Johnson and Commissioner of Patents - [2020] AATA 3983

Johnson and Commissioner of Patents [2020] AATA 3983 (5 October 2020)
Division:GENERAL DIVISION
File Number(s): 2020/4614
Re:Mark Johnson
APPLICANT

AndCommissioner of Patents
RESPONDENT

AndSlyp Pty Ltd
JOINED PARTY

DECISION
Tribunal:Deputy President Boyle
Date:5 October 2020
Place:Perth

It is directed that Slyp Pty Ltd be made a party to these proceedings to be described as the Other Party.
................................[SGD]....................................
Deputy President Boyle
CATCHWORDS
PRACTICE AND PROCEDURE – application to join party – person whose interests are affected – role of the Tribunal in conducting review – extension of time for lodging patent application – directed that party be joined
LEGISLATION
Administrative Appeals Tribunal Act 1975 (Cth) – s 30(1A)
Patents Act 1990 (Cth) – s 223(2)
CASES
Carter and Australian Securities and Investments Commission [2020] AATA 809
Kang and Secretary, Department of Social Services [2019] AATA 758
Shi v Migration Agents Registration Authority [2007] FCAFC 59
REASONS FOR DECISION
Deputy President Boyle
5 October 2020
BACKGROUND

By an application lodged with the Tribunal on 31 July 2020 the Applicant seeks the review of the decision of the Respondent dated 7 July 2020 to grant an extension of time under

s 223(2) of the Patents Act 1990 (Cth) (the Patents Act) for the lodging of a patent application (the patent application) associated with previously lodged provisional applications.
The patent application was filed with the Australian Patent Office on 19 December 2019 by Paul Weingarth, Spiro Rokos and Paul Scully-Power (the patent applicants).
The Applicant unsuccessfully opposed the patent applicants’ application for an extension of time for the lodging of the patent application associated with a previously lodged provisional application.
By an application lodged with the Tribunal on 27 August 2020, Slyp Pty Ltd (Slyp) sought to be made a party to these proceedings. The Applicant opposes Slyp’s application to be made a party. It is that application by Slyp to be made a party that now falls for determination.
On 16 September 2020 I directed that the parties file and serve submissions and any further evidence in relation to Slyp’s application to be made a party. The Applicant, the Respondent and Slyp duly filed submissions.
LEGISLATIVE FRAMEWORK
The only statutory provision relevant to the present consideration is s 30(1A) of the Administrative Appeals Tribunal Act 1975 (Cth) (the AAT Act) which provides:
Where an application has been made by a person to the Tribunal for a review of a decision, any other person whose interests are affected by the decision may apply, in writing, to the Tribunal to be made a party to the proceeding, and the Tribunal may, in its discretion, by order, make that person a party to the proceeding.
THE PARTIES’ SUBMISSIONS
The Applicant’s submissions were to the following effect:
(a)
In October 2018 due, according to the Applicant, to patent infringements,

the Applicant issued a “letter of demand” to Slyp. Slyp subsequently sought an extension of time for lodging a patent application.
(b)The Applicant opposed Slyp’s application for an extension of time because the Applicant believed that some of the statements made by Slyp in statutory declarations in support of the application for the extension of time were erroneous and misleading and may have incorrectly influenced the decision to allow the extension of time.
(c)Slyp had the opportunity to respond to the issues raised by the Applicant before the Respondent made the decision to extend time.
(d)The Applicant’s request for a review of the Respondent’s decision:
…is with regard to the IP Australia decision that was made based on the evidence submitted to them at the time. I consider any new evidence from Slyp now, is after the fact.
(e)The Applicant summarises in bullet point form his objection to Slyp being made a party as follows:
•    The decision made by IP Australia was based on the evidence available at the time.
•    That evidence included four statutory declarations made by Slyp representative, Mr Rokos.
•    Three of Slyp's declarations outlined their explanation in relation to their Extension of Time request, and the fourth was an opportunity to address issues raised in the Opposition review.
•    It is my view that IP Australia made an incorrect decision based on the evidence submitted.
•    I do not believe it is fair-minded to consider new evidence from Slyp now , while arguing the case against a decision that was made at an earlier date without that evidence.
•    It is IP Australia who were responsible for considering the evidence available at the time, making the decision , and explaining the reasoning behind the decision.
•    Prior to the end of these proceedings, it is IP Australia who have authority over any changes to the decision, should there be a resolution found during the process.
•    Therefore I believe it is not purposeful for Slyp to become a party to these proceedings.
Slyp’s submissions were to the following effect:
(a)(i) Slyp is relevantly a person whose interests are affected, within the meaning of section 30(1A) of the AAT Act, by the decision of the Respondent under review; and
(ii) in the circumstances, and having regard to the scope and purpose of the underlying statute in question, namely the Patents Act, it is appropriate for the Tribunal to exercise its discretion in favour of making Slyp a party to the present proceeding.
(b)The decision of the Respondent under review is a decision to accept an application by the patent applicants to obtain an extension of time to extend the date by which their Australian Patent Application No. 2018282346 can claim priority to their earlier filed provisional patent application.
(c)Slyp has been assigned the rights to the patent application by the patent applicants. Slyp is presently recorded as the owner of the patent application on the Register of Patents that is maintained by IP Australia.
(d)
The Tribunal must satisfy itself of two matters before exercising the power in

