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
•7 June 2007
CATCHWORDS – PRACTICE & PROCEDURE – PATENTS – application to be joined as a party – power of Tribunal to join – extent to which application needs to be supported by evidence – application granted
Administrative Appeals Tribunal Act 1975 ss 2A, 27, 30, 30(1A) and 37
Development Allowance Authority Act 1992 s 119
Migration Act 1958 ss 353 and 420
Patents Act 1990 ss 88, 89, 223 and 224
Patents Regulations 1991 rr 5.1, 5.3 and 8.1
Social Security (Administration) Act 1999 s 141
Therapeutic Goods Act 1989
Trade Practices Act 1974
Allan v Transurban City Link Ltd (2001) 208 CLR 167; 183 ALR 380
Alphapharm Pty Limited v Smithkline Beecham (Australia) Pty Limited and Others (1994) 49 FCR 250, 121 ALR 373, 32 ALD 71
Federal Commissioner of Taxation v Brown [1999] FCA 1198; 99 ATC 4852
Comptroller-General of Customs v Members of the Administrative Appeals Tribunal (1994) 123 ALR 140, 32 ALD 463
Edwards v Australian Securities Commission and Others (1997) 72 FCR 350; 142 ALR 455
Minister for Immigration and Multicultural Affairs v Eshutu (1999) 197 CLR 611; 162 ALR 577
Re Control Investment Pty Ltd and Australian Broadcasting Tribunal (No 1) (1980) 3 ALD 74; 50 FLR 1
Re Marine World Victoria Ltd and Minister for Arts, Heritage and Environment (1986) 10 ALD 262
Re Peters and Department of Health and Aged Care (1999) 56 ALD 561
Re Queensland Investment Corporation and Minister for Transport & Regional Services and Shopping Centre Council of Australia (2004) 84 ALD 717
Re The Australian and Department of Families, Community Services and Indigenous Affairs and Cape York Land Council [2006] AATA 755
Sun v Minister for Immigration and Ethnic Affairs [1997] FCA 324
United States Tobacco Company v Minister for Consumer Affairs and Others Unreported, 15 September 1988, No. G158 of 1988
Windshuttle v Deputy Federal Commissioner of Taxation (1993) 46 FCR 235; 93 ATC 4992; 27 ATR 88
DECISION AND REASONS FOR DECISION [2007] AATA 1460
ADMINISTRATIVE APPEALS TRIBUNAL )
) V2006/909-910
GENERAL ADMINISTRATIVE DIVISION )
Re:KINABALU INVESTMENTS PTY LTD
Applicant
And:COMMISSIONER OF PATENTS
Respondent
And: WAY TO GO AUSSINDO PTY LTD
Party Joined
Application by:
BARRON & RAWSON PTY LTD
To be joined as a party
DECISION
Tribunal: Deputy President S A Forgie
Date: 7 June 2007
Place: Melbourne
Decision:The Tribunal joins Barron & Rawson as a party to proceedings Nos. V2006/909 and V2006/910.
S A FORGIE
Deputy President
REASONS FOR DECISION
These matters have their foundation in patent application No 2003281553 filed by Way To Go Aussindo Pty Ltd (Way To Go) on 24 July 2003 through the provisions of the Patent Co-operation Treaty (PCT). The application claims priority from 24 July 2002 when the Australian provisional application was made. Way To Go had applied to the Commissioner of Patents (Commissioner) to extend the time in which to enter the national phase of the patent application (first EoT application). It did so under s 223 of the Patents Act 1990 (Patents Act). Kinabalu Investments Pty Ltd (Kinabalu) applied to the Commissioner under the same section to extend the time within which it could file a Notice of Opposition in respect of Way To Go’s application (second EoT application). The Commissioner refused Kinabalu’s second EoT application. Kinabalu then applied to the Tribunal for review of his decision (V2006/909). He also decided to grant Way To Go’s first EoT application and Kinabalu applied to the Tribunal for review of his decision (V2006/910).
