Ex Parte

This matter concerned a petition brought by the Celotex Corporation, as assignee of four patents relating to the manufacture of fibre boards, for an extension of their terms. The patents had expired on 15 January 1937. The Commissioner of Patents appeared to contest the application.

The court was required to determine whether the patents were eligible for extension under section 84 of the *Patents Act 1903-1935*, particularly in light of overlapping subject matter with expired patents and the existence of profits from foreign patents. It also had to consider the appropriate term for any extension or new grant, and the conditions that should be imposed.

Dixon J. held that the overlap in specifications between the patents did not preclude an extension, as the original grant had allowed such overlap. He found that the patentee had been inadequately remunerated due to circumstances beyond its control, specifically the failure to establish a manufacturing plant in Australia due to economic depression and high costs, despite efforts to develop a market. While profits from foreign patents were relevant to the exercise of discretion, the primary condition of inadequate remuneration was satisfied by proving a loss attributable to the Australian patents. The court determined that a new patent grant was appropriate given the expiration of the original terms, and that such a grant should be limited to five years, reflecting the statutory periods for extension.

The court ordered the grant of new patents for a term of five years from the expiration of the original patents, with specific claims limited in each case. These grants were subject to conditions, including restrictions on actions for past infringements, a requirement for the patentee to provide an Australian address for service, and an obligation to lodge a statement of steps taken to establish manufacture in Australia. Crucially, each grant included a condition that the patent would be void if the Commissioner certified that reasonable measures had not been taken to commence manufacture and production in Australia to meet expected demand, unless the court ordered otherwise. The petitioner was ordered to pay the costs of the Commissioner.