Australian Paper Manufacturers Ltd v CIL Inc

[1981] HCA 64

HIGH COURT OF AUSTRALIA

Stephen, Mason, Murphy, Wilson and Brennan JJ.

AUSTRALIAN PAPER MANUFACTURERS LTD. v. C.I.L. INC.

(1981) 148 CLR 551

1 December 1981

Patents

Patents—Convention application—Priority date—Priority for claims in Australian patent backdated to date of basic application if Australian application made within twelve months of basic application—Whether Commissioner empowered to extend time for making Australian application—Whether application act or step required to be done within certain time—"Application"—"Act or step"—"Required to be done"—Patents Act 1952 (Cth), ss. 141 (1), 160 (2).

Decisions

December 1.
The following written judgments were delivered: -
STEPHEN J. In this appeal the question is whether the power of the Commissioner of Patents to extend times for doing acts or taking steps, conferred by s. 160 (2) of the Patents Act 1952 (Cth), may be exercised in relation to the period of twelve months which is referred to in s. 141 (1) of the Act. (at p554)

2. Section 160 (2) is in itself an unremarkable provision, enabling the Commissioner to extend time in specified cases; it reads:
"Where, by reason of -
(a) an error or omission on the part of the person concerned or of his agent or attorney; or (b) circumstances beyond the control of the person concerned, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step." Section 141 (1) entitles a person who has already applied for a patent in an overseas Convention country to have the priority date of the claims in his Australian patent backdated to the date of his overseas application if he makes his Australian application within twelve months; it reads:

"Where an application for protection in respect of an invention (in this part referred to as 'the basic application') has been made in a Convention country and a person, being a person referred to in section 34, who - (a) is the applicant in the Convention country; (b) is the assignee of the applicant in the Convention country; (c) is the legal representative of the applicant in the Convention country or of his assignee; or (d) has the consent of the applicant in the Convention country or of a person who is his assignee or legal representative.

makes an application, or 2 or more of such persons make a joint application, for a standard patent or a petty patent within 12 months after the date on which the basic application was made, the priority date of a claim of the complete specification or of the claim of the petty patent specification, as the case may be, being a claim fairly based on matter disclosed in the basic application, is the date of making of the basic application." (at p555)

3. Compliance with the twelve month time-limit in s. 141 (1) is no pre-requisite to a successful Convention application for an Australian patent; such an application may be made at any time after the making of the basic application in the overseas Convention country. But the important advantage of a back-dated Australian priority date will be denied to an applicant who fails to observe the time-limit of twelve months. (at p555)

4. In these features of s. 141 (1) lies the reason for the divergence of views which have led ultimately to the present appeal. Because the time-limit does not operate to debar later applicants but only deprives them of the advantage of an earlier priority date, it has been said that s. 141 (1) involves no requirement as to time such as the Commissioner can relieve against. As I have thus stated it, the proposition does less than justice either to the carefully reasoned judgment of King J. in the Victorian Supreme Court, or, for that matter, to the appellant's argument before us; but it does, I think, identify the substance of the ground upon which his Honour held s. 160 (2) to be inapplicable to s. 141 (1). An appeal taken to the Federal Court of Australia was successful; in allowing the appeal that Court followed its then very recent decision in AB Scania-inventor v. Commissioner of Patents (1981) 54 FLR 367; 36 ALR 101 which it correctly regarded as decisive of the question. The opponent to registration now appeals to this Court. (at p555)

5. There are no authorities directly in point and although in argument reliance was naturally placed upon indications of legislative intent to be gleaned from other provisions of the Act it is to the words of the two sub-sections that attention must primarily be directed. The critical question is whether s. 141 (1) involves what s. 160 (2) describes as "an act or step in relation to an application for a patent . . . required to be done or taken within a certain time". This question may be analysed as asking whether s. 141 (1) involves an act or step (a) which is "in relation to an application for a patent", (b) which can be described as to be done or taken "within a certain time", and (c) which can be said to be "required to be done or taken" within that time. (at p556)

6. Paragraph (a) must be answered "Yes". Part XVI of the Act, entitled "International Arrangements", contains ss. 140 to 145 and makes provision for Convention applications for Australian patents. The procedure to be followed by applicants for such patents appears in s. 143 and involves the lodging in the Patents Office of a written application together with other accompanying documents. It is this act or step of lodging documents in the Patents Office to which s. 141 (1) refers when it speaks of the making of an application for an Australian patent and that act or step is clearly enough one "in relation to an application for a patent". It therefore satisfies par.(a) of my analysis. It was argued that there must first exist a lodged application before there can be said to be any act or step "in relation to an application for a patent"; in other words, lodging of the application must precede any act or step to which s. 160 (2) can apply. But this is to give to "application" in s. 160 (2) an excessively narrow meaning. I regard it as referring not merely to the documentation called for by s. 143 but rather to the whole process of seeking patent protection in Australia. The context supplied by s. 160 (2), where "application" appears in association with "proceedings under the Act", supports this view. On this view it follows that the very first act by way of application for a patent will itself be an "act or step in relation to an application" within the meaning of s. 160 (2). (at p556)

