This was an appeal to the High Court from opposition proceedings. The appellant failed to overturn the first instance decision finding against prior publication, obviousness and not an invention. There the invention was for the method of applying the nitrification inhibitor DCD to grazed pasture soil so as to reduce nitrate and cation leaching, reduce nitrous oxide emissions and increase pasture production. A noteworthy part of the judgment was Courtney J’s rejection of the contention that this was not an invention as defined by s2 of the Act. It was claimed that the invention was a mere discovery, an elucidation of how a nitrification inhibitor works and that this was not the proper subject matter for an invention.

At first instance the Assistant Commissioner had found that the use of the method solved longstanding problems and had economic significance. The Court noted that the enlarged Board of the European Patent Office in Mobil Oil Corp v Chevron Research Co (Decision G02/88 [1990] Official Journal EPO 93) had held that a patent could be granted for the new use of an oil additive to reduce friction, the additive previously having been used for inhibiting rust. Acknowledging that if a claimed invention relates only to a discovery, it would not support a patent, the EBA nevertheless held that a patent could be granted if the proper interpretation of the claim was the achieving of a new technical effect which underlay the new use. The appellant argued that the New Zealand Court should not adopt the approach taken in Mobil and that the principle of technical effect articulated in the decision had not been approved by any subsequent Court.

Courtney J however noted that in New Zealand the Court of Appeal inPharmaceutical Management Agency v Commissioner of Patents([2000] 2 NZLR 529) had determined that Swiss form claims were valid under the Patents Act and had not accepted the difficulties said to arise from the Mobil approach. Courtney J found that theRavensdown’s claim advanced the use of an existing compound in a new way and for new purposes:

Its claim is of the type considered to be valid in both NRDC and Mobil. There has never been criticism of the NRDC decision. In view of the comments in Pharmaceutical Management Agency and Actavis I am satisfied that the Mobil approach is both consistent with NRDC and valid in New Zealand.