CCOM v Jiejing (1994) 51 FCR 260

Posted by Anton Hughes on Friday, July 15, 2005 with No comments
At 264: Of the Jacobean phrase, it has been said that since the NRDC case it has been treated as calling for a decision as to what properly falls within the scope of the patent system, rather than  as providing an occasion for investigating the meaning of "manufacture"; WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (1st ed, 1981), p166. Cornish continues (at pp 167-168) that two main ideas recur when distinguishing categories of subject matter which may not be patentable. One is that techniques which related to living organisms (including humans) may call for special treatment... [265] The other recurrent theme is that "intellectual conceptions become patentable only to the extent that they have been embodied in technical applications". The present appeal concerns this second aspect.
At 286: [T]he primary judge found against the appellants on [the manner of manufacture issue]. His holding appears in the following passage (at 594):
The material feature of the claimed combination is the means by which Chinese characters are categorised by stroke-type category and stroke order ... and the use of such criteria to retrieve and display Chinese characters. That is, the procedures used to organise and process the data. The other integers of programming and computer hardware are merely conventional means to produce the desired result. ... The formulation of such criteria and their use as rules to organise and process data stored in a database in a conventional computer are the product of human intellectual activity lying in the fine arts and not the useful arts. The claim disposes no method of manufacture within the meaning of section 6 of the Statute of Monopolies and therefore discloses no patentable invention.
The appellants challenge that holding. They renew their submission, rejected by the primary judge, which his Honour had restated as follows:
The [appellants] submit the claim in the petty patent was a combination claim for a new apparatus. The apparatus was a computer processing apparatus for assembling text in Chinese language characters [287] which produces a particular result, namely, the retrieval and display of Chinese characters on screen for assembly in text. Although a number of the integers represented conventional and known computer hardware, display and processing systems including standard processing programs, the combination of those integers was a computer program or apparatus or programs supplying the Chinese character database, stroke-type category criteria and graphic display of Chinese characters created, when programmed, a new machine which operated in accordance with the steps detailed in the claim. It was submitted that the production of some useful effect, in this case the asembly of Chinese characters on a visual display unit, was sufficient to constitute the computer as programmed an invention under the 1990 Act.
At 287: The NRDC case (supra) remains of considerable importance in this field. It is to be noted that the decision changed the direction of the case law not only in Australia, but also in the United Kingdom. Accordingly, British decisions given before the commencement of the 1977 Act remain of particular significance in Australia when construing the 1990 Act. In both countries NRDC was, as Barwick CJ put it in [Joos], a watershed.
At 286: Section 1(2) of the [1977 British Act] declares not to be an invention for the purpose of the statute, anything which consists of: ... (c) a scheme, rule or method of performing a mental act, playing a game or doing business, or a program for a computer. ... However, the subsection goes on to provide that the exclusion operates "only to the extent that a patent or application for a patent relates to that thing as such".
At 289:  In Australia, when the 1952 Act was replaced by the 1990 Act, the new British legislation was not followed. ... This was a matter of deliberate legislative choice. The materials which make this plain are collected and discussed by Burchett J in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 267-270.
Our task thus involves consideration of concepts which have evolved, and are still evolving, in accordance with the classic decision in the NRDC case... [T]he right question thus becomes, is this a proper subject of letters patent according to the principles which have been developed for the application of s 6 of the Statute of Monopolies? The question is to be answered bearing in mind that the term "manufacture" has applications beyond limits suggested by its etymology, and that any attempt at precise definition of "manufacture" in s 6 is bound to fail. In the NRDC case (at 271), Dixon CJ, Kitto and Windeyer JJ said, in a passage which warrants repetition:
The purpose of section 6, it must be remembered, was to allow the use of the prerogative to encourage national development in a field which already, in 1623, was seen to be excitingly unpredictable. To attempt to place on upon the idea the fetters of an exact verbal formula could never have been sound...
At 290: [T]the phrase "any manner of new manufactures" has been interpreted over time in such a way as to contain within it distinct principles or doctrines concerned with patentability: Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd (1993) 26 IPR 171 at 188-190, per Hill J... The essential point is that the grounds of revocation were capable of development by the common law and did so develop: American Cyanamid Co (Dann's) Patent [1971] RPC 425 at 435-436 (Lord Reid), 448-449 (Lord Wilberforce).
...
As this development continued, the phrase "manner of new manufactures" came to represent the residuum of the central concept with which NRDC was concerned, namely what the High Court called the relevant concept of invention.
At 291: [I]n the 1990 Act, manner of manufacture, novelty, inventiveness and utility are stated as distinct requirements of a patentable invention... Yet in the present case there are passages in the reasons of the primary judge (at 593) which suggest he was influenced in the determination of the issue as to "manner of manufacture" by asking whether what was claimed involved anything new and unconventional in computer use.