s 30(1A) of the AAT Act. The first is that the joinder applicant must be a “person whose interests are affected by the decision”. The second, which only arises if the joinder applicant is such a person, is whether it is appropriate to exercise the discretion to join the applicant as a party. See Kinabalu Investments Pty Ltd and Commissioner of Patents and Way To Go Aussindo Pty Ltd (Party Joined) and Barron and Rawson Pty Ltd (To be joined as a party) [2007] AATA 1460 at [8].
(e)Slyp refers to Control Investment Pty Ltd and Australian Broadcasting Tribunal (No 1) (1980) 3 ALD 74 at 79–81as indicating what is meant by the term “interests are affected” as used in s 30(1A) of the AAT Act.
(f)Slyp also cites Gummow J’s observation in Alphapharm Pty Ltd v Smithkline Beecham (Australia) Pty Ltd (1994) 121 ALR 373 at 395 that
"in each case, the content of the terms 'affect' and 'interest' are to be seen in the light of the scope and purpose of the particular statute in issue".
(g)As the legal owner of the intellectual property right that is the subject of the decision under review, Slyp holds a special interest in the subject matter of the Tribunal's review: Re Peters and Department of Health & Aged Care (1999) 56 ALD 561 at 571. As the applicant for the Patent Application, Slyp "has a particular position to protect and view to point" (Kinabalu at [27]).
(h)
By reason of the decision under review granting the extension of time, Slyp is able to claim priority to the provisional patent application referred to in [8(b)] above,

