Acushnet Company v Spalding Australia Pty Ltd
[1990] FCA 349
•16 JULY 1990
Re: ACUSHNET COMPANY
And: SPALDING AUSTRALIA PROPRIETARY LIMITED
No. V G298 of 1989
FED No. 349
Practice and Procedure
18 IPR 364/96 ALR 493/(1990) AIPC para 90-720
COURT
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Northrop J.(1)
CATCHWORDS
Practice and Procedure - intellectual property - existence of earlier interim decision of Commissioner of Patents - whether appeal from subsequent decision based upon amended claims of invention competent.
Patents Act 1952 Sections 34, 35, 40, 52, 59, 60, 62, 66, 77 to 84, 146 and 150
Federal Court of Australia Act 1976 Sections 19 and 20
Federal Court Rules Order 54B, Rules 2, 4, 5, 6 and 7
HEARING
MELBOURNE
#DATE 16:7:1990
Counsel for applicant: Dr Emmerson QC with Mr G. Clarke
Solicitors for applicant: Freehill, Hollingdale and Page
Counsel for respondent: Mr J. Lyons QC with Mr J. Middleton
Solicitors for respondent: Arthur Robinson and Hedderwicks
ORDER
On the motion of Spalding Australia Pty. Ltd. notice of which is dated 6 April 1990 the Court orders:
1. That apart from the order sought in paragraph 1, the motion is refused with costs including any reserved costs on the motion.
2. That the respondent have leave to appeal from this order.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
JUDGE1
The respondent, by motion, raises a small but important question relating to the practice and procedure of the Court in the hearing of an appeal from a decision made by the Commissioner of Patents under s.60 of the Patents Act 1952. The question relates to the competency of an appeal to the Federal Court under s.60 and can be stated generally. In opposition proceedings under s.60, the Commissioner decides that an opponent to the grant of a patent, has established one or more of the grounds of opposition specified in sub-section 59(1) but, instead of refusing the grant, allows the applicant a specified time within which to request leave under s.77 to amend his complete specification. This decision can be described as the interim decision under s.60. The applicant makes the request, which is granted, whereupon the applicant amends his complete specification. Thereafter in opposition proceedings under s.60 based on the amended complete specification, the Commissioner decides that the opponent has established one or more of the grounds of opposition specified in sub-section 59(1) but, instead of refusing the grant, allows the applicant a specified time within which to request leave under s.77 to amend his complete specification. This decision can be described as the final decision under s.60, although it is in the same form as the interim decision, since the applicant does not request leave to amend his complete specification but under s.60 appeals to the Federal Court from that decision. The question would be the same if the Commissioner had, by the final decision, refused the grant and the applicant had appealed to the Federal Court from that decision. In either event, the question is whether the appeal from the final decision is competent.
Before turning to the particular facts of this case a reference should be made to the general structure of the Patents Act. Part IV, comprising sections 34 to 58AA, is headed "Applications for Patents". It contains detailed provisions relating to the making of applications for patents and procedures to be applied following the making of applications. For present purposes, it is sufficient to say that s.34 empowers a person to make an application for a patent in the form required by s.35. Under paragraphs 35(1)(d) and (f), if the application is for a standard patent, it must be accommpanied by either a provisional specification or a complete specification. This motion arises from an application for a standard patent accompanied by a complete specification. Sub-sections 40(1) and (2) are as follows:-
"40. (1) A complete specification-
(a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and
(b) shall end with a claim or claims defining the invention.
(2) The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification."
Particular attention is directed to paragraph 40(1) (b) namely that the specification shall end with a claim or claims defining the invention. It is not necessary, for present purposes, to refer to the variety of matters thereafter referred to in Part IV. It is sufficient to say that in due course the Commissioner may accept the application and complete specification whereupon the acceptance is notified in the Official Journal.
Part V of the Act, comprising section 59 and 60, is headed "Opposition" and contains provisions enabling a person interested to oppose the grant of a patent. The parts of s.59 and s.60 relevant for present purposes are set out:-
"59(1) The Minister or a person interested may . . . by notice in writing lodged at the Patent Office, oppose the grant of the patent on one or more of the following grounds, but on no other ground:
(a) . . . " (emphasis added).