Way To Go was joined as a party to each of the proceedings in the Tribunal. Barron & Rawson Pty Ltd (Barron & Rawson) has also applied to be joined as a party. Way To Go and the Commissioner consented to its application but Kinabalu did not. I have decided to join Barron & Rawson as a party to each proceeding. On behalf of Kinabalu, Mr Evans has asked for written reasons for my decision.
BACKGROUND
Under this heading, I will set out the facts that appear in the submissions made on behalf of Kinabalu and Barron & Rawson and the material in the documents lodged under s 37 of the Administrative Appeals Tribunal Act 1975 (AAT Act) (T documents). For the moment, the parties do not appear to be in dispute about these matters.
Kinabalu is the patentee or proprietor of Australian standard patent No 774224, which is entitled “A Barrier” (Patent 774224). It has a priority date of 10 August 1999, a filing date of 10 August 2000, a publication date of 5 March 2001 and a sealing date of 2 December 2004. Patent application No 2003281553 has been made in respect of a “Relocatable transportable safety crash barrier system”, which is known as the “Guardliner”. Barron & Rawson contend that it has an agreement to manufacture and sell the product that is the subject of patent application No 2003281553 filed by Way To Go.
The agreement was the subject of proceedings in the Brisbane Registry of the Federal Court between Kinabalu as applicant and Barron & Rawson, Way To Go and Mr Anthony Carey as respondents.[1] Kinabalu has claimed that Barron & Rawson has “… manufactured, assembled, sold, hired or offered for sale or hire a relocatable guardrail road barrier system known as the Guardliner”.[2] It has claimed that Barron & Rawson did so at the instigation of Mr Anthony Carey and Way To Go. In doing so, Kinabalu has claimed, its Patent 774224 has been infringed. Barron & Rawson has acted without a licence from Kinabalu and Kinabalu has suffered unspecified damages.
[1] QUD217 of 2005
[2] Further Amended Statement of Claim amended pursuant to orders made by Spender J on 29 March and 31 July 2006 and lodged in Federal Court proceedings QUD217 of 2005 at [5].
Barron & Rawson, Way To Go and Mr Anthony Carey allege that Patent 774224 is invalid and liable to be revoked on grounds they specify in the Cross-claim lodged in the Federal Court proceedings. They admit that Mr Anthony Carey is named as the inventor in respect of patent application No 2003281553 and that Way To Go is the applicant named in that application. Barron & Rawson assert that they have an oral agreement to the effect that Way To Go licensed it to exploit the Guardliner that is the subject of patent application No 2003281553. In relation to this aspect of the proceedings, Spender J has reserved his judgment.
There is a second aspect of the proceedings in the Federal Court. Kinabalu also asserted that patent application No 2003281553 filed by Way To Go lapsed on 24 February 2005. Therefore, when Barron & Rawson advertised after that date that the Guardliner was the subject of a pending patent application, its advertising was misleading and deceptive. Way To Go and Barron & Rawson admitted to using the term “Patent Pending” when advertising the Guardliner Barrier but denied that their doing so was misleading or deceptive within the meaning of the Trade Practices Act 1974 (Trade Practices Act). That aspect has yet to be heard by the Federal Court.
TRIBUNAL’S POWER TO JOIN A PARTY
Section 30(1A) of the AAT Act provides that:
“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, make that person a party to the proceeding.”
Putting aside the procedural preconditions of an application for review of a decision and a written application for joinder, the Tribunal must satisfy itself of two matters before it can exercise the power in s 30(1A). The first is that the person must be a “person whose interests are affected by the decision”. The second only arises if the person is such a person. That is whether it is appropriate to exercise the discretion to join the person as a party.
