Patents

Case Note: Advanced Building Systems v Ramset

John Lambert

Sept 1999

This article previously appeared on the Lancaster Buildings  website

This appeal arose from an action for the infringement of a patent for a hoisting attachment and method for erecting prefabricated concrete walls on building sites. The patent had been granted to The Burke Company ("Burke"), the second plaintiff, which had assigned it to Advanced Building Systems Pty Ltd. ("Advanced") the first plaintiff.

The Issues

Advanced and Burke alleged that Ramset Fasteners (Aust) Pty Ltd. ("Ramset") had infringed the patent by selling or letting out on hire two lift systems for tilt-up walls and contravened s. 52 of the federal Trade Practices Act 1974 by failing to inform its customers that the use of components for those systems might infringe their patent. Ramset denied infringement and contravention of the Act and counterclaimed for revocation of the patent. The trial judge dismissed the counterclaim in April 1993 (1993) 26 IPR 171 and the infringement claim in 1995 ([1995] AIPC 91-129) but gave judgment to Advanced and Burke for their claim under the 1974 Act. He granted them an injunction but refused to award them damages. Both sides appealed to the Full Court which revoked the patent on the ground that the invention was not an invention under the Act thereby disposing of the infringement and s. 52 claims which depended on the validity. The plaintiffs appealed to the High Court contending that the Full Court had misdirected itself by considering issues of obviousness, which Ramset had abandoned at trial, and lack of novelty which the judges themselves had put to one side.

The Judgment

The High Court allowed the appeal against revocation and remitted the infringement and s. 52 claims to the Full Court. It found that the Full Court had fallen into error by considering matters that could have arisen under other grounds but which were not before the trial judge or the Full Court. The Full Court appeared to have made two errors. First, it had taken into account advertisements that had been placed in American, German and British publications before the priority date and concluded that once those publications were taken into account "the invention claimed in the Australian patent involved no inventive step." Secondly, it had also held that there was no inventive merit (and therefore no invention within the meaning of the Act) because all the integers of the Australian invention had been revealed. As a result of those errors, it was driven to the conclusion that the invention was a mere collocation of well-known integers and, as such, not "a manner of new manufacture" capable of supporting a patent. In his interesting dissenting judgment Kirby J contended that the statutory definition of an invention which harked back to s.6 of the Statute of Monopolies 1623 imposed a "newness" and "inventiveness" threshold that had to be satisfied before the specific statutory requirements of novelty and obviousness could be addressed. It was that initial threshold rather than the specific ones that the Full Court must have had in mind.

Relevance to the United Kingdom

S.100 (1) (d) of the Australian Patents Act 1952 was similar to, but not on all fours with, s.32 (1) (d) of the British Patents Act 1949. Both statutes have been repealed in their respective countries and replaced by provisions enabling the revocation of a patent if the invention is not a patentable invention. S. 138 (3) of the Australian Patents Act 1990 provides:

"After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground:
………..
(b) that the invention is not a patentable invention ….."

The language of s. 72 (1) (a) of the Patents Act 1977 is similar:

"(1) Subject to the following provisions of this Act, the court or the comptroller may on the application of any person may by order revoke a patent for an invention on (but only on) any of the following grounds, that is to say –
(a) the invention is not a patentable invention…."

The High Court held that the new Australian provision differs significantly in structure from s.100 (1) (d) of the old Act in that it does not distinguish obviousness and novelty but incorporates the elements, including novelty and inventive steps, that were found separately in separate paragraphs of s.100 (1). That is also the case under s.72 (1) of the new British Act. Interestingly, the new Australian legislation, like its predecessor, defines an invention by reference to s.6 of the Statute of Monopolies 1623. The Patents Act 1977 contains no such definition because it is based "as nearly as practicable" on art 52 of the European Patent Convention. According to Lord Hoffmann in Biogen Inc. v Medeva Plc [1997] RPC 1, there is no definition in that Convention because the parties were unable to agree one. However, His Lordship continued that the reason why they were content to do without a definition was that they recognized that the question would almost invariably be academic as the four conditions of s.1 (1) of the 1977 Act probably contain every element of the concept of an invention in ordinary speech. His Lordship said "probably" because he could not rule out the possibility that something might satisfy all those conditions but still not be an invention.

 

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