We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. General Inconvenience

Date Published

The definition of an invention in schedule 1 refers to section 6 of the Statute of Monopolies. Section 6 specifies that even where a manner of new manufacture is disclosed, a patent cannot be granted for an invention that would be contrary to law or mischievous to the state by being generally inconvenient.

The requirement to avoid conflict with the law has been specifically reiterated in sec 50(1)(a) (see Contrary to Law).

However, the requirement that an invention not be generally inconvenient has not been relied on as the primary basis upon which to invalidate a patent in any reported cases. Consequently, there is no clear guidance as to when an invention may be regarded as "generally inconvenient" and examiners should refrain from taking this objection.

Nevertheless, some guidance as to how the consideration might be applied can be obtained from the following cases:

  • Rolls Royce Ltd's Application (1963) RPC 251 (the invention was found not to lie in the useful arts);
  • Anaesthetic Supplies v Rescare (1994) AIPC 91-076; 28 IPR 383 (this was a minority judgement);

  • Bristol-Meyers Squibb Company v F H Faulding & Co Limited FCA VG 109 of 1995 (the invention was found not to meet the threshold requirement to be a patentable invention);

  • Hillier's Application (1969) RPC 267 (the invention was found not to lie in the useful arts);

  • N.V. Organon's Application (1974) AOJP 4503 (the relevant claims were not novel); and

  • Amiran Ur's Application (1974) AOJP 5882 (the relevant claims were not novel).

Where general inconvenience appears to be an issue, examiners should consider whether the appropriate objection is really one of anticipation or that the invention does not lie in the technical realm.

Back to top