7. Paragraph (b) must also be answered "Yes"; the act or step of making formal application for a patent is one which, if it is to fall within s. 141 (1), must be done or taken "within 12 months after" the making of the basic application overseas. (at p556)

8. There remains par.(c); is the act or step of making formal application one which is, by s. 141 (1), "required to be done or taken" within twelve months? The answer to this must also, I think, be "Yes". It is a condition precedent to the benefit which the sub-section confers that the application must be made within the time-limit which it imposes. This is a requirement of the sub-section and may accurately be described as being "required" by it. Whenever the doing of some act is linked with a period within which it is to be done it can with perfect accuracy be described as being required to be done within that period; the particular consequence attaching to a failure to do the act within the specified period is irrelevant to the aptness and propriety of the use of the word "required" to link and explain the connextion between the act and the time-limit. Legislation may provide that an act may only be done, if at all, within some prescribed period, the doing of it later being either prohibited or being declared to be ineffective and a nullity; or again, where the provision in question confers a benefit, the doing of the act within the period may be a condition of obtaining the benefit. But in either case the word "required" will aptly describe the nature of the link between the doing of the act and the time for the doing of it. In the case of provisions of a quite different nature, prohibiting the doing of a particular act within a given time, the concept of affirmative requirement may be inapt; but so long as the provision is either permissive of the doing of an act or else confers a benefit or right as a result of doing it, being in either case linked with a period within which it is to e done, "required" can aptly be used. (at p557)

9. A somewhat different approach to the question posed by par. (c) of my analysis calls for the same affirmative answer to that question. If the seeking and obtaining of the advantage offered to Convention applicants by s. 141 (1) is regarded as in itself a "step in relation to an application for a patent", which is at least an arguable view, then the fact that timeous application is a pre-condition of the obtaining of the advantage indicates that it is indeed a step "required to be done or taken within a certain time" within the meaning of s. 160 (2). (at p557)

10. However, analysing it as I have, s. 141 (1) does as a matter of language involve the very situation for which s. 160 (2) legislates; it provides for an act or step, the initial making of formal application for an Australian patent, which relates to an application for a patent and which may properly be described as required to be done or taken within a certain time, in this instance within twelve months. In those circumstances it would require quite compelling contextual or other considerations for s. 160 (2) nevertheless to be held inapplicable to s. 141 (1). Despite the attractive arguments of counsel for the appellant, no such consideration seems to me to exist. (at p557)

11. I have already, in the course of considering the meaning of s. 160 (2), dealt with two of the principal submissions urged on the appellant's behalf: that an act can only be said to be "required" to be done within a particular time if, on the expiration of that time, it can no longer be done; and that application must first be made for a patent before s. 160 (2) can begin to apply, the initial making of the application therefore not itself answering the description of an act or step "in relation to an application". The appellant also submitted that s. 160 (2) could only be made to apply to s. 141 (1) if some words such as "or within such further time as the Commissioner may allow under s. 160" were to be read into it. However, my analysis of s. 160 (2) in its application to other provisions of the Act, including s. 141 (1), involves no reading of additional words into s. 141 (1) in order to attract the effective operation of s. 160 (2). Then, it was said that to apply it to s. 141 (1) involved a considerable departure from the ordinary meaning of words; however, once "required" is perceived as apt to describe the case of conduct which is made a pre-condition to the obtaining of a right or benefit, s. 160 (2) will, on its face and without any distortion of language, readily and quite naturally apply to s. 141 (1). (at p558)

12. It was also submitted that if, because of the existence of ambiguity, it became appropriate to have regard to the terms of the Paris Convention of 1883, its terms supported the appellant's interpretation of s. 160 (2). I see no such ambiguity as would make it necessary to have recourse to that Convention as an aid to interpretation. However, had I taken an opposite view, I would in any event, like the members of the Federal Court, have derived little assistance from the terms of the Convention. (at p558)

13. Although, as I have said, there is no direct authority upon the interaction of s. 160 (2) with s. 141 (1), the case of A.R.C. Engineering Co. Pty. Ltd. v. Rendan Holdings Ltd. (1943) 68 CLR 221 , relied upon by the respondent, does cast some light on the point in issue. That case involved a Convention application made pursuant to s. 121 of the Patents Act 1903, which was in substantially different form to the present s. 141 (1). In the course of his judgment Latham C.J., with whose judgment the other members of the Court agreed, adopted what had been said by Sir John Simon in Re Coutant (1928) 48 RPC 1 as re flecting the legislative intent involved in the enactment of s. 121. Although expressed in different terms, s. 121, like the present s. 141 (1), was concerned with the back-dating of the priority date of Australian applications based upon prior overseas applications. The legislative intent was said to be that an applicant who had made prior application in a foreign country should be put "in the same position as though he had applied in this country by an identical application at the same date", a foreign applicant receiving the same treatment when "applying under the International Convention as he would have obtained if he had made a simultaneous and identical application here" (1943) 68 CLR, at p 225 . Despite different wording, the general legislative intent seems to me to have remained constant and to now animate s. 141 (1); it is best given effect in the present case by treating s. 160 (2) as applicable to s. 141 (1) just as it is applicable to other sections of the Act relating to purely domestic applications. (at p558)

