Patents: The Need for New or Useful Results!

Milton Edgar Anderson [2008] APO 19 (11 August 2008) http://www.austlii.edu.au/au/cases/cth/APO/2008/19.html

In a recent decision of the Patent Office, the Deputy Commissioner has re-affirmed the view that scientific theories or discoveries of the laws of science without a specific practical and useful application are not patentable.

The claimed invention related to a “the new science of subtronics” and “a new law of electric induction” that, allegedly, stemmed from the discovery of electrosubtronic fields.

The claimed invention was rejected.

Specifically, the Deputy Commissioner found that the claimed invention was not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies as required by section 18(1)(a) of the Act. To support the decision, the following passage was cited from Lane Fox v Kensington and Knightsbridge Electric Lighting Company (1892) 3 Ch. 424 at 428,429:

".....a man who discovers that a known machine (his Lordship might equally have said a known substance) can produce effects which no one before him knew could be produced by it has made a discovery, but has not made a patentable invention unless he so uses his knowledge and ingenuity as to produce either a new and useful thing or result, or a new and useful method of producing an old thing or result."