Lehtovaara V Commissioner of Patents

[1981] FCA 248

Re: IN THE MATTER of the Patents Act 1952
And: IN THE MATTER of a reference of a question of law by the Administrative
Appeals Tribunal; IN THE MATTER of an application for a patent in which the
applicant was RITVA MAIJA LEHTOVAARA (1981) 58 FLR 1
No. VG 99 of 1981 Patent
Patent - Administrative Law

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Franki(1), Northrop(2) and Ellicott(2) JJ.

CATCHWORDS

Patent - Application for standard patent - extension of time for acceptance - decision of Commissioner of Patents - application lapsed - whether power to extend time.

Administrative Law - Administrative Appeals Tribunal - case stated - whether Commissioner of Patents has power to extend time for acceptance prescribed by s.54 under s.160.

Administrative Appeals Tribunal Act 1975 s.45 Patents Act 1952 ss.49, 53, 54, 141, 160

Patents - Application for standard patent - Extension of time for acceptance - Decision of Commissioner of Patents - Application lapsed - Whether power to extend time - Patents Act 1952 (Cth), ss. 49, 52, 53, 54, 141, 160.

Administrative Law - Administrative Appeals Tribunal - Case stated - Whether Commissioner of Patents has power to extend time for acceptance prescribed by s. 54 under s. 160 of Patents Act - Whether Tribunal has jurisdiction to consider whether lawful ground of objection has been removed in reviewing decision under s. 160 of Patents Act - Patents Act 1952 (Cth), ss. 49, 52, 53, 54, 141, 160 - Administrative Appeals Tribunal Act 1975 (Cth), s. 45.

HEADNOTE

Under s. 52 of the Patents Act if the Commissioner is satisfied there is no lawful ground of objection to an application for a standard patent and complete specification, or that such grounds have been removed, he shall accept the application and complete specification. By s. 53 if an application and complete specification is not accepted within the time provided by s. 54 it lapses. Section 54 (1) provides that the period within which an application and complete specification may be accepted is twelve months after the first report of the examiner is sent; and s. 54 (1B) enables the Commissioner to extend the period for acceptance whether or not it has already expired.

By s. 160 (1) the Commissioner shall grant an extension of time where, due to some error or omission in the Patent Office, an act or step is not taken in time; and under s. 160 (2) the Commissioner may extend time where, due to error or omission by the applicant or his attorney or due to circumstances beyond his control, a necessary act or step is not taken in time.

Held: Per Northrop and Ellicott JJ., Franki J. dissenting - (1) In considering whether s. 160 is to apply to the various provisions in the Patents Act fixing a time for doing an act or taking a step, the test is whether each such provision contains any clear indication that s. 160 should not apply.

Australian Paper Manufacturers Ltd. v. C.I.L. Inc. (1981), 56 ALJR 40; AB Scaniainventor v. Commissioner of Patents (1981), 54 FLR 367, referred to.

(2) Section 54 of the Patents Act is to be read as subject to the power in s. 160; so that if an application and complete specification is not accepted within the time provided by reason of error or omission by the applicant or his attorney, or circumstances beyond his control, within s. 160 (2), the Commissioner has power to extend the time specified by s. 54 for acceptance.

(3) The Administrative Appeals Tribunal in reviewing a decision of the Commissioner under s. 160 of the Patents Act has power to decide for the purposes of s. 52 whether any matters constituted a lawful objection to an application and whether any grounds of objection have been removed, provided that these issues properly arise in the course of deciding whether an extension should be granted under s. 160 of the Act.

HEARING

1981, August 5-6; December 22. #DATE 22:12:1981

REFERENCE OF QUESTIONS OF LAW.

The applicant lodged an application for a standard patent and complete specification. The examiner made an adverse report and an extension of time was granted but expired before the application and specification were accepted. The applicant applied to the Administrative Appeals Tribunal to review the decision, and the Tribunal referred questions of law to the Full Court of the Federal Court.

