Arc Engineering Company Pty Ltd v Rendan Holdings Limited

The High Court of Australia heard an appeal concerning a patent application made by Rendan Holdings Limited. The application was opposed by A.R.C. Engineering Company Pty Ltd on grounds of want of novelty and prior publication. The core of the dispute centred on the publication of the applicant's British patent specification in Australia before the Australian application was lodged, but after the initial British application date. The applicant had sought an extension of time for their Australian application under the Patents, Trade Marks, Designs and Copyright (War Powers) Act 1939.

The legal issues before the court were whether the grounds of opposition under section 56 of the Patents Act 1903-1935, specifically relating to novelty and prior publication, could be relied upon when the alleged prior publication occurred in Australia between the date of the foreign application and the date of the Australian convention application. The court was required to interpret the interplay between section 121, which governs convention applications, and section 56, which outlines grounds for opposition.

Latham C.J., with whom McTiernan J. agreed, reasoned that section 121 of the Patents Act was intended to place an applicant who had applied for protection in another country in the same position as if they had applied in Australia on the same date. The Chief Justice found that section 121(2) specifically provided that publication or use in Australia during the relevant periods (between the foreign application and the Australian application, and prior to the acceptance of the complete specification) would not invalidate a patent granted under the section. To give this sub-section any practical effect, it must operate to prevent such publications or uses from being grounds for opposition to the grant of the patent. Therefore, the appeal was dismissed.