...
[A]fter the NRDC case the criterion of "manner of manufacture" has required a decision as to what properly and currently falls within the scope of the patent system. ... [I]n so far as "manufacture" suggests a "vendible product", this is to be understood as covering every end produced or artificially created state of affairs which is of utility in practical affairs and whose significance thus is economic (NRDC at 276-277).
...
In his article "Computers and the Law: The Protection of Intellectual Property" (1978) 9 Federal Law Review 15, Professor Lahore said at 15:
"The impact of computer technology on the law of intellectual property has raised legal problems which have proved difficult if not impossible to answer within the framework of existing legal concepts..."
In the period that has followed the response has been to make provision in the copyright law. This has been done by the courts and then by the legislature, despite the basic propositions that functionality is not a proper object of copyright protection and that the dominant principle of copyright law is that protection is given not for ideas but only for the particular form of expression: Accounting Systems 2000 (Developments) Pty Ltd v CCH Australia Ltd (1993) 42 FCR 470 at 496-497.
This development has been criticised, not the least because the length of the copyright term greatly exceeds the period for which protection is necessary, given the apparently short life of even the most successful programs: see the article by H L MacQueen "Extending Intellectual Property: Producers v Users" (1994) 45 NILQ 30 at 33-44. Further, in [292] Australia the Circuit Layouts Act 1989 (Cth) reflects the United States legislation of 1984 and creates a new species of intellectual property protection of certain layouts for integrated circuits.
What then of patent law in Australia? Professor Lahore pointed out (at 22-23):
"Some matter has never been considered to constitute a patentable invention. This matter includes a method of calculation or a process of mathematical operations, [including ways of solving mathematical problems], business, commercial and financial schemes, schemes of operation, and printed sheets, cards, tickets or the like which are mere records of intelligence."
A distinction also has been drawn between the discovery of laws or principles of nature and the application thereof to produce a particular practical and useful result. A reason why the former has not been treated as a proper subject of patent according to the principles developed pursuant to the Statute of Monopolies was considered as long ago as 1852 in Carpmael, "The Law of Patents for Inventions" (5th ed), pp 42-43:
"[Such] discoveries are not of that kind which should secure to them the right of toll on all future practical applications of such principles; such a course would lead to endless difficulties, and tend to prevent those rapid strides to improvements by which the existence of the present law has been marked..."

The last case relating to computer programs decided in the United Kingdom before the commencement of the 1977 Act was that of the two patent judges, Graham and Whitford JJ, sitting as the Patents Appeal Tribunal in International Business Machines Corporation's Application [1980] FSR 564. ... The software was a program designed to calculate automatically the selling price of stock or shares by comparing a set of buying and selling orders. It was accepted that the scheme was not itself novel, and that a completely standard computer could be programmed to perform it. Nevertheless, their Lordships, speaking as specialist judges of long experience in the field, held that the patent was good. They said (at 572) that what the inventor sought to claim was a method involving the operation or control of a computer, such that it was programmed in a particular way to operate in accordance with the inventor's method. More than "intellectual information" was involved because the method was involved in the program and in the apparatus in physical form.
[Meanwhile, back at the ranch, the UK legislation abolished software patenting in 1977 in accordance with article 52 of the European Patent Convention].
At 293: However, in Australia the legislature made no such provision when enacting the 1990 Act. Thus, in our view there is significant guidance to be obtained from the course of decisions in Britain before the new legislation with the application in this field of the principles expounded in the NRDC case.
At 294: Counsel accepted that many of the old cases which may have been treated in the texts under the heading of "manner of new manufacturer" would now be treated as decisions upon degree of inventiveness, that is to say obviousness.
Rather, counsel for the respondents drew upon Philips for a narrower proposition. This was that there could be no manner of manufacture in identifying "basic characteristics" or "desiderata" and "to claim all ways of achieving [them]". Applying that to the present case, it was submitted that all that had been done was to select a desirable characteristic of a computer program, the ability to search, in the manner described, a data base of the type described, and "to claim all computers present and future possessing that characteristic".
That submission should not be accepted.
At 295: Once full weight is given to the reasoning in the NRDC case and to other decisions, including those of the Patents Appeal Tribunal in England before the commencement of the 1977 Act, it follows that the Petty Patent should not have been held invalid on the footing that the claim was not for a manner of manufacture within the meaning of s 18(1)(a) of the 1990 Act.
The NRDC case at 275-277 requires a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour. In the present case, a relevant field of economic endeavour is the use of word processing to assemble text in Chinese language characters. The end result achieved is the retrieval of graphic representations of desired characters, for assembly of text. The mode or manner of obtaining this, which provides particular utility in achieving the end result, is the storage of data as to Chinese characters analysed by stroke-type categories, for search including "flagging" (and "unflagging") and selection by reference thereto.