There are then set out 9 grounds identified as paragraphs (a) to (i) which are the only grounds on which the grant can be opposed.
"60.(1) Where a notice of opposition is given under section 59, the opponent shall serve a copy of the notice on the applicant, and the Commissioner shall, after hearing the applicant and the opponent, if desirous of being heard, decide the case.
(2) In so deciding the case the Commissioner may take into account a ground of opposition specified in section 59 whether relied upon by the opponent or not.
(3) . . .
(4) . . .
(5) The applicant, and an opponent who, in the opinion of the Federal Court is entitled to be heard in opposition to the grant, may appeal to the Federal Court from a decision of the Commissioner under this section."
Section 62 provides that if there is no opposition to the grant of a standard patent, or, in case of opposition, if the Commissioner's decision, or the decision on appeal from the decision, is that a standard patent should be granted, the Commissioner shall cause a standard patent to be sealed with the seal of the Patent Office. The time for sealing is prescribed by s.66. It should be noted that the grant of a patent under these provisions is not final. Under Part XI of the Act a prescribed court may revoke a patent on any of the grounds specified in sub-section 100(1), some of which are the same as those specified in sub-section 59(1), and under s.105 a ground on which a patent may be revoked is available as a ground of defence in an action for infringement of a patent.
Part VIII of the Act, comprising sections 77 to 89, contains provisions relating to the amendment of specifications. These sections contain detailed provisions enabling an applicant to seek leave to amend his complete specification, s.77, a limitation on the power to amend, s.78, an examination of the request for leave to amend, s.79, a refusal of that request with a right of appeal to the Federal Court from the decision so to refuse, sub-sections 81(1) and (2), the advertising of particulars of the request in the Official Journal, sub-section 81(3), the giving of notice of opposition to the granting of the request "on the ground that the amendment is not allowable under s.78, but on no other ground" (emphasis added), s.82, and the determination of the request by the Commissioner, s.83. A right of appeal is given to the applicant and to an opponent from a decision of the Commissioner under s.83, see s.84. These provisions are similar in form to the provisions of Part V of the Act, but it should be noted that under the scheme of the Patents Act, the hearing of grounds of opposition under s.59 of the Act should not be determined under the guise of determining grounds of opposition under s.77 of the Act.
On 29 December 1987, a Supervising Examiner of Patents, in the exercise of powers conferred upon him by the Patents Act, made a decision under s.60 of the Act. For ease of reference, in these reasons the officer is referred to as "the Commissioner" and the decision made on 29 December 1987 is referred to as the interim decision. The interim decision was in Application No. 533145 entitled "Golf Ball with Fluorescent Cover" in which Acushnet Company was the applicant. The application was lodged on 28 May 1982 and acceptance was advertised in the Official Journal on 3 November 1983. The priority date claimed was 28 May 1982. Spalding Australia Pty. Ltd. lodged notice of opposition under s.59 on 3 February 1984. The Commissioner, in the exercise of the powers conferred by sub-section 60(1) heard the applicant and the opponent on 10 and 11 August 1987 and decided the case by the interim decision. The interim decision shows that whilst the notice of opposition specified most of the available grounds under sub-section 59(1) "the action was fought on the issues of section 40, anticipation and obviousness." These three grounds appears to be a short-hand reference to the following grounds specified in sub-section 59(1) namely:-
"(i) that the complete specification does not comply with the requirements of section 40." "(e) that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim; . . ." (emphasis added)."
"(h) that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia; . . ." (emphasis added).
"(g) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;" (emphasis added).
In purported conformity with s.40 of the Act, the complete specification ended "with a claim or claims defining the invention". The complete statement of claims as accepted comprised 13 separate claims the details of which need not be referred to in these reasons.
By his decision, the Commissioner made a number of findings of fact based upon the material placed before him. The Commissioner expressed his conclusion as follows:-
"I have found that the opposition succeeds on the grounds of prior publication (by use), failure to comply with section 40, and obviousness. It may be possible to frame a valid claim having regard to the overall disclosure, and for this reason, I allow the applicant 60 days from the date of this decision to attempt to do so, pursuant to section 77. I award costs against Acushnet."