General principles relevant in determining whether interests are affected by a decision under review
In Re Control Investment Pty Ltd and Australian Broadcasting Tribunal (No 1)[3] (Control Investment), Davies J considered when a person’s “interests are affected” within the meaning of ss 27(2)[4] and 30(1)(c) of the AAT Act. At the time, s 30(1)(c) provided that “… the parties to a proceeding are … any other person … whose interests are affected by the decision and who applied to the Tribunal to be made a party to the proceeding and was made such a party by an order of the Tribunal.” Davies J said:
“In their context in ss 27 and 30, the words ‘interests are affected’ denote interests which a person has other than as a member of the general public and other than as a person merely holding a belief that a particular type of conduct should be prevented or a particular law observed. The interest affected need not be a legal interest nor need the person seeking joinder establish legal ownership of the interest. ... However, a person seeking joinder must be able to identify a relevant interest which is his. In other contexts, dicta in cases have used the adjectives ‘real’, ‘genuine’ and ‘direct’ to describe the relationship required between the decision and the interest. Sections 27(1) and 30(1) do not make use of adjectives but they do require that the applicant demonstrates genuine affection of an interest which attaches to him. The nature of the interest required in a particular case will be influenced by the subject matter and context of the decision under review. As Brennan J said in McHattan’s case [Re McHattan and Collector of Customs (1977) 18 ALR 154 at 157]: ‘However, a decision which affects interests of one person directly may affect the interests of other indirectly. Across the pool of sundry interest, the ripples of affection may widely extend. The problem which is inherent in the language of the statute is the determination of the point beyond which the affection of interests by a decision should be regarded as too remote for the purposes of s 27(1). The character of the decision is relevant, for if the interests relied on are of such a kind that a decision of the given character could not affect them directly, there must be some evidence to show that the interests are in truth affected.’”[5]
This passage was approved by the Full Court in United States Tobacco Company v Minister for Consumer Affairs and Others,[6] Alphapharm Pty Limited v Smithkline Beecham (Australia) Pty Limited and Others[7] (Alphapharm) and Comptroller-General of Customs v Members of the Administrative Appeals Tribunal.[8]
[3] (1980) 3 ALD 74; 50 FLR 1
[4] Section 27 provides, in part, that a person whose interests are affected by a decision may apply for review.
[5] (1980) 3 ALD 74; 50 FLR 1 at 79-80, 8-9
[6] Unreported, 15 September 1988, No. G158 of 1988
[7] (1994) 49 FCR 250, 121 ALR 373, 32 ALD 71
[8] (1994) 123 ALR 140, 32 ALD 463
In deciding Alphapharm, Davies J set out some of the more general principles underpinning those to which he had referred in Control Investment. I summarised these in Re Queensland Investment Corporation and Minister for Transport & Regional Services and Shopping Centre Council of Australia[9]:
“‘The question of standing is … related to issues of procedural fairness’: at FCR 260; ALR 383; ALD 80
‘If a person has interests which ought to be taken into account in the making of a decision, then ordinarily that person should be entitled to be heard’: at FCR 260; ALR 383; ALD 80
‘Many … decisions do not affect the rights, interests and expectations of the individual citizen in a direct and immediate way’: at FCR 260; ALR 383; ALD 80. A decision to impose a rate or a decision to impose a general charge for services is a decision that affects each ratepayer individually. It is also a decision of a ‘policy’ or ‘political’ nature and so is not subject to judicial review.
Whether or not a person has a right to be heard during the decision-making process, is a matter to be taken into account in deciding whether or not that person has a right to seek judicial review of the decision.
The Therapeutic Goods Act[[10]] is dominated by public interest concerns. It does not provide for the joinder of persons, including competitors, in the decision-making process.”[11]
[9] (2004) 84 ALD 717 Similar principles were applied in Edwards v Australian Securities Commission and Others (1997) 72 FCR 350; 142 ALR 455
[10] Therapeutic Goods Act 1989, under which the relevant decisions had been made.
