National Research Development Corporation v Commissioner of Patents

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National Research Development Corporation v Commissioner of Patents
Coat of Arms of Australia.svg
Court High Court of Australia
Decided 6 December 1959
Citation(s) [1959] HCA 67, (1959) 102  CLR  252
Court membership
Judge(s) sitting Dixon CJ, Kitto and Windeyer JJ

National Research Development Corporation v Commissioner of Patents, also known as the NRDC case, [1] was a significant Australian patent law case, decided in the High Court of Australia on 6 December 1959. The case was important in clarifying what is meant by "manner of manufacture" in respects of patent applications in accordance with the Patents Act 1952 (Cth). [2]

Australian patent law is law governing the granting of a temporary monopoly on the use of an invention, in exchange for the publication and free use of the invention after a certain time. The primary piece of legislation is the Patents Act 1990. Patents are administered by the Commonwealth Government agency IP Australia. Australia is a member state of the World Intellectual Property Organization (WIPO), and compliant with Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). This makes Australian patent law broadly comparable with patent law in other major countries.

High Court of Australia supreme court

The High Court of Australia is the supreme court in the Australian court hierarchy and the final court of appeal in Australia. It has both original and appellate jurisdiction, the power of judicial review over laws passed by the Parliament of Australia and the parliaments of the states, and the ability to interpret the Constitution of Australia and thereby shape the development of federalism in Australia.

Contents

Facts

The National Research Development Corporation (NRDC) discovered a new method to apply known chemicals to the soil so as to kill weeds but not the crops. The chemicals were known to science but were never used in the process of eradicating weeds. NRDC applied for a patent for the new process.

The National Research Development Corporation (NRDC) was a non-departmental government body established by the British Government to transfer technology from the public sector to the private sector.

Patent set of exclusive rights granted by a sovereign state to an inventor or their assignee so that he has a temporary monopoly

A patent is a form of intellectual property. A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. The patent rights are granted in exchange for an enabling public disclosure of the invention. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce his or her rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.

The Commissioner of Patents rejected the application on the grounds that it was not a "manner of manufacture" under section 6 of the Statute of Monopolies because

Statute of Monopolies

The Statute of Monopolies was an Act of the Parliament of England notable as the first statutory expression of English patent law. Patents evolved from letters patent, issued by the monarch to grant monopolies over particular industries to skilled individuals with new techniques. Originally intended to strengthen England's economy by making it self-sufficient and promoting new industries, the system gradually became seen as a way to raise money without having to incur the public unpopularity of a tax. Elizabeth I particularly used the system extensively, issuing patents for common commodities such as starch and salt. Unrest eventually persuaded her to turn the administration of patents over to the common law courts, but her successor, James I, used it even more. Despite a committee established to investigate grievances and excesses, Parliament made several efforts to further curtail the monarch's power. The result was the Statute of Monopolies, passed on 29 May 1624.

NRDC appealed under s. 49(4) to the Court as the Appeal Tribunal for the purposes of the Act. The case was argued before a Full Court.

The complete specification in the present case contains six claims. Those numbered 4, 5 and 6 are for selective herbicidal compositions, and are not here in question. Claims 1, 2 and 3 are in these terms:

  1. A method for eradicating weeds from crop areas containing a growing crop selected from leguminous fodder crops of the genera Trifolium and Medicago, celery and parsnip.
  2. A method for the control of weeds of the type of charlock, creeping thistle and annual nettle in a lucerne (alfalfa) crop.
  3. A method for the control of weeds of the type of charlock, creeping thistle and annual nettle in a clover crop.

The Commissioner did not consider the new process a manner of manufacture and argued that the definition of invention is restricted to vendible products and processes for their production, and excludes all agricultural and horticultural processes.

The appellant (NRDC), argued that the new process can be considered a "manner of manufacture" subject to the definition in the Patents Act 1990 and grant of privilege under s. 6 of the Statute of Monopolies if a process produces, either immediately or ultimately, an economically useful result.

Issues

The issue for the court was to determine if this new process of weed – killing constituted a "manner of manufacture" and could therefore be considered a patentable invention.

The court had to consider whether it is enough that a process produces a useful result or whether it is necessary that some physical thing is either brought into existence or so affected as the better to serve man's purposes.

(a) results in the production of some vendible product or
(b) improves or restores to its former condition a vendible product or
(c) has the effect of preserving from deterioration some vendible product to which it is applied [6]

The outcome of the NRDC case, reduced these rules to guidelines and the notion of "vendible" and "product" should be given a broad interpretation, pursuant to the broad interpretation of "manner of manufacture" in section 6 of the Statute of Monopolies.

Decision

(i) Processes may be patented provided that it produces a material advantage and has a new and useful effect that produces a physical product. [7]

(ii) NRDC's new process made use of existing chemicals that had never been used in eradicating weeds. A new use of a known substance is patentable provided the use takes advantage of a previously unknown property. [8] That is it must be used in a way that it has never been used or thought to use previously. Therefore, in this case, it is the process not the article that constitutes the invention. [8]

(iii) The outcome of this new process was only arrived at by scientific ingenuity and research and is considered a vendible product because it created an artificial state of affairs in respect of weeds and crops and achieved an economically useful result.

(iv) Agricultural and horticultural processes are not outside the limits of patentable inventions provided they are not excluded by any other of the "traditional principles" as in the case of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, [9] and the new agricultural and horticultural processes produce a new and useful product. [10]

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References

  1. 1 2 National Research Development Corporation v Commissioner of Patents (NRDC case) [1959] HCA 67 , (1959) 102 CLR 252(6 December 1959), High Court.
  2. 1 2 Patents Act 1952 (Cth).
  3. ↑ Re Application by Standard Oil Development Co (1951) 68 RPC 114. LawCte records
  4. ↑ Commissioner of Patents v Microcell Ltd [1959] HCA 71 , (1959) 102 CLR 232(10 September 1959), High Court.
  5. ↑ G.E.C.'s Application (1943) 60 RPC 1. LawCte records
  6. ↑ IP Australia 2009, Patent Manual of Practice and Procedures 2.9.2.2
  7. ↑ Lexis Nexis, Australian Encyclopedia of Forms & Precedents, (at 16 September 2009), Patents, [1596–1675]
  8. 1 2 IP Australia 2009
  9. ↑ NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15 , (1995) 183 CLR 655(9 November 1995), High Court.
  10. ↑ IP Australia 2009, 2.9.2.15
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