In assessing whether the new use of a known substance is patentable, consideration should be given to what is known on the face of the complete specification (AstraZeneca AB v Apotex Pty Ltd (2014) FCAFC 99; 107 IPR 177 107 IPR 177), that is, what does the specification disclose or admit was known (common general knowledge) before the priority date. In this case, the claims were directed to a pharmaceutical composition comprising rosuvastatin and an inorganic salt with a multivalent cation, the latter component preventing degradation of the former. The composition could further comprise a commercially available ferric oxide coating, such coatings being known to protect against degradation by light.

The Full Bench of the Federal Court held that the specification did not admit or disclose on its face that it was known that ferric oxide coatings could be used to address the stability issues associated with rosuvastatin, and furthermore that it was not known that rosuvastatin was sensitive to degradation. The specification itself disclosed the fact that rosuvastatin was sensitive to degradation and was not merely reporting on a prior disclosure made by others (AstraZeneca AB v Apotex Pty Ltd supra at paragraphs 408 - 412). The Full Court indicated that the position in this case was distinguished on the facts from that in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 (1959) 102 CLR 232.

In Microcell supra, the claims defined rocket projectors comprising tubes of reinforced synthetic resinous plastic material. The High Court found that the specification itself indicated that rocket projectors were well-known articles of manufacture and that synthetic resinous plastics were well-known materials. Furthermore, the properties of the plastic materials were known generally from matter published before the priority date. The patent application was refused as 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."

In NV Philips Gloeilampenfabrieken and Another v Mirabella International Pty Ltd 24 IPR 1, claims to low pressure mercury vapour discharge lamps having a luminescent layer comprising phosphors were refused. In this case, it was held that the luminescent qualities of phosphors had long been known in the art.

New Use of an Old Contrivance

The law on new use of old contrivances is set down in Gadd & Mason v The Mayor etc. of Manchester (1892) 9 RPC 516 (1892) 9 RPC 516 at page 524 and was adopted by the High Court of Australia in Willmann v Petersen 2 CLR 1 at page 17. In the former case, Lindley LJ stated:

"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 involved 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."

See also Schwer v Fulham & Robinson 11 CLR 249 and Lister's Application [1966] RPC 30.

Analogous Use

The principle underlying the doctrine of analogous use was stated in British Liquid Air Co. Ltd v British Oxygen Co. Ltd (1909) 26 RPC 509 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".

In Harwood v Great Northern Railway Co. 35 LJQB 27 at page 38 it was stated:

"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."

There are three prerequisites in establishing analogous use:

the use of the device (and not a mere description thereof) must be proved or admitted;
Pope Appliance Corporation v Spanish River Pulp Paper Mills Ltd 46 RPC 23, at page 56.
the device must be used for its ordinary purpose; and
Morgan v Windover (1890) 7 RPC 131.
the circumstances of the use must be truly analogous.
British Liquid Air Co. Ltd v British Oxygen Co. Ltd 26 RPC 509.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.8.17 New Uses

Also in this Chapter:

Key Legislation:

Related Chapters:

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New use of a known substance

New Use of an Old Contrivance

Analogous Use

Amended Reasons