[11] (2004) 84 ALD 717 at 736
In his judgment in Alphapharm, Gummow J noted that:
“… it is important not to draw from what was said in any particular decision by way of identification of that which did or did not amount to a sufficient affectation of an interest any general proposition which may be translated to … [a particular] dispute. 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.”[12]
Given the spectrum of decisions that could be made under the Therapeutic Goods Act1989, including decisions that could be made on the initiative of the Secretary rather than on an application, and that are reviewable under it, Gummow J said:
“… The denotation of the phrase ‘whose interests are affected’ … should not be assumed to be the same across this spectrum of decision making. It has a series of distinct operations and, in this sense, is of an ambulatory nature. … it cannot be correct that … the class of persons whose interests are affected by an initial decision is limited to disaffected applicants. Persons whose existing situation under the legislation is changed by operation of the initial decision, which was not sought but was imposed upon them, must be persons whose interests are affected by the initial decision.”[13]
[12] (1994) 49 FCR 250; 121 ALR 373; 32 ALD 71 at 272, 395, 91
[13] (1994) 49 FCR 250; 121 ALR 373; 32 ALD 71 at 273, 396, 91-92 Similar principles were adopted in Edwards v Australian Securities Commission and Others (1997) 72 FCR 350, 142 ALR 455
More recently, the High Court focused on whether a person was “affected by a reviewable decision” within the meaning of s 119 of the Development Allowance Authority Act 1992 (Authority Act). It did so in Allan v Transurban City Link Ltd[14] (Allan). The majority of the High Court said:
“ The expression ‘affected by’ and cognate terms appear in a range of laws of the Commonwealth. … It is necessary to answer the questions posed … in respect of s 119(1) of the Authority Act by reference to the subject, scope and purpose of that statute, rather than by the application of concepts derived from decisions under the general law respecting what has come to be known as ‘standing’. …
… A particular statute may establish a regime which specifically provides for its own measure of judicial review on the application of persons meeting criteria specified in that statute. … The starting point, as indicated by several authorities in the Full Court of the Federal Court …, is the construction of the Authority Act with regard to its subject, scope and purpose. … What serves to identify a person as one affected by a reviewable decision will vary having regard to the nature of the reviewable decision itself. …”[15]
[14] (2001) 208 CLR 167; 183 ALR 380 (Gleeson CJ, Gaudron, Gummow, Hayne and Callinan JJ, Kirby J dissenting)
[15] (2001) 208 CLR 167; 183 ALR 380 at 174, 384; [15]-[17]
Matters relevant to the exercise of the discretion
The fact that a person’s interests are affected by the decision under review does not automatically lead to the conclusion that it should be joined as a party. The critical words in s 30(1A) of the AAT Act are that the “… Tribunal may, in its discretion, … make that person a party to the proceeding.” In Re Marine World Victoria Ltd and Minister for Arts, Heritage and Environment,[16] Deputy President Thompson said:
“… That discretion must, of course, be exercised rationally with regard paid to all of the circumstances of the proceeding and the nature of the interest of each of the persons applying to be made a party. It is necessary to have regard to the nature of review proceedings before the Administrative Appeals Tribunal. As was pointed out in Re Control Investments [sic] Pty Ltd, the Tribunal is required by the AAT Act to provide a fair hearing and to carry out the review as expeditiously as the subject matter of the review permits … The increased cost of the proceeding to the applicant and the respondent which will result from the joinder of additional parties in the proceeding is a factor to be taken into account … I am unable to accept that the Tribunal should allow Marine World to be subjected to greater expense than is necessary for the proper review of the Minister’s decision. Further, the Tribunal must be concerned with the cost not only to Marine World but also to public funds and endeavour to contain it to what is sufficient to enable it to undertake a proper review.
(33) There is also the requirement that the matter be dealt with expeditiously. That, and the need to keep the cost within proper bounds, make it undesirable that there should be a multiplicity of different parties each separately represented and presenting a separate case. …”[17]
[16] (1986) 10 ALD 262
[17] (1986) 10 ALD 262 at 271-272, [32]-[33]. Deputy President Thompson went on to direct that parties whose interests were substantially the same should be represented by a common representative. In Re Peters and Department of Health and Aged Care (1999) 56 ALD 561 at 577, Senior Member Bayne directed that the joined parties be limited in their participation to making written submissions in relation to one issue.