The applicant did not appeal from this interim decision. It availed itself of the opportunity to request to amend its complete specification pursuant to Part VIII of the Act. The request was not opposed but the opponent advised the Commissioner "that it wished to be heard when the amended application was to be considered in the light of" the interim decision. The parties were heard on a further hearing under s.60 on 15 February 1989 and the Commissioner gave his decision under s.60 on 13 September 1989. This is the final decision.
In his final decision, the Commissioner said:-
"Pursuant to the amendments allowed under sub-section 83(2) the claims of the specification are now of a scope somewhat narrower than the scope of the accepted claims."
There are 11 claims set out in the amended specification and a reference to them suggests, on their face, that they are narrower than the claims set out in the specification as first accepted. For present purposes, it is sufficient to say that it is arguable that the invention "so far as claimed in any claim" in the amnded specification is different from and narrower than the invention "so far as claimed in any claim" in the original specification; c/f paragraphs 59(1) (e), (g) and (h).
In the final decision, the Commissioner considered the grounds of opposition based on s.40 namely that the claim was not clear; c/f. sub-section 40(2); anticipation and obviousness, and found that grounds of opposition had been established. He concluded the final decision as follows:-
"Mr Royal (the patent-attorney appearing for the opponent) suggested that the applicant should not be given any further opportunity to amend its specification and that the application ought to be refused. I think that such an action would be unnecessarily harsh on the applicant as I have found that there is patentable subject-matter in its specification. On the other hand, there is a need to finish the matter expeditiously in the public interest; the opposition proceedings began on 3 February 1984. Thus I allow the applicant 30 days from the date of this decision to propose amendments in accordance with the comments I have set out above.
I award costs against Acushnet."
The applicant did not accept the opportunity to propose further amendments to the specification as already amended but on 3 October 1989, pursuant to sub-section 60(5), appealed to the Federal Court from the final decision of the Commissioner.
Section 146 of the Patents Act confers jurisdiction on the Federal Court to hear the appeal while s.150 specifies the powers of the Federal Court when hearing an appeal from a decision of the Commissioner. Order 54B of the Federal Court Rules contains the procedures to be applied in respect of an appeal to the Court under sub-section 60(5). It should be noted that under O.54B r.2(2) of the Federal Court Rules, as far as is practicable, apply to intellectual property cases. Division 2 of O.54B comprising rules 4, 5, 6 and 7, apply with respect to appeals from the Commissioner. An appeal is instituted by the filing of an application in the form numbered 58B in the first schedule to the Rules. The appeal is within the original jurisdiction of the Court and the party instituting the appeal is called the applicant while any opposing party is called the respondent. Thus the Rules make provision for the parties to what is called an appeal but what is in reality and in law a proceeding in the original jurisdiction of the Court, not a proceeding in its appellate jurisdiction, see sections 19 and 20 of the Federal Court of Australia Act 1976. Under sub-rule 4(6) and (7) the appeal must be instituted within 21 days from the date appearing on the Commissioner's decision in respect of which the appeal is instituted but under sub-rule 4(8) the Court is empowered to extend the time for appeal "upon application made at any time, showing special circumstances".
Rule 5 makes provision as to the form of the application and requires that the application shall state, among other things, whether the appeal is brought from the whole or part only of the decision appealed from; the orders sought and briefly, but specifically, the grounds relied upon in support of the orders sought. Form 58A is in conformity with the provisions of Rule 5. In conformity with the general practice and procedure of the Court, the application must specify a date for the first directions hearing in that application, r.6. Rule 7 is set out in full:-
"7(1) At the directions hearing referred to in subrule 6(2), the Court may give directions as to the giving of further evidence at the hearing, pursuant to s.150(b) of the Patents Act.
(2) Evidence in proceedings before the Commissioner shall, with the leave of the Court, and saving all just exceptions, be admissible in evidence on the hearing by the Court of an appeal to which the Division applies."
