Minding Manners

Claim 1: a method of gathering people together to create joy, comprising the steps of: inviting people to meet at a predetermined location at a predetermined time; giving each person that arrives at the predetermined location, a songbook; and, once there is more than one person with a song book, organising the persons to sing the same song from the songbook, at the same time, thereby forming a choir. 

That claim is almost certainly invalid for (amongst many, many other reasons) failing to meet the requirement that an invention be a “manner of manufacture”. 

Manner of manufacture is an archaic concept that remains in Australian patent law. Effectively it is used to determine whether something is the proper subject of a patent. If it ain’t a manner of manufacture it ain’t a patentable invention. It’s not even considered for novelty or inventive step.

It sounds like something boring and old, and dusty. But in fact it’s new and sexy and was in fact the whole crux of the recent Myriad Case involving the question of whether isolated DNA should be patentable. 

The real question (known only to the most boring of us) was whether the double helix subject of the claims was a manner of manufacture under the Patents Act. 

(You may find it interesting to note that a manner of manufacture is defined in the Act as being “within the meaning of s.6 of the Statute of Monopolies”. If you follow this breadcrumb all you end up with is a piece of legislation enacted in about 1623 which provides for (amongst other things) a manner of “new” manufacture. I have always thought this is a ridiculously unhelpful semi circular definition. Although it does say some other stuff in section 6 of the Statute which is of substance, so I don’t get too worried about it.)

Just as there are different types of surgeons  that specialise in different medical areas (heart, brain, osteo, geriatric), generally speaking, there are different types of patent attorneys. There are the “general purpose” patent attorneys that comprise the engineers (and most of the old ones), and then there are the specialist patent attorneys. The specialists are the Life Science specialists; and the ICT specialists (information and communication technologies). 

Personally, I think that the life science and ICT crew spend far too much of their time worrying about whether their stuff is a manner of manufacture. The life scientists are always embroiled in some DNA case, while the ICT lot are busy considering business methods and other one-click logicks.

To my mind, wouldn’t it be better to just get rid of the manner of manufacture threshold. Most manner of manufacture cases go on and on about artificially created states of affaires and economic outcomes and fields of endeavour. But wouldn’t it be self-correcting?

If a third party is prepared to spend money obtaining and then defending patent rights surely there has been some commercial effect. …?
If a company gets rights to isolated DNA presumably there is some value in the information. That value gives a commercial advantage (in the Myriad case it was tests for breast cancer genes). If that information is new and not obvious then patent it. Why not? 

There are some exemptions to patent infringement in Australia, one of which is experimental use. 

However, the best (and mostly unknown) exemption to infringement in Australia is the one which follows a company taking a good look at an infringing situation and realising it’s not worth their while suing, because the litigation would cost more than the possible dollar return. 

If on balance it’s worth litigating in Australia then the inventions worth protecting I say. 

Patent the methods for investing; the methods for banking; and the human genes worth isolating. After all, patent protection (as exclusive rights) doesn’t last forever; no person owns the invention for more than a couple of decades. Then the invention is publicly available. 

Although I don’t work in this specialist area; so what do I know. Maybe there are instances where this open slather wouldn’t work in Australia. And perhaps, very importantly, some of the specialists would be out of a job.

  

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