with its earlier priority date. If that decision is overturned by the Tribunal in the present proceeding, Slyp will be directly affected by the outcome because the patent application will no longer take the benefit of the earlier priority date.
The Respondent’s submissions were to the effect that:
(a)It is appropriate that Slyp be joined as a party to the proceeding and the Applicant’s opposition to that course is without merit.
(b)For substantially the reasons set out in Slyp’s submissions, Slyp has a direct legal and commercial interest in the decision under review, which is clearly of a nature that justifies its joinder to the proceeding.
(c)The Applicant’s submission misunderstand both the nature of the proceeding and the matters relevant to an application for joinder. The matters raised by the Applicant are irrelevant to the exercise of the Tribunals’ discretion.
CONSIDERATION
Slyp’s submissions correctly set out the relevant law.
The Respondent’s submissions succinctly and accurately reflect the legal position. It is clear that, for the reasons set out in Slyp’s submissions, Slyp is “a person whose interests are affected by the decision” for the purposes of s 30(1A) of the AAT Act.
Further, the Respondent’s statement that the Applicant misunderstands the nature of the proceedings before the Tribunal, and the nature of an application to be made a party,
is correct. The basis of the Applicant’s opposition to Slyp being made a party to these proceedings misunderstands the role of the Tribunal in reviewing an administrative decision. The Tribunal in undertaking a review of a decision is not limited to the evidence which was before the original decision maker. The Tribunal undertakes an administrative merits review. Its role, unlike a court, is not to review a decision to find legal error in the decision, but to do over again that which the original decision maker did and to make its own decision.
There are any number of cases which describe the role to be undertaken by the Tribunal. An often-cited judgment in this regard is that of the Full Court in Shi v Migration Agents Registration Authority[1]. Justice Downes made the following observations:
[1] [2007] FCAFC 59.
35.The Administrative Appeals Tribunal is not a court. It does not exercise the judicial power of the Commonwealth. It is an administrative decision-maker. It exercises the executive power of the Commonwealth. Administrative decision-making is almost always improved if it is based on the facts and circumstances as they are at the time of the decision and not as they were in the past. Administrative decisions should always be made on this basis unless there are compelling reasons for doing otherwise. Sometimes, however, legislation conferring the decision-making power will, expressly or by implication, require the decision-maker to address a time prior to the decision and the facts and circumstances as they were at that time.
36.The position is different with litigation before courts. Judicial power is concerned with resolving disputes between parties. The dispute must exist at the time proceedings are commenced and generally be defined by pleadings or other documents addressing that point of time. Courts, accordingly, focus much more on the circumstances as they were at the time the proceedings were commenced. In this respect the work of courts can be contrasted with that of tribunals engaged in merits review of administrative decisions.
...
38.Hill J expanded upon this in Comptroller-General of Customs v Akai Pty Ltd (1994) 50 FCR 511 at 521:
"The Tribunal is an administrative Tribunal and, as has often been said, its function is merely to do over again what the original decision-maker did, working out, as a further step in administration, what it considers the decision ought to be: cf Mobil Oil Australia Pty Limited v Commissioner of Taxation (Cth) [1963] HCA 41; (1963) 113 CLR 475 at 502 per Kitto J; Drake v Minister for Immigration and Ethnic Affairs (1979) 46 FLR 409 at 413-415 per Bowen CJ and Deane J, and more recently see Liedig v Commissioner of Taxation [1994] FCA 1058; (1994) 50 FCR 461.
In exercising its role, in what Davies J in Jebb v Repatriation Commission [1988] FCA 105; (1988) 8 AAR 285 at 288-289 referred to as a "part of" an administrative "continuum", the Tribunal, within the ambit of the jurisdiction conferred upon it as a review authority, decides the matter by reference to the evidence before it and not the evidence before the decision-maker, taking into account events that may have occurred to the date of decision: cf Jebb (at 289-290); Lucas v Repatriation Commission (1986) 69 ALR 415 at 421; Ward v Nicholls (1988) 20 FCR 18 at 22, per Wilcox J.”
Similar statements were made by Justice Nicholson in the same case as follows:
10. His Honour’s reasoning was based on what he described as the ‘clear line of authority’. It is therefore appropriate to examine the line of authority on the issue. I consider it establishes the following:
1. The Tribunal is empowered to exercise all of the powers and discretions that are conferred by any enactment on the person who made the decision the subject of the Tribunal’s review (s 43(1) of the AAT Act): Aged Care Standards and Accreditation Agency Ltd v Kenna Investments Pty Ltd [2004] FCA 843; (2004) 138 FCR 428 at [24] per Branson J.
2. The Tribunal is required to determine whether the decision under review was the correct or preferable decision having regard to the material before the Tribunal: Drake v Minister for Immigration and Ethnic Affairs (1979) 46 FLR 409 per Bowen CJ and Deane J at 419 and Smithers J at 438-439, cited by Branson J at [24] in Aged Care [2004] FCA 843; 138 FCR 428. That is, the Tribunal is not confined either to the material which was before the primary decision-maker or the events which had occurred up till the time of its decision: per Wilcox J in Commonwealth v Ford [1986] FCA 94; (1986) 65 ALR 323 at 437-438 citing Drake 46 FLR at 419 and Nevistic v Minister for Immigration and Ethnic Affairs [1981] FCA 41; (1981) 51 FLR 325 at 326-327 cited by Davies J in Freeman v Secretary, Department of Social Security [1988] FCA 294; (1988) 19 FCR 342 at 344. This general approach of the Tribunal was described by Davies J in Jebb v Repatriation Commission [1988] FCA 105; (1988) 80 ALR 329 at 289 as being:
‘to regard the administrative decision-making process as a continuum and to look upon the Tribunal’s function as a part of that continuum so that, within the limits of the reconsideration of the decision under review, the Tribunal considers the applicant’s entitlement from the date of application or other proper commencing date to the date of the Tribunal’s decision.’
I summarised the role of the Tribunal in reviewing a decision in Kang and Secretary, Department of Social Services[2] at [18] as follows:
The role of the Tribunal in such a review is to determine for itself what is the correct and preferable decision: see Shi v Migration Agents Registration Authority [2008] HCA 31; (2008) 235 CLR 286 (Shi). The Tribunal is not limited to reviewing the decision for legal or other error, but rather conducts its own de novo assessment and determination of the matter. Its role is ‘to “do over again” what the original decision maker did’: see Yao v Minister for Immigration and Border Protection (2014) 140 ALD 21at [41] per Perry J (White and Wigney JJ agreeing), referring to Shi at [100] (per Hayne and Heydon JJ) and at [37] (per Kirby J). See also Drake v Minister for Immigration and Ethnic Affairs (1979) 2 ALD 60 at [589] and reference to that case in CMHV and Director-General of Security and Minister for Foreign Affairs [2017] AATA 1547 at [37].
[2] [2019] AATA 758.
In Carter and Australian Securities and Investments Commission[3] at [51], having referred to a number of the authorities set out in the above paragraphs, I observed:
The above authorities make it clear that the role of the Tribunal is to do over again that which the original decision maker did and, on the evidence before the Tribunal at the time that it makes its decision, exercising the same discretions that the original decision maker had, make what it considers to be the correct or preferable decision. That is not, as asserted by the Applicant, an exercise in considering what errors the delegate made. It will be an exercise in considering the evidence that was presented to the delegate, and any further evidence put to the Tribunal by the parties, and forming its own view as to what the correct or preferable decision is.
[3] [2020] AATA 809.
DECISION
For the reasons set out above I am satisfied that Slyp is a person whose interests are affected by the decision under review and that it is appropriate for it to be made a party to these proceedings. The Applicant’s opposition to Slyp being made a party is misconceived and is based on a misunderstanding of the nature of a review to be undertaken by the Tribunal.
I direct that, pursuant to s 30(1A) of the AAT Act, Slyp Pty Ltd be made a party to these proceedings.