In the present case the notice of appeal filed by the applicant appears to be in conformity with O.54B. The appeal is stated to be "from the whole of the decision of the Commissioner of Patents (by his delegate the Acting Commissioner of Patents, Mr J.L. Roveta) given in Opposition on the 13th day of September, 1989 at Canberra whereby it was decided that the claims of the Applicant's Australian Patent Application No. 533145 entitled "Golf Ball With Fluorescent Cover" were not novel or were obvious and did not involve an inventive step." The orders sought included:-
"1. An order reversing the said decision of the Commissioner of Patents.
2. An order that the said Opposition be dismissed and that the grant of a patent on the said Patent Application be allowed."
The notice of appeal then set out at length and in great detail the grounds relied on in support of the orders sought. There were 17 grounds and a number of the grounds contained a number of sub-paragraphs. The grounds ranged from the statement of general grounds such as the decision was wrong in law, contrary to the evidence and the weight of the evidence, to specific grounds directed to particular findings of fact and acceptance of principles of law. Further comment will be made on the requirement that the notice of appeal must state the grounds relied on in support of the orders sought but at present it is sufficient to say that where an appeal is instituted by an applicant for a patent against the whole of the decision of the Commissioner made under s.60 of the Act, and having regard to the fact that the appeal, in reality and in law is a re-hearing of the opposition claims made by the opponent to the grant of the patent upon the evidence properly led before the Court, one would have expected the grounds relied on in support of the orders sought to be in a form that the complete specification having been accepted by the Commissioner and that amendments to that complete specification having been allowed by the Commissioner, the grant of a patent or the patent application should be allowed. In those circumstances the respondent, being a party to the appeal and in opposition to the applicant in the proceedings before the Commissioner, would be able to oppose the application (apart from claims based on non-compliance with the Federal Court Rules) in this Court on any one or more of the grounds specified in s.59(1) but on no other ground.
By notice of cross appeal filed on 24 October 1989, the respondent appealed from that part of the decision of the Commissioner given on 13 September 1989 giving leave to the applicant to apply within 30 days from 10 September 1989 to propose amendments to the applicants claim in Application No. 533145 and sought an order discharging that part of the decision. The grounds relied on in support of the orders sought suffer the same defects as those set out in the applicants notice of appeal.
Three comments are made on the cross appeal. First, it was not filed within the 21 days time limit imposed by O.54B r.4(6) and, as far as I know, no extension of time had been granted under r.4(8). Secondly, the respondent may not have known whether the applicant had taken advantage of the opportunity to further amend the specification, but it was apparent at the time of the filing of the cross appeal that the 30 day period had expired and that by its notice of appeal, the applicant had appealed from the whole of the decision of the Commissioner made on 13 September 1989. Thirdly, the cross appeal does not raise as an issue whether the Commissioner had power to make the decision to allow the applicant time within which to request an amendment to the specification. It is a power which is exercised regularly by the Commissioner. The existence or nature of the power is not raised in these proceedings.
At the first directions hearing on 28 November 1989, after a contested hearing, the Court gave the following directions:-
"1. The applicant file and serve any affidavits upon which it proposes to rely in support of its application for the grant of the Patent, excluding material directed to grounds of opposition specified in Section 59 of the Patents Act 1952, within 21 days.
2. The respondent file and serve any affidavits upon which it proposes to rely in opposition to the grant of the Patent, including material directed to grounds of opposition specified in Section 59 of the Patents Act 1952 and material in support of its Cross Appeal dated 24th October 1989, by 20th March, 1990.
3. The Applicant file and serve any affidavits in reply by 20th June, 1990.
4. If so desired the Respondent file any affidavits in reply by 20th July, 1990.
5. The directions hearing be adjourned to 7th August, 1990 at 9.45am.
6. The costs of this days hearing be costs in the cause."
On 14 December 1989, the Court published its reasons for giving those directions. Those reasons should be read since they are of assistance in understanding the reasons now being given. At this stage, two aspects of those reasons are mentioned. It was made clear that the hearing of the appeal was a hearing de novo in that the application for the patent had to be heard and determined by the Court on material properly before it "being evidence by the parties" to the appeal. Secondly, the reasons are a useful source of reference to a number of authorities of the High Court to the effect that the grounds of opposition normally must be raised by an opponent and that it lies upon the opponent to show that the patent, if granted, would be clearly bad on the ground alleged. This follows from the fact that the grant is not final but can be revoked in later proceedings.
