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New use of an old product

A patentable invention is defined as ‘a manner of manufacture within the meaning of section 6 of the Statute of Monopolies’ [1], while an invention according to Schedule 1 is any manner of new manufacture subject. The patentable subject matter therefore has be fall within the notion of manner of manufacture and manner of new manufacture. As demonstrated from the NRDC case [2], the word ‘manufacture’ is an evolving concept that expands to new technology as long as they are commercially viable. The notion of ‘manner of new manufacture’ is demonstrated through case laws.

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For new uses of old product or substances, there may be patentable processes if the new use exploits a previously unknown property of a substance or material [3, 4]. With much hype surrounding the upcoming release of Apple’s iPhone 6, one of the new features is the adoption of support for near-field communication technology. Judging from the patent lodged by Apple not long ago, is the combination of near-field communication and fingerprint sensor in the home screen button. On the outset it appears as if Apple has just combined two existing technology, but closer examination of the actual patent reveals that it is the clever circuitry inside in overcoming challenges of not blocking wireless component by conductive structure under tight space constraint that warranted the granting of the patent [5]. This ‘new use’ can be contrasted with the ‘new use’ in cases where known properties of an old product or substance have been exploited for new applications that do not constitute a manner of new manufacture [6]. For example, claims that involved applying an existing knowledge of tube shape and properties of reinforced plastic for an use previously thought unsuitable is rejected [7]. Similarly was the case with taking two already known characteristics from traditional fluorescent light bulbs and applying them to the CFLs [8].

[1]Patents Act  1990 (Cth) s 18(1)(a).

[2]National Research Development Corp v Commissioner of Patents (1959) 102 CLR 252.

[3] Baker & Co’s Patent (1942) 59 RPC 138.

[4] L & G’s Application (1940) 58 RPC 21.

[5] Electronic Device with Shared Near Field Communications and Sensor Structures US20130231046.

[6] Asahi Kasei Kogyo Kabushiki Kaisha v WR Grace & Co [1992] AIPC 90-8047.

[7] Commissioner of Patents v Microcell (1959) 102 CLR 232.

[8] NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1995] HCA 15.

 

Please contact our Sydney team if you wish to find out more on patentability of your invention.

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