co Pty Ltd v Worrell (1961) 106 CLR 588 (1961) 106 CLR 588 on combinations as follows:

"Referring to the specification, their Honours [the court in Welch Perrin & Co Pty Ltd v Worrell] said:

'It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.'

This notion of a 'new thing' includes a new result, 'that is, a new way of achieving an old purpose or the fulfilment of a new purpose' (Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 (1937) 59 CLR 30 at 67), and 'a new combination of features to obtain an improved result' (Meyers Taylor v Vicarr Industries Ltd (1977) 137 CLR 228 at 249). The significance of the exclusion of a 'mere collocation of separate parts' appears from the statement by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 (1980) 144 CLR 253 at 266 that it is 'the interaction' between the integers which is 'the essential requirement'. It is this which supplies the inventive step and denies an allegation of lack of subject-matter in the case of a valid combination patent."

Thus, for a combination to be patentable there has to be a working interrelationship or a potential working interrelationship between the component integers.