By motion, notice of which is dated 6 April 1990, the respondent sought orders that paragraphs 1, 2, 3 and 4 of the directions given on 28 November 1989 be vacated, that the application by way of notice of appeal dated 3 October 1989 "be struck out or alternatively be dismissed generally or alternatively be forever stayed" and alternatively that specified grounds in the notice of appeal be struck out. On 12 April 1990 the Court by consent vacated the directions numbered 1, 2, 3 and 4 given on 28 November 1989. The hearing of the motion insofar as it is sought the other two orders took place on 28 and 29 June 1990. At that hearing, each party was represented by senior counsel.
The motion challenges the competency of the appeal and in substance is brought under 0.20 r.2 on the ground that the application discloses no reasonable cause of action.
The essence of the contentions made on behalf of the respondent was that there was but one application for a patent, that the interim decision was made in that application, that there has been no appeal from that interim decision and that on the authorities all the findings of fact and conclusions of law made by the Commissioner in that interim decision as well as the application of the law to those findings, are binding upon the parties. They contended further that the final decision was made in the same application for a patent and that the Commissioner was bound by the findings made in the interim decision and that, of necessity, on any appeal from the final decision, the Court was bound by the findings made in the interim decision. They contended further that a reference to the grounds stated in the notice of appeal made it clear that on the appeal, the appellant wanted to challenge the findings made in the interim decision and that was impermissible.
During the hearing of the motion counsel spent much time in analysing and discussing in great detail a number of authorities of the High Court and of tribunals in England. In the view I have taken of this matter, it is not necessary to engage in such an analysis of the authorities in order to determine the motion. A warning, however, is given. Constraints arise in Australia which are not necessarily present in similar proceedings in England. These constraints are illustrated by what Kitto J. said in Kaiser Aluminium and Chemical Corp. v. The Reynolds Metal Company (1969) 120 CLR 136 at p 142, a passage quoted in my reasons for judgment given herein on 14 December 1989. That passage is set out again:-
"The appeal is, of course, only an appeal in name. In truth it is an original proceeding, being the first judicial proceeding in the matter of the opposition. The right of appeal is given to an opponent who, in the opinion of the Appeal Tribunal, "is entitled to be heard in oppositon to the grant", and a person who proves before the Tribunal, as the appellant has proved in this case, that he had an interest which entitled him to oppose the grant of the patent and still has that interest answers that description. The appeal is therefore competent. It must be decided upon the evidence adduced before this Court, even though that evidence presents on the question of interest a case completely different from the case which was suggested before the Deputy Commissioner. This appears to me to follow from the nature of the jurisdiction under s.76(ii) of the Constitution as to which see Federal Commissioner of Taxation v. Lewis Berger and Sons (Australia) Ltd.
(1927) 39 CLR 468, at p 469; Commissioner of Taxation v. Finn (1960) 103 CLR 165, at pp 167, 168; and indeed it appears from the general provision in s.149 that upon the hearing of an appeal the Appeal Tribunal may (inter alia) admit further evidence and give such judgment or make such order as it thinks fit in all the circumstances: cf. Jafferjeer v. Scarlett (1937) 57 CLR 115, at pp 119, 126. For the reason above stated I am satisfied that the appellant has a locus standi to oppose the grant of a patent."
In The Broken Hill Pty. Ltd. v. American Can Co. (1980) VR 143, Fullagar J. held that an opponent who had appeared in opposition proceedings before the Commissioner, was entitled under sub-section 60(7), to appeal from a decision of the Commissioner which was in form similar to the interim decision given in the present case on 29 December 1987 as well as the final decision given in the present case on 13 September 1989. Thus, the American Can Co. case is authority for the proposition that if the final decision stood alone, the applicant could appeal from that decision even though the applicant had been given the opportunity to amend the specification.