The concepts of expedition and economy while ensuring that there is an opportunity to ensure that the decision is afforded proper review now find their way into the more recently enacted s 2A of the AAT Act. It provides that:
“In carrying out its functions, the Tribunal must pursue the objective of providing a mechanism of review that is fair, just, economical, informal and quick.”[18]
Provisions of this sort have been described as “general exhortatory provisions”[19] and are intended to be facultative and not restrictive.[20] In some instances, the five qualities that the Tribunal is exhorted to aspire to may appear difficult to achieve simultaneously. I have discussed this issue in another case and will not repeat it here.[21] Putting those difficulties to one side, it seems to me that s 2A does not alter the principles that I must apply.
[18] Provisions of this sort are to be found in s 353 of the Migration Act 1958 (Migration Act) with reference to the Migration Review Tribunal and s 420(1) of the same Act in relation to the Refugee Review Tribunal (RRT) as well as in s 141 of the Social Security (Administration) Act 1999 in relation to the Social Security Appeals Tribunal.
[19] Sun v Minister for Immigration and Ethnic Affairs [1997] FCA 324 per Lindgren J
[20] Minister for Immigration and Multicultural Affairs v Eshutu (1999) 197 CLR 611; 162 ALR 577 at 628; 588 per Gleeson CJ and McHugh J and 659; 613 per Hayne J and see also similar views expressed by Gaudron and Kirby JJ at 635; 592-594
[21] Re The Australian and Department of Families, Community Services and Indigenous Affairs and Cape York Land Council [2006] AATA 755 at [58]
MUST THE APPLICATION FOR JOINDER BE SUPPORTED BY EVIDENCE?
The application for joinder is not supported by affidavit or documentary evidence other than that to which I have referred. There are occasions on which supporting evidence of that nature would be desirable but this is not such a case. I have reached that conclusion on two bases. The first is that the essential facts necessary to decide Barron & Rawson’s application do not appear to be in dispute. That is not to say that the broader issues in dispute among the parties are not in dispute. They clearly are but an application for joinder is not the occasion on which to decide substantive issues.
My second basis is related to the first. An application for joinder is not a matter in which I am required to assess the veracity of the facts alleged. An application for joinder should be approached in the same way as the Tribunal approaches an application for an extension of time within which to lodge an application for review. In FederalCommissioner of Taxation v Brown,[22] for example, Drummond, Sackville and Hely JJ summarised the essential principles in considering the substantial merits of the application:
“ It is important to appreciate the limits of the Commissioner’s[[23]] argument. Mr Bevan, who appeared with Mr Iuliano for the Commissioner, explicitly (and properly) made the following concessions:
(i) In determining whether a taxpayer seeking an extension of time in which to lodge an objection has prospects of success, the test to be applied is whether the objection arguably has merit.
(ii) The arguable merits test requires the taxpayer’s case to be assessed at its highest.
(iii) It follows that, in applying the arguable merits test, findings of credit have no place. In other words, it is an error of law for the AAT to decide that the taxpayer’s objection has no arguable merits on the basis that the taxpayer’s evidence is not worthy of belief.
