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5.6.8.18 Other Issues

Date Published

Contrary to Law

Under s50(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, ordinances, and case law. Examiners should note that refusal under s50(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 s50(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 s50(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.

Food or Medicines being mere Admixtures

Under s50(1)(b), the Commissioner may refuse to accept a patent request and specification relating to a standard patent or to grant a standard patent on the grounds that the specification claims as an invention:

  • a substance which is capable of being used as a food or medicine (whether for human beings or animals and whether for internal or external use) and is a mere mixture of known ingredients; or
  • a process producing such a substance by mere admixture.

By "mere mixture of known ingredients" is meant a mixture exhibiting only the aggregate of the known properties of the ingredients. Not only must the ingredients be known, but the property which makes the ingredients useful for the purpose of the invention must also be known.

"Mixtures" may encompass not only powders or granules, either loosely or in compacted form (for example, a tablet or pill), but also mixtures of liquids or gases and includes suspensions and solutions.

A substance is not excluded from being a mere admixture merely on the basis that the physical form of an ingredient has been changed, for example, a sweet formed from a mixture of sugar and cellulose which has been turned hard by boiling (see the obiter in Ashe Chemicals Ltd (Deadman's) Application [1972] RPC 613 at page 621).

Note that an objection under s50(1)(b) should only be raised in exceptional circumstances. In the case of pharmaceutical preparations, an objection of lack of inventive step should be taken in preference to an objection under s50(1)(b). Similarly, in the case of food, an objection should be taken on the basis of lack of inventive step rather than under s50(1)(b) unless the invention is no more than a simple recipe.

Examination Practice

The concept of “mere admixture” overlaps with inventive step. With inventive step available as a ground of objection under the 1990 Act, this is the more appropriate objection and is consistent with international approaches. Therefore, where there is a reasonable basis for an inventive step objection, this should be taken in preference. A mere admixture objection should be reserved for cases where there is a combination or collocation of very well-known ingredients in a simple recipe (or process of making such by mere admixture), where it can be difficult to obtain documentary evidence to support lack of inventive step or establish a specific motivation to combine the particular ingredients.

An example of where mere admixture may apply is a simple recipe, such as a pizza dough containing particular herbs in the base. The herbs are used in an established and predictable way to change the taste of the dough, without providing any technical advantage over previously known doughs.

Where an objection under s50(1)(b) 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.

General Inconvenience

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 s50(1)(a) (see Contrary to Law above).

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.

Amended Reasons

Amended Reason Date Amended

Published for testing
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