The facts of the American Can Co. case can be stated shortly. American Can Co. was an applicant for the grant of Australian letters patent for an invention. B.H.P. and another party, Comalco Ltd. opposed the application on the grounds of "obviousness and lack of novelty and paper anticipation and failure to comply with s.40 of the Act". The opposition went before the Commissioner on a hearing under s.60. The Commissioner delivered a decision headed "interim decision". He held that the complete specification did not comply with s.40 but that defect could be cured by relatively simple amendments. He held further that the ground of paper anticipation had been made out but that all the other grounds of opposition failed. He held further that indicated amendments, if applied for and allowed, would overcome all the grounds of opposition including lack of novelty and paper anticipation and non-compliance with s.40. The decision concluded with the words "I therefore direct that the applicant lodge amendments to overcome or remove the objections in 60 days from the date of the decision. I will award costs in my final decisions." B.H.P. and Comalco each appealed from the "interim decision" claiming that the interim decision was a decision of the Commissioner under s.60 and thus an appeal lay under sub-section 60(5). American Can Co. filed a notice of motion objecting to the competency of the appeal on the ground that the "interim decision" was not a decision under sub-section 60(5). Thus, the issue before the Supreme Court was whether a decision which did not finally decide the opposition proceedings before the Commissioner under s.60 could be subject to appeal under sub-section (5). The Court held that it could be. The basis of the conclusion reached was that an examination of the "interim decision" showed that the Commissioner had decided so much of the opposition proceedings as was able to be determined at that time and in the absence of an appeal that decision stood. At the same time the Commissioner had left open what should be done in the future conduct of the opposition proceedings if American Can Co. accepted the opportunity to amend its specification. It is interesting to note that American Can Co. had accepted the opportunity and had sought leave to amend its complete specification but that the procedures to be followed on that request had not been completed.
It is also interesting to note that in his reasons for judgment, Fullagar J. speculated on the type of orders that the Court could make on the hearing of the appeal. At p 146 His Honour said:
"I have not heard any real argument on what the possible orders in the appeal could be if the appeals were to go ahead for determination by this Court, but it seems to me at the moment, in my uninstructed state, that the following at least would be possible decisions of this Court on appeal:-
(a) That the specification is bad, but can be cured by amendment.
In this case, as at present advised, I think the Court would declare that on the present wording the specification is bad for lack of novelty, prior publication, or whatever the ground might be, but make that decision without prejudice to any right in the applicant to amend his specification in a manner which would avoid those defects.
(b) That the specification is bad and cannot be cured by amendment.
In this case, as at present advised, I think this Court would declare that this is so and order that the application for a patent be refused.
(c) That the specification is good as it stands. In this case, as at present advised, I should have thought the Court would allow the appeal to the extent of declaring that and ordering that the patent be allowed to proceed to grant."
In the present case, it would seem that if the appeal went ahead, the Court could make similar orders depending upon the evidence put before the Court and the application of the law to the facts found. In this context, it is important to note that the appeal is from the decision of the Commissioner based upon the complete specification as amended, not upon the complete specification as originally accepted. It is with respect to the specification as amended that the Commissioner has decided so much of the opposition proceedings as was able to be decided at the time the final decision was made on 13 September 1989 and, in the absence of an appeal, that final decision stands. This is not to deny that the applicant was given an opportunity to further amend the specification. If, instead of appealing against the final decision, the applicant sought and was granted leave and did amend its specification, the Commissioner would be required to decide the case under s.60 but based upon the complete specification as further amended and the grounds of opposition specified in sub-section 59(1). In the present case, the interim decision forms part of the history of the application for the grant, but the appeal is from the final decision.
