Is your invention a "sausage machine"? Why some great ideas don't make the grade

Promoting innovation

The patent system has an economic role to play in society. It encourages investment, economic growth, knowledge sharing and the efficient use of resources, as well as encouraging the provision of new and improved goods and services that satisfy social needs.

Recognising an inventor's time, effort and ingenuity, the grant of a patent provides a time-limited monopoly over the claimed invention. Without such an incentive, investors may be reluctant to invest, resulting in greater calls on government funding or a failure to develop and exploit new technology.

In providing this monopoly incentive, the patent system must ensure that patent protection is not given to anything that a person with ordinary skill could deduce as an obvious consequence of what is already known to the public.

Clearly an invention that is simply obvious in relation to the existing art would contribute very little, if anything at all, to society. In other words, not all new inventions are patentable, and in the in the following article we look at the threshold of inventive step and what constitutes a "mere collocation of integers".

Novelty and Inventive Step

An invention needs to meet several criteria to be a "patentable invention for the purposes of a standard patent", and in particular must be novel and involve an inventive step when compared with the prior art base as it existed before the priority date of the claims to that invention.

In relation to novelty, the Patents Act defines that an invention is taken to be novel unless it is not novel in light of the prior art base. Put simply, if the prior art has "each and every one of the essential integers"¹ of a claim, then the claim lacks novelty, i.e. is "anticipated". The principles that have developed in the case law around this test are the subject of some colourful metaphors, which are often used as a shorthand description of the requirements for anticipation:

• A prior disclosure will not be novelty-destroying if reading it requires "rummaging through the ... flag locker" to find a flag that the author of the document "possessed and could have planted", but did not.²
• "A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee"³
• "Anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun"⁴.

In terms of inventive step, the Patents Act defines that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art (PSA) in light of the common general knowledge (CGK) before the priority date of the relevant claim when considered alone or together with prior art information. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention.

What is apparent from the tests for novelty and inventive step is that novelty is a relatively narrow enquiry of the prior art, and inventive step involves a qualitative assessment of whether there were routine steps taken to the claimed invention in light of the CGK (and informed by the knowledge and skills of the PSA).

Policy perspectives

It has been long recognised that allowing the patenting of routine modifications of the prior art would be "mischievous to the state, by ... hurt of trade or [being] generally inconvenient"⁵, which would stifle future invention and block future inventors. Accordingly, the patent system must strike a balance to provide the economic benefits discussed above.

The threshold for the granting of a patent, and its associated monopoly, must be sufficiently high, but not so high as to stifle future innovation and potential economic benefit. From the Government review titled "Innovation Powering Ideas: An Innovation Agenda for the 21st Century" the author's state:

"The trick is to get the balance right: too little protection will discourage people from innovating because the returns are uncertain; too much protection may discourage people from innovating because the pathways to discovery are blocked by other intellectual property owners."⁶

The sausage machine case of 1890

For most of the 19th century, English Courts struggled with a patentability standard that required only novelty and utility. The concept of obviousness developed from cases involving a device known for one particular use that was applied to another closely analogous use, i.e. applying existing technology in a different but analogous manner, or to an analogous purpose, which did not really involve anything new.⁷

Following earlier decisions that decided "novelty must show invention"⁸, in Williams v. Nye⁹ the Court of Appeal invalidated a patent on a single machine which merely combined known devices.

The invention in question, a sausage machine, took parts from pre-existing machinery and arranged and combined them in such a way as to create a single machine. The invention included a mincer, used to grind meat as had been known prior, and a filler, used to pack the sausage skin, as also had been known prior. Thus, the claimed "inventiveness" was in the arrangement of the individually known parts to form a [conveyor belt of known functions], but importantly without surprising or unforeseen results.

From the "sausage machine case" (as it has come to be known) it is clear that, in the context of a combination of individually known devices, it is relevant to consider the result that the claimed combination achieves. If a new or improved result is achieved by the co-operation of the claimed integers, then there is patentable subject-matter¹⁰ in that working inter-relation.

Combinations and Collocations

From the principles derived from the "sausage machine" case, for a combination to be patentable there must be a new (i.e. novel) "placing side by side of old integers"¹¹ that have a working interrelationship (i.e. possessing an inventive step), otherwise the combination is a mere "collocation".

If one of those "integers" of the invention is new and inventive itself, then the combination will be patentable¹². For example, a claim to a shaving kit would be allowable if it includes a novel razor, even though the other components of the kit would not form a patentable combination.

Along similar lines, substituting an integer with a technical equivalent will not give rise to an inventive step unless a new combination results¹³, the test for which is whether the essential character of the device or process has been "changed"¹⁴.

Likewise, if an existing device is simply altered but the PSA would have come to it as a matter of routine, it is considered a mere "workshop improvement" and would lack an inventive step.

Key takeaways

It is well established in patent law that, where claimed features result in a mere "placing side by side of old integers" so that each performs its own proper function independently of any of the others, the claimed invention is not patentable, i.e. a "mere collocation of known integers". However, there will be an inventive step when there is an interaction between the integers (i.e. which is "the essential requirement"¹⁵).

Footnotes
¹ Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391
² ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 at [51]
³ The General Tire & Rubber Company v Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486
⁴ Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485 at [91]
⁵ section 6 of the Statute of Monopolies 21 Jac 1 c 1 (1623)
⁶ Page 56
⁷ No novelty was found where the new adaptation was something that naturally suggest to a person turning his mind to the subject, while patents should be awarded only to those new adaptations that require some application of thought and study (Penn v. Bibby (1866) 2 L.R. Ch.127, 136).
⁸ Blakey & Co v Latham & Co (1889) 6 RPC 184
⁹ [1890] 7 RPC 62
¹⁰ i.e., a "manner of manufacture" would be found.
¹¹ British Celanese Ltd v Courtaulds Ltd 52 RPC 171 at pages 193 – 194
¹² and defines a "manner of manufacture"
¹³ Winner & Anor v Ammar Holdings Pty Ltd 25 IPR 273 at page 294
¹⁴ May v Higgins (1916) 21 CLR 119 at page 123
¹⁵ Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 at 266

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.