14. I would dismiss this appeal. (at p558)

MASON J. I would dismiss this appeal for the reasons given by Stephen J. (at p559)

MURPHY J. The appeal concerns an ambiguity in the Patents Act 1952 (Cth), as amended, which is reflected in the division of opinion between the Supreme Court of Victoria (King J.) and the Federal Court of Australia. If applicants under international conventions make application under the Act within twelve months of their basic application in a Convention country, the Act makes the priority date the same as the date of the basic application, which may be a considerable advantage to them. (at p559)

2. The Commissioner has certain powers to extend time limits under s. 160 (2). The question is whether these powers apply to the twelve month rule for Convention applications. If so, the opportunity for monopoly rights as against the public is extended. (at p559)

3. It is a reasonable principle of interpretation that where an Act which grants monopoly rights is ambiguous, the ambiguity (whether relating to substance or procedure) should be resolved in favour of the public and against the extension of monopoly. (at p559)

4. I agree with Brennan J. The appeal should be allowed and the order of the Supreme Court of Victoria restored. (at p559)

WILSON J. I would dismiss the appeal, for the reasons given by Stephen J. (at p559)

BRENNAN J. Section 141 of the Patents Act 1952 (Cth) confers a particular right or privilege upon an applicant who makes an application for a standard patent or a petty patent in accordance with the conditions prescribed by the section. When an application is made in accordance with those conditions, the priority date of a claim of the complete specification or of the claim of the petty patent specification is not the priority date ascertained by reference to s. 45 or s. 45A, but the date of making an application for protection of the relevant invention in a Convention country ("the basic application"). (at p559)

2. One of the conditions prescribed for making a Convention application under s. 141 (1) is that the application be made "within 12 months after the date on which the basic application was made". The question is whether the time specified by s. 141 (1) can be extended by the Commissioner in exercise of the powers reposed in him by s. 160 (2). The answer to that question turns on whether the making of a Convention application - for that is the act in reference to which the time limit is specified - is "an act or step in relation to an application for a patent . . . required to be done or taken within a certain time". I would give a negative answer to that question. (at p560)

3. Section 160 (2) relates to a requirement that an act be done or a step be taken, where the requirement is to be fulfilled within a certain time. Before s. 160 (2) applies, there must be an act which is required to be done or a step which is required to be taken and a time specified within which the act is to be done or the step is to be taken. If the sub-section applies, the power conferred by it is to extend the time for doing the required act or taking the required step. (at p560)

4. An act is required to be done if the omission to do the act attracts a liability or results in the loss or forfeiture of some right or privilege. If the omission to do the act attracts no liability but merely loses an opportunity of gaining a right or privilege, I find it difficult to predicate of the act that it is "required to be done": the doing of the act in such a case is an exercise by the actor of his entitlement to seek the right or privilege, not a fulfilment of a requirement. (at p560)

5. A requirement to do an act connotes a person who is required to do it. A person who will incur a liability or who will lose or forfeit a right or privilege if he omits to do the act is the person required to do the act. But where the statute entitles any of a number of persons to do an a act (in this case, to make an application under s. 141) and thereby gain a right or privilege (in this case, to secure a priority date which is earlier than the date of making the application) none of those persons can be said to be required to do the act. Their respective rights, privileges and liabilities are unaffected by an omission to do the act within the time specified, though an opportunity to gain a right or privilege is lost by the omission. (at p560)

6. There is, of course, a sense in which it may be said that a person who wishes to make a Convention application is required to make it within 12 months after the date on which the basic application was made. Used in that sense, the requirement does not relate to the making of the application; it relates only to the time within which a Convention application is to be made to comply with the conditions imposed by s. 141. But the requirement to which s. 160 (2) refers is a requirement with respect to both the act to be done (or step to be taken) and the time within which the act is to be done (or the step is to be taken). I do not construe the sub-section as referring to a requirement in respect of time for doing an act or taking a step which is not itself required to be done or taken. As s. 141 does not require an application to be made, either within a certain time or at all, I do not find in s. 160 (2) a power to extend the time for the making of a Convention application. (at p561)

7. When an application for a patent has been made, whether under s. 141 or otherwise, an applicant acquires a right to have the procedure prescribed by the Act and Regulations followed and his application granted or refused, subject to his doing the acts and taking the steps required of him. Where an omission to do an act or take a step would result in the lapsing of an application (as, for example, pursuant to s. 41 (2) it is right to say that the applicant is required to do the act or take the step, but that requirement is imposed in reference to the preservation of rights acquired under the Act. But s. 141 confers no right or privilege before an application is made in accordance with its terms. (at p561)

8. In my judgment, therefore, the provisions of s. 160 (2) are not capable of being applied to extend the time referred to in s. 141 for making a Convention application and King J. was right so to answer the question of law raised as a preliminary question in the proceedings before him. Accordingly I would allow the appeal from the order of the Federal Court setting aside the order of the Supreme Court of Victoria, and restore the order of the Supreme Court of Victoria, with costs. (at p561)

Orders

Appeal dismissed with costs.