NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15

High Court of Australia Brennan, Deane, Dawson, Toohey and McHugh JJ NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (FC 95/045) [1995] HCA 15

ORDER Appeal dismissed with costs

Cur adv vult

The following written judgments were delivered:—

9 November 1995 Brennan, Deane and Toohey JJ.

This appeal has been confined to a single issue relating to the significance under s 18(1) of the Patents Act 1990 Cth (the Act) of a finding of the learned primary judge and a majority of the Full Federal Court [1] to the effect that the subject matter of the patent in suit, as disclosed by the specification when read as a whole, was merely a new use of a particular known product. The critical question involved in the resolution of that issue was identified by the appellants (Philips) as being whether the requirement of s 18(1)(a) that an "invention so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies " involves any "residual requirement of newness". For reasons which will appear, we consider that that critical question is more appropriately framed in terms which focus upon s 18(1)'s introductory words " a patentable invention is an invention that ". So framed, the question is whether the effect of those words is to introduce a general threshold requirement of "newness" or "inventiveness" which, if not satisfied, will deny patentability to something which is merely a new use of an old product without need to resort to either s 18(1)(a)'s requirement of a "manner of manufacture" or s 18(1)(b)'s requirements of a comparison with a defined "prior art base". The background facts are set out in the judgment of Dawson and McHugh JJ. We shall avoid unnecessary repetition of them.

1. N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239.