Ranks Hovis McDougall v Controller of Patents

• Jurisdiction: Ireland
• Judge: Mr. JusticeMcWilliam
• Judgment Date: 01 January 1979
• Neutral Citation: 1978 WJSC-HC 3606
• Date: 01 January 1979
• Docket Number: [1976 No. 435 Sp.],No. 435SP/1976
• Court: High Court

RANKS HOVIS v. CONTROLLER OF PATENTS

RANKS NOVIS McDOUGALL LIMITED

.v.

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS.

1978 WJSC-HC 3606

No. 435SP/1976

THE HIGH COURT

1 Delivered on 25th May 1978 by Mr. JusticeMcWilliam

2 This matter comes before me by way of appeal from a decision of the Controller of Patents, Designs and Trade Marks, hereinafter called theController.

3 The Plaintiff's application is stated to be made in respect of an invention for improvement in or relating to micro-organisms with particular reference to new strains of Fusarium graminearum Schabe which has been isolated from a soil sample. The application related both to the strains of the microorganism and to the method of production. The application was granted in so far as the methods or processes of production are concerned but was refused in so far as the strains of the microorganism are concerned.

4 Section 6 of the Patents Act, 1964, at subsection (1) provides that "An application for a patent may be made by any person who claims - (a) to be the true and first inventor of the invention to which the application relates...."

5 Section 2 of the Act provides that the term "invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, and includes an alleged invention and also any newmethod or process of testing applicable to the improvement or control ofmanufacture.

6 Subsection (7) of section 9 of the Act provides that "Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found innature".

7 The value of this microorganism is that it provides edible protein which it is hoped can be developed on a commercial scale to supplement the animal and vegetable sources of protein for food. The Plaintiff has produced this new strain of the microorganism by techniques which were laborious, skilful and expensive. The process of producing this new strain has been described in the affidavits and correspondence before me but it is sufficient to say of it that it entailed the selection of a soil sample from which a microorganism was isolated and that this selected microorganism was then altered by varying the composition of the culture media in which it was grown or "cultivated". The elaborate processes by which the final microorganisms were produced do not occur in nature and I accept that these microorganisms would not occur naturally and, when developed, could not serve the purpose of producing edible protein for consumption unless handled in laboratory conditions and provided with the correct nutrients. On the other hand, they aredescribed in an affidavit filed on behalf of the Plaintiff as "living cells" and I must also accept that they are a form of life, albeit a very low form.

8 The Controller refused to accept the application in so far as it related to the microorganisms themselves as apart from the methods of producing them, on the grounds that they do not constitute "a manufacture or composition of matter" and stated as follows:- "Plants and animal varieties cannot be protected per se under patent law and special acts are used in countries which protect plant and animal varieties. Microorganisms may be a lower order of life than plants or animals but, like them, they are alive and reproduce under favourable conditions. Microorganisms therefore do not come within the scope of the definition of section 2 of the Act"

9 On being urged on behalf of the Plaintiff that the Plaintiff had obtained a British patent in respect of the same organisms, the Controller stated that "the fact that the applicants have got a British patent for the same subject-matter does not determine the matter so far as this office is concerned." This is perfectly correct, but it also appears to me to be irrelevant on this application to consider that othercountries have enactments which give protection to new animal and plant varieties, except in so far as it is relevant on the consideration of decisions of foreign courts in countries which do have suchstatutes.

10 In his decision, the Controller also referred to certain practical difficulties arising if the application were to be granted. This does not appear to me to be a valid objection if I am satisfied that the subject-matter does come within the terms of the statute, and I do not propose to deal with it further.

11 He also referred to...