Counsel for the respondent relied also on R. v. Smith; Ex parte Mole Engineering Pty. Ltd. (1981) 147 CLR 340. In substance, that authority determined that the Commissioner, having given a decision under s.60 of the Act, had no power to re-hear and determine the same application for a grant of patent based upon the same complete specification. There, an Acting Deputy Commissioner had conducted a hearing into the grounds of opposition and gave a decision under sub-section 60(1). The decision was headed "Interim Decision" in which he found certain grounds of opposition established but allowed the applicant 60 days within which to lodge a request to amend the specification. As Mason J. said at p 345 the decision was in truth a final decision, but was interim only in the sense that the applicant was given an opportunity to amend. The applicant accepted the opportunity and sought leave to amend under Part VIII of the Act. The respondent to the opposition proceedings opposed that application but the leave was given. In the meantime the Acting Deputy Commissioner had retired and the applicant sought a re-hearing of its application based on its original specification. The Commissioner agreed that the applicant should withdraw its amendments after which he would direct that the original application be re-heard. The respondent sought, successfully, to prohibit the Commissioner from re-hearing the application.
The case involved a consideration of the powers of the Commissioner and the effect of Part V and Part VIII of the Act in relation to those powers. After referring to the powers of the Commissioner Mason J. said at pp 347-438:-
"The significance of the definition is that when it is read in conjunction with s.60, it is for the Deputy Commissioner or an Assistant Deputy Commissioner or Supervising Examiner to whom the function has been delegated under s.11(1) to "decide the case". This responsibility is quite inconsistent with the notion that the Commissioner could give directions to the Deputy or to the delegate as to how the case should be directed. The Commissioner can, notwithstanding a delegation, hear and decide a case under s.60 (s.11(2)). But clearly once a decision has been made under s.60 the Commissioner cannot re-hear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail."
At pages 348 to 349 His Honour said:-
"It will be noted that s.60(5) enables an appeal to be brought from "a decision", rather than "the decision", of the Commissioner. The sub-section is quite consistent with the view that an appeal lies from a decision of the kind given by Mr Kildea in the present case, one which upholds grounds of opposition but does not refuse the application because the objections may be overcome by amendment. The peculiarity of the statutory procedure is that Part VIII provides for the consideration of amendments after the initial opposition proceedings have been heard and decided. What is more, Part VIII provides for the lodging of notice of opposition to amendments and for a hearing of that opposition and a decision upon it with a consequent right of appeal. The Act therefore contemplates that there may be two decisions, one under Part V and another under Pt VIII, each finally deciding an issue arising from a notice of opposition and that there will be a right of appeal from each decision.
It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application - there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination."
His Honour found support for his opinion from the judgment of Fullagar J. in the American Can Co. case.
Wilson J. referred in some detail to a number of English decisions and at pp 355-6 said:-
"The position in England as expounded by Lloyd-Jacob J. in the series of cases is that, although a negative decision may be capable of salvation by amendment, that decision is final with respect to the issues which it determines. If a party wishes to challenge the merits of an interim decision he must do so by appeal. If he wishes to abide by the interim decision and nonetheless save the specification by complying with the amendments suggested in the interim decision then he must proceed to draft amendments which are consistent with the decision and submit the same. Having filed such amendments a decision will thereafter follow which itself is capable of appeal. But on such an appeal it will be too late to challenge the matters canvassed and decided in the interim decision."
In the present case, counsel for the respondent relied strongly on the last two sentences of that passage.
At p 358 Wilson J. referred to the nature of the powers conferred upon the Commissioner and the problems that could arise if the Deputy Commissioner who had conducted opposition proceedings and given an interim decision died or was otherwise unavailable to handle subsequent developments and continued:-
". . . but the inherent finality of the decision ensures that, subject to appeal, it provides a firm base on which another officer can proceed in the exercise of the powers and functions of the Commissioner.
In the present case, it is clear from the letter seeking a re-hearing that Mobile Drilling wished to contest the merits of the interim decision. But by choosing to proceed with the amendments which were proposed in that decision instead of launching an appeal Mobile Drilling affirmed it."
Each of the other members of the Court, Gibbs C.J., Murphy and Aickin JJ. agreed with the judgements of Mason and Wilson JJ.