(iv) Ordinarily, it is inappropriate for the AAT to permit or to engage in cross-examination of the taxpayer’s witnesses with the view to testing the veracity of their evidence so far as the merits of the objection were concerned. Mr Bevan specifically conceded that it was ‘inappropriate’ for the AAT Member to have cross-examined the taxpayer as to the truth of his claim that the unit was an unsolicited gift offered by Mr Ray.”[24]
[22] [1999] FCA 1198; 99 ATC 4852
[23] Commissioner of Taxation
[24] [1999] FCA 1198; 99 ATC 4852 at 4858; [18]
In the earlier case of Windshuttle v Deputy Federal Commissioner of Taxation,[25] von Doussa J explained that the merits did not need to be assessed on the basis of formal evidence unless the basis were challenged. He said:
“The issue which the AAT was required to consider was whether, for the purposes of the exercise of the discretion under s 188A [of the Income Tax Assessment Act 1936], the applicant's case had prospects of success, and what those prospects were. It is sufficient for that purpose, if the parties chose to so argue their case, to merely identify the factual assertions which the applicant made in the objection, and then to consider whether the application of the law to those assertions would bring about the result for which the applicant contends. In other words the assertions can, if the parties so choose, be treated as pleadings are treated where an application is made to strike out an action on the ground that the pleadings disclose no cause of action. On an application of that kind the true existence of the facts alleged in the pleadings is not explored by evidence. That is left for the trial if there is an arguable case on the pleadings. It would, of course, have been open before the AAT for the Commissioner to attack the history of the transaction asserted by the applicant. If it could have been demonstrated that an essential part of that history was wrong, that would go directly to the prospects of success to the objection. However the Commissioner chose not to [attack] the veracity of the facts alleged by the applicant, and this is understandable having regard to judicial pronouncements to the effect that where the issue is whether leave should be given to extend time it is inappropriate for the tribunal concerned to embark on a full scale trial of the merits of the underlying question which will be agitated only if time is extended. See Barrett v Minister for Immigration, Local Government and Ethnic Affairs (1989) 18 ALD 129 at 130, Repatriation Commission v Tuite (1992) 37 FCR 571 at 577. It would not be appropriate on an application to extend time to seek to attack the facts alleged on the ground that the credit of the applicant, or that of supporting witnesses, should not be accepted. Arguments of that kind are best left for later consideration if and when an extension of time is granted. Only where there is some obvious and easily demonstrated flaw in the applicant's case would it be appropriate to challenge the factual basis for the asserted claim on an application to extend time.”[26]
[25] (1993) 46 FCR 235; 93 ATC 4992; 27 ATR 88
[26] (1993) 46 FCR 235; 93 ATC 4992; 27 ATR 88 at 243-244; 4999 and 95 and approved by Federal Commissioner of Taxation v Brown [1999] FCA 1198; 99 ATC 4852 at 4856; [12] per Drummond, Sackville and Hely JJ
It seems to me that the same considerations apply in this case.
THE SCOPE OF THE COMMISSIONER’S POWERS
In view of the principles set out in the cases, it is relevant to have regard to the particular provisions set out in the Patents Act relating to the decision of which Kinabalu seeks review.
An application made under the PCT (PCT application) must be treated as a complete application under the Patents Act for a standard patent.[27] Chapter 8 of that Act provides for the manner in which its provisions apply to a PCT application as does Chapter 8 of the Patents Regulations 1991 (Patents Regulations). A PCT application is taken to comply with the prescribed requirements of the Patents Act and the Patents Regulations relating to patent applications for standard patents but is not taken to comply with any other requirements that apply to it.[28]
[27] Patents Act, s 88(1)
[28] Patents Act, s 89(1)
Section 89(3) of the Patents Act makes particular provision in relation to a PCT application. It provides that an applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless, among other matters, the prescribed documents have been filed and the prescribed fees paid.[29] Regulation 8.1(4) provides that it must meet those requirements within 31 months after the priority date of the PCT application. That meant that the time for meeting the requirements expired on 24 February 2005.
[29] Patents Act, s 89(3)(b)
Way To Go sought an extension of the time within which it had to meet the s 89(3) requirements. It did so under s 223 of the Patents Act. That section gives the Commissioner the power to extend the time for doing a “relevant act that is required to be done within a certain time” in certain circumstances.[30] A “relevant act” means:
“… an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.”[31]
[30] Patents Act, ss 223(1) and (2A)
[31] Patents Act, s 223(11)
In certain circumstances, a person may oppose the granting of an application for an extension of time. That is the effect of s 223(6). Such an application brings Chapter 5 of the Patents Regulations into play.[32] Regulation 5.3(5) provides that a:
“A person who intends to oppose the grant of an application for an extension of time under subsection 223 (6) of the Act must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.”
