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Date Published

Under sec 50(1)(a), the Commissioner may refuse to accept a patent request and specification relating to a standard patent, or to grant a standard patent, for an invention the use of which would be contrary to law. The section is to be understood as covering broadly statute law, including regulations and ordinances, and case law. Examiners should note that refusal under sec 50(1)(a) is a discretionary power and should only be applied in the clearest of circumstances.

Case Law

Some guidance as to the meaning of "contrary to law" is provided in Official Rulings 1923 C (1923) 40 RPC Appendix iv, where it was stated:

"An invention 'contrary to law' may be either (1), one the primary use of which would be a criminal act, punishable as a crime or misdemeanour, or, (2), one the use of which would be an offence by reason of its being prohibited under by-laws or regulations made for police and administrative purposes.

Inventions belonging to the former class would always be refused protection. As regards the latter class, the nature and possible uses of the invention and the exact terms of the prohibition would have to be considered in each case."

In Pessers and Moody v Haydon & Co. (1909) 26 RPC 58, the invention could be used both for lawful and unlawful purposes (gambling).  Eve J considered whether a game was:

“so illegal in its nature as to constitute improper subject-matter for a Patent.”

In the circumstances, Eve J stated:

“…I do not feel myself at liberty to say off-hand that this an illegal subject matter for a Patent.”

Examination Practice

Objections under sec 50(1)(a) should only be taken where an unlawful use, but no lawful use, of an invention has been disclosed.

In particular, regard must be had to whether the invention is primarily devised or intended for a lawful, or for an unlawful, use. For example, in the UK an invention which was refused on this basis was an explosive safe designed to kill or injure a burglar.

Where an objection under sec 50(1)(a) is disputed by the applicant and the examiner considers it should be maintained, the matter should be referred to a supervising examiner before a further report is issued.

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