IN THE MATTER OF PHILIPS ELECTRICAL INDUSTRIES LD.'S APPLICATION FOR A PATENT

341 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1959.] 31ST DECEMBER, 1959 [No. 14 IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION Before THE SUPERINTENDING EXAMINER 20th September, 1956. IN THE MATTER OF PHILIPS ELECTRICAL INDUSTRIES LD.'S ApPLICATION FOR A PATENT. 5 Application for Patent-Manner of manufacture-Objection by the Examina that a claim tor a method of producing light was not for an invention within the meaning oj Sec. 101 of the Act-Objection upheld-Claim deleted-Patents Act, 1949, Sec. 101. 10 G.E.C.'s Application (1943) 60 R.P.C. 1 and Cementation Coy. Lds.' Applica(1945) 62 R.P.C. 151 considered; Rantzen's Application (1947) 64 R.P.C. 63 distinguished. tion~ These proceedings were in respect of Philips Electrical Industries Ld.'s Application No. 28567/54, subsequently accepted under Serial No. 774,314 after the claim 15' objected to had been deleted. The subject matter of the Application and the issues involved appear sufficiently from the decision of the Superintending Examiner, Mr. 1. V. Hudson, acting for the Comptroller-General, dated 16th November, 1956, which was as follows:This application is entitled "Improvements in or relating to methods of dnd 20 "device for producing electro-luminescence". The Examiner has objected that the invention claimed in Claim 1 of the complete specification does not comprise a manner of new manufacture within the meaning of Sec. 101 of the Act. The matter came before me at a hearing on the 20th September, 1956, at which the Applicants -yvere represented by their 25 Agent, Mr. Doucy. The invention relates to a known means for produoing light by the use of materials which emit visible radiation under the action of an alternating electric field. Claim 1 reads:" A method of producing light by electro-luminescence which method comprises 30 "the steps of applying to an electro-Iuminiscent element comprising a thin layer "of electro-luminescent material sandwiched between two electrodes a voltage " which consists of a succession of pulses having very steep flanks, each pulse being (+' "followed by a period which is long in relation to the duration of the voltage "pulse and during which period the voltage is zero. or low relativ~ to the pulse 35 "voltage, while the voltage across the electrodes IS always sufficlently low to "prevent a conduction current flowing in the luminescent material." 88605 2H 342 No. 14] REPORTS OF PATENT, DESIGN,· AND TRADE MARK CASES [1959.] In the Matter of Philips Electrical industries Ld.Js Application for a Patent There are ten other claims relating to devices for producing luminesence but no objection has been raised against these. The Examiner pointed out, and Mr. Doucyagreed,. that the product produced by the method of Claim 1 was radiation visible ~o the human eye, a product which I shall hereinafter refer to as "visible light". The Examiner contended 5 that such light was not a vendible product, and hence the method claimed was not a manner of manufacture within the meaning of the Act, because it was not within the" rule" which was stated by Mr. Justice Morton, as he then was, in G.E.C.'s Application (1943) 60 R.P.C.1, and which reads" In my view a method " or process is a manner of manufacture if it (a) results in the production of some 10 " vendible product or (b) improves or restores to its former condition a vendible "product, or (c) has the effect of preserving from deterioration some vendible "product to which it is applied ". Mr. Doucy submitted that light was a vendible product, and in support of this he referred to those radiations similar to visible radiations but known as ultra- 15 violet "light" and infra-red "light", which are used in medical treatment for which treatment payment is made. He also stated that it was known in electricity accounting to charge the consumer separately for electricity used for heating and for lighting respectively. Mr. Doucy relied on Rantzen's Application (1947) 64 R.P.C. 63, where a claim was allowed for a method of producing complex 20 oscillations. He also pointed out that the phrase "vendible product" is not used in the Act itself. !he G.E.C. "rule" has been t~e subject of consideration by the Patents Appeal Tnbunal On a number of occaSlOns. The reports of two such cases comprise remarks which seem to me to be particularly pertinent to the present issue. One is the Cementation case, (1945) 62 RP.C. at p. 154, and the other is the case cited by Mr. Doucy, viz. Rantzen's Application, supra at p. 66. In the former, Evershed, J., as he then was, stated" In my judgment, Morton L.J. in the G.E.c.. "case was primarily directing his attention to the question whether and to what " extent a manufacture extended to processes not resulting in the creation of some "new articles which did not previously exist. The emphasis is therefore upon "the three activities of (a) production, (b) improvement or restoration and (c) "prevention from deterioration." In using the noun "product" to denote the subject matter of each of the three kinds of activity the learned Lord Justice was not in my opinion using a convenient and compendious term to indicate the article or material resulting from the activity, and was not intending to limit by reference to what may be the common acceptation today of the word" product ". that which results from a "manufacture". In the Rant~:en application Mr. Justice Evershed stated "I enquired during the course of the argument what was the "origin of and sanction for the formula 'vendible product '. I am inclined "to think that it took its origin from the need to exclude from the scope of the "Patents Acts processes the result of which, however use:ul, could not be con"templated as falling within their ambit, for example, methods or processes of "treating diseases of the human body ... , In the great majority of cases at "any rate, the use of the phrase 'vendible products' in reference to the result " of the process of manufacture aptly assists in the true interpretation of the word " , Manufacture' by laying proper emphasis upon the trading or industrial character .. of the processes which are intended to be comprehended by the Acts. Never"theless the phrase does not occur in the Acts themsdves. . .. The problem "always remains one of the applications of the facts of the particular case of " the statutory phrase' Manner of new manufacture '. I conclude, therefore, that "it would not be right, nor, as I think, in accordance with Morton J.'s intention, 25 30 35 40 45 50 343 [1959.] REPORTS OF PATENT, DESlGN, AND TRADE MARK CASES [No. 14 In the Matter of Philips Electrical Industries Ld.'s Application for a Patent 5 10 15 20 25 "to give to the term' vendible product' a narrow or rigid construction by placing "undue emphasis on the material requirements of what may otherwise fairly be " regarded as the outcome of a process of manufacture". It is clear, therefore, that in 4etermining whether or not a par (...truncated)