In that case, the High Court was not considering an appeal which had been instituted against a decision of the Commissioner under s.60. It was not considering the nature of an appeal from such a decision. It was considering a case where the Commissioner was proposing to re-consider a decision which had been made. It is clear that the Court was of opinion that where an interim decision has been given, an applicant has the option of affirming that decision by seeking to amend the specification or to appeal from the interim decision. It is also clear that the Court was of the opinion that an applicant, or for that matter, an opponent, could appeal from a decision made under s.60 and based on the specification as amended pursuant to leave granted under Part VIII of the Act. It was in this context that Wilson J. said "But on such an appeal it will be too late to challenge the matters canvassed and decided in the interim decision."
Having regard to the particular facts of the matter before the High Court and the issue to be decided as well as the fact that the High Court was not considering the procedures to be followed on an appeal, I do not accept the fact the sentence quoted is to be construed as meaning that every finding of fact made in the interim decision and every conclusion of law cannot be canvassed and decided in the interim decision. The appeal must be decided on the evidence led at the appeal and upon the complete specification as amended. The amended specification was not the subject of the application at the hearing on which the interim decision was based. In this context, it is apparent that it must be remembered that the so-called appeal is not an appeal in the true sense and that the appeal, in reality, is an application to the Court in its original jurisdiction for an order that letter patent be granted for an invention described in the complete specification.
In my opinion, there is nothing said in the Mole Engineering case which leads to the conclusion that the appeal in the present case is incompetent.
Having come to this conclusion, it is not necessary for me to consider in detail the English authorities relied on by counsel for the respondent. Many were referred to in the Mole Engineering case, but for convenience they are listed namely; L. Oertling Ltd.'s Application (1959) RPC 148, Klungfilm A.G.'s Application (1958) RPC 237, Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) (1960) RPC 247, E.i. Du Pont de Nemours Inc.'s Application (1962) RPC 228, E.I. Du Pont de Nemours Inc.'s Application (1969) RPC 271, Sun Oil Company's Case (1971) RPC 293, Robin and Haas (Meitgner's) Application (1971) RPC111 and Nachf's Application (1983) RPC 87. None of these authorities are directly in point to the issue before this Court. They make it clear that there were doubts among the profession in England about whether there could be an appeal from an "interim decision" of the kind discussed in these reasons. That doubt was resolved in that it was made clear that an appeal could be taken. Doubts arose therafter about whether an extension of time should be sought to appeal from an interim decision to enable the applicant to proceed with an amendment to the application. Some of the authorities show the confusions arising where an applicant vacillated in relation to proposed amendments, and where confusion arose as to whether the appeal was from a decision to refuse an amendment or a decision to refuse to allow a patent to proceed to grant. Others are illustrations of the exercise of a discretion and not as to the existence of a right and the exercise of that right. None are authority for the proposition that on an appeal from a final claim made on an amended specification, the Court is bound by all findings of fact and conclusions of law made and applied in the decision given on the unamended specification.
For these reasons, orders 2 and 3 as sought in the motion are refused.
In all the circumstances and having regard to the importance of the issue insofar as it affects the practice and procedure of this Court and the fact that if the motion succeeds the appeal will be brought to an end, this is a case where the respondent should be granted leave to appeal from the orders to be made.
The motion before the Court involved an interim decision under s.60 of the Patents Act, an amendment, under Part VIII of the Act, to the original application which had been accepted by the Commissioner, a second interim decision under s.60 based upon the amended specification and the right to appeal under sub-section 60(5) from the second interim decision. The motion did not involve a case where an interim decision having been given a request for an amendment under Part VIII has been refused. There is no doubt an appeal would lie from the decision to refuse leave to amend but on the hypothesis that leave is refused, a number of questions could arise. The Court expresses no opinion on any of these questions. In particular the Court expresses no opinion on whether further procedures should be taken under sub-section 60(1), or whether an appeal lies from the interim decision under s.60. If an appeal did arise, the Court expresses no opinion on whether those facts could be capable of constituting special circumstances under 0.54B r.4(8) if an application was made under r.4(6) seeking leave to appeal out of time from the interim decision.
In the result, apart from order 1, which has been made, the motion is refused with costs including reserved costs. The respondent has leave to appeal from this order.
The next directions hearing in this proceeding is on 7 August 1990.
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