J. McL. Emmerson, for the applicant.

R. C. Macaw, for the Commissioner.

Cur. adv. vult.

Solicitors for the applicant: Whiting & Byrne.

Solicitor for the Commissioner: B. J. O'Donovan, Commonwealth Crown Solicitor.

R. R. BOADEN

ORDER

The questions asked in the case stated are answered as follows:

1. If an application for a patent and complete specification is not accepted within the time for acceptance provided by s.54 of the Act by reason of an error or omission on the part of the applicant or of his agent or attorney or circumstances beyond the control of the applicant within sub-section 160(2) of the Act, does the Commissioner of Patents have power under sub-section 160(2) of the Act to extend the time for acceptance as provided by s.54 of the Act?

Answer: Yes.

1. If an application for a patent and complete specification is not accepted within the time for acceptance as provided by s.54 of the Act by reason of an error or omission on the part of an officer or person employed in the Patent Office within sub-section 160(1) of the Act, does the Commissioner of Patents have the power under sub-section 160(1) of the Act to extend the time for acceptance as provided by s.54 of the Act?

Answer: Yes.

1. If yes to 2,

(a) If an examiner's adverse report communicates objections which are later withdrawn by the Commissioner or are not upheld as lawful objections, is the failure of the Commissioner to accept the application within the time for acceptance before such objections are so withdrawn or not upheld a failure to accept the application by reason of an error or omission on the part of an officer or person employed in the Patent Office within sub-section 160(1) of the Act?

(b) Is the Commissioner without more deemed to have extended the time for acceptance?

(c) If no to part (b), is the Commissioner then

(i) able, (ii) bound

to exercise the power to extend the said time for acceptance?

Answer: Not appropriate to answer.

1. Has the Tribunal for the purposes of reviewing a decision of the Commissioner under s.160 of the Act the power to decide

(i) whether any matter or matters constitute a lawful ground of objection to an application for a patent and complete specification

and

(ii) whether any grounds of objection to an application and complete specification have been removed

within the meaning of s.52(1) of the Act?

Answer: Yes, if those issues properly arise.

1. If an examiner's adverse report communicates objections which are later withdrawn by the Commissioner or are not upheld as lawful objections and if by reason only of such adverse report the Commissioner does not accept the application for a patent and complete specification within the time for acceptance as provided by s.54 of the Act -

(i) does the application lapse by operation of s.53 of the Act?

(ii) is the Commissioner under an obligation pursuant to s.52 of the Act to accept the application and complete specification notwithstanding that the time for acceptance as provided by s.54 of the Act has expired?

Answer: Not appropriate to answer.

Remit case to the Administrative Appeals Tribunal for determination in accordance with the answers given.

Leave granted to either party to move for an order for costs.

JUDGE1

The President of the Administrative Appeals Tribunal ("the Tribunal") has referred certain questions of law to this Court pursuant to s.45 of the Administrative Appeals Tribunal Act 1975. The applicant, Ritva Maija Lehtovaara, lodged an application and a complete specification for a standard patent under the provisions of the Patents Act 1952 ("the Act") on 22 April 1975. Pursuant to s.48 of the Act the examiner reported adversely upon the complete specification on 13 October 1977. The applicant's patent attorney proposed certain amendments under s.49(1) of the Act on 19 April 1979 and on the same day he also applied, under the provisions of s.54 (1B) of the Act, for an extension of the period within which the application and complete specification might be accepted. This application was granted and the time for acceptance was extended until 13 May 1979.

On 8 May 1979 the examiner issued a second report which was also an adverse report.

On 13 May 1979 the date for acceptance of the patent and complete specification passed without acceptance.

It is appropriate to set out the provisions of ss.53, 54(1), (1B), (2) and (3) of the Patents Act:
"53. Where an application for a standard patent and complete specification have not been accepted within the time for acceptance as provided by section 54, the application shall lapse.