Kinabalu did oppose Way To Go’s application for an extension of time but did not lodge its notice of opposition within one month of the advertisement of Way To Go’s application on 20 October 2005. Instead, it did so on 5 December 2005 and so itself had to apply under s 223 for an extension of time within which to lodge its notice of opposition in accordance with r 5.3(5). The Commissioner ultimately refused its application and granted Way To Go’s.
[32] Patents Regulations, r 5.1(a)(v)
SHOULD BARRON & RAWSON BE JOINED AS A PARTY?
It is clear that Barron & Rawson has an interest in maintaining the status quo. That is to say, it has an interest in Way To Go’s continuing to enjoy an extension of time within which to comply with the requirements of s 89(3) of the Patents Act and so enter the national phase of its PCT application. It does so because it has an agreement with Way To Go to manufacture and sell the product that is the subject of the PCT application. That interest translates into an interest in Kinabalu’s application for review to the Tribunal. It does so because, if Kinabalu were to be successful in its application for review of the Commissioner’s decision refusing to extend the time within which it might lodge a notice of opposition to Way To Go’s application for an extension, then presumably Way To Go’s application for an extension of time to enter the national phase would have to be reconsidered by the Commissioner. If Way To Go were to be unsuccessful on that reconsideration, Barron & Rawson’s commercial interests may potentially be affected by virtue of the contractual arrangements, be they oral or written, between it and Way To Go. This is quite apart from any possible consequences arising out of its advertising a product as being the subject of a “Patent pending”.
On behalf of Kinabalu, Mr Evans submitted that I should have regard to the precise nature of any licence agreement between Way To Go and Barron & Rawson. He submitted that Barron & Rawson’s interests could be advanced were the agreement between it and Way To Go for a non-exclusive licence to manufacture the Guardliner. That may be so but it seems to me that, rather than giving me a reason why Barron & Rawson’s interests are not affected, Mr Evans has given me another view as to why its interests may be affected. Either way, it seems to me that Barron & Rawson’s interests are affected. Section 30(1A) does not require that its interests be affected adversely in order to come within the scope of the power it gives the Tribunal.
Mr Evans also submitted that the joinder application would be misconceived were it thought that permitting the application to enter the national phase cured misleading or deceptive conduct or conduct that was likely to mislead or deceive in the proceedings under the Trade Practices Act. That will depend upon Barron & Rawson’s conduct before the Commissioner extended the time within which Way To Go could enter the national phase. Whether I share that view is not something that I need to turn my mind to. It is a matter for the Federal Court. Even if Mr Evans is correct, that does not detract from my conclusion that Barron & Rawson’s interests are affected by Kinabalu’s application which, if successful in the Tribunal, will change the state of affairs that currently exists in relation to the patent application. I have concluded, therefore, that Barron & Rawson is a person whose interests are affected by the decision under review.
That brings me to whether I should exercise my discretion and join Barron & Rawson as a party. Way To Go is the applicant for the PCT application and it has a particular position to protect and view to point. To a large extent, its interests and those of Barron & Rawson are the same but they are not identical. As the person claiming to be entitled to manufacture the Guardliner under a contract with Way To Go, the perspectives of Way To Go and of Barron & Rawson will be different. One will be from the perspective of the PCT patent applicant and the other from the point of view of the licensee. This is not a case in which there will be duplication of evidence or of interests. To the extent that there is a potential for duplication, it can be minimised by appropriate directions.
For the reasons I have given, I granted the application by Barron & Rawson to be joined as a party to proceedings Nos. V2006/909 and V2006/910.
I certify that the twenty-eight preceding paragraphs are a true copy of the reasons for the decision herein of
Deputy President S A Forgie,
Signed: ...............................................................
Jayne Rathjen Associate
Date of Hearing 7 June 2007
Date of Decision 7 June 2007
Date of Written Reasons 22 June 2007Solicitor for the Applicant Mr A Evans
Solicitor for the Respondent excused from hearing
For the party joined
Way To Go Aussindo Pty Ltd Mr A CareyFor the party applying to be
joined Barron & Rawson Pty Ltd Mr J. Cameron
17
5
0