NRDC case

Posted by Anton Hughes on Friday, April 15, 2005 with No comments
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252

Per Aicken QC on behalf of the appellant:

"A new and not obvious physical means of producing a result, not necessarily in a physically tangible form, which is commercially useful, the result being either direct or indirect, is properly described as being a manner of manufacture; one cannot find a short simple automatic test like the vendible product test." (at 257)

Per McInerney QC for the respondent:

"The original policy of the Statute was to restrict the grant of monopolies and empower their grant in a limited field, viz., that of manufacture." (at 258)
Hickton's Patent Syndicate v Patents and Machine Improvements Co Ltd (1909) 26 RPC 339 per Fletcher Mouton LJ: "To say that the conception may be meritorious and may involve invention and may be new and original, and simply because when you have once got the idea it is easy to carry it out, that that deprives it of the title of being  new invention according to our patent law, is, I think, an extremely dangerous principle and justified neither by reason nor authority".

At 268: "The central question in the case remains. It is whether the process that is claimed falls within the category of inventions to which, by definition, the application of the Patents Act is confined. The definintion, it will be remembered, is exclusive: invention means any manner of new manufacture the subject of letters patent and grant of privilege within s.6 of the Statute of Monopolies."
At 268-269: "Section 6 of the Statute of Monopolies provides that the declarations of invalidity contained in the preceding provisions of the Act "shall not extend to any letters patents and graunts of privilege ... hereafter to be made of the sole working or makinge of any manner of new manufactures within this realme, to the true and first inventor and inventors of such manufactures, which others at the tyme of makinge such letters patents and graunts shall not use, so as alsoe they be not contrary to the lawe or mischevious to the state by raisinge the prices of comodities at home, or hurt of trade, or generallie inconvenient"
"The inquiry which the definition demands is an inquiry into the scope of the permissible subject matter of letters patent and grants of privilege protected byt he section. It is an inquiry not into the meaning of a word so much as into the breadth of the concept which the law has developed by its consideration of the text and purpose of the Statute of Monopolies"
Anton: It seems that the court in this case assume a consistent trend towards widening of the scope of the concept of manufacture over time. See the bottom of p269 and top of 270.
Maeder v Busch (1938) 59 CLR 684, at 706:  "a widening conception of the notion has been a characteristic of the growth of patent law" (actual quote from NRDC at 270).
Anton: But does this mean that we should just accept this widening, given that the original purpose of the Statute was to limit monopolies awarded by the Crown?
At 270: "By 1842 it was finally settled that "manufacture" was used in the Statute of Monopolies in the dual sense which comprehends both a process and a product: Crane v Price. But a question which still appears to await final decision is 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."
At 271: "The truth is that any attempt to state the ambit of s.6 of the Statute of Monopolies by precisely defining "manufacture" is bound to fail... To attempt to place upon the idea the fetters of an exact verbal formula could never have been sound."
Anton: So then that is exactly what they went on and did - created a verbal formula, albeit a lax one which almost removes the test entirely.
(at 272) Re Rantzen's case: "internpreting [Morton J's] expression 'vendible product' in a sense wide enough to include electrical energy, despite its non-materia character, because of its analogy, in commercial respects, with material commodities".
At 275: "The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies  has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art... that its value to the country is in the field of economic endeavour."
"The exclusion of methods of surgery and other processes for treating the human body may well lie outside the concept of invention because the whole subject is conceived as essentially non-economic: see Maeder v Busch (1938) 59 CLR 706."
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