54.(1) Subject to this section, the period within which an application for a standard patent and complete specification may be accepted is 12 months after the date on which the first report of the Examiner arising out of the examination of the application and complete specification was sent to the applicant, whether that report arose out of an examination made in accordance with section 48 or out of a modified examination.

(1B) The Commissioner may extend the period within which an application for a standard patent and complete specification may be accepted, whether or not that period has expired, but an extension of time under this sub-section shall not be granted for a period expiring more than 21 months after the date referred to in sub-section (1).

(2) Where -

(a) an appeal under any of the provisions of this Act has been instituted in respect of an application;

(b) an application has been made to the Administrative Appeals Tribunal in accordance with section 151 for a review of a decision of the Commissioner in relation to an application; or

(c) in the case of an application for a patent of addition -

(i) an appeal under any of the provisions of this Act has been instituted in respect of; or

(ii) an application to the Administrative Appeals Tribunal under section 151 has been made for a review of a decision in relation to,

that application or the application for the original patent,

the time within which the application and complete specification may be accepted is extended until the expiration of 3 months after the determination or other disposal of the appeal or application for review or until the expiration of such further time as the court to which the appeal, or any further appeal, is brought, or the Administrative Appeals Tribunal or the court to which any appeal arising out of the decision of the Administrative Appeals Tribunal is brought, as the case may be, allows.

(3) Where the applicant has died, the Commissioner may extend, until the expiration of such further time as he determines, the time within which the application and complete specification may be accepted."

No application was made to extend the time for acceptance prior to 13 July 1979 which was the end of the period for which an extension might have been sought under s.54(1B).

On 27 July 1979 further amendments were submitted together with an application for extension of time under s.160(2)(a) of the Act based on circumstances associated with the conduct of the applicant's patent attorney.

It is appropriate to set out the provisions of s.160(1) and (2):
"(1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, 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 shall extend the time for doing the act or taking the step.

(2) 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."

On 2 August 1979 an advertisement was published in the Official Journal that the application had lapsed.

The Acting Deputy Commissioner of Patents ("the Respondent") heard the application for an extension of time pursuant to s.160(2)(a) and gave his decision on 5 February 1980. In addition to deciding that the application had lapsed and that he had no power to extend the time for acceptance he also considered the position under s.160(1) and s.52 of the Act. Section 52(1)(2) and (3) provides:
"(1) If the Commissioner is satisfied that there is no lawful ground of objection to an application for a standard patent and complete specification, or that the grounds of objection to an application for a standard patent and complete specification have been removed, the Commissioner shall, subject to sub-section (3), accept the application and complete specification.

(2) If the Commissioner is not so satisfied, he may refuse to accept the application and complete specification.

(3) The Commissioner shall, if the applicant so requests, postpone acceptance of an application and complete specification until such date, not being after the time for acceptance as provided by section 54, as the applicant specifies."

On a date which was said by counsel for the applicant to be 26 February 1980 an appeal from this decision to the Supreme Court of Victoria, purporting to be pursuant to s.52(8) of the Act, was filed. This appeal is pending. An application for review was also lodged on 4 March 1980 to the Tribunal purporting to be pursuant to s.151 of the Act, to review the decision of 5 February 1980. In the result steps have been taken before both the Supreme Court of Victoria and the Tribunal in respect of the decision of 5 February 1980.

The basis of the Commissioner's decision was that the application had lapsed and following the decision of the Tribunal in Re Toyo Pulp Co. Ltd. v. Deputy Commissioner of Patents (1978) 2 A.L.D. 177, no power existed to extend the time for acceptance either under s.160(1) or s.160(2). That case drew no distinction between s.160(1) and s.160(2).

This Court is asked to answer the following questions:
"(1) If an application for a patent and complete specification is not accepted within the time for acceptance provided by section 54 of the Act by reason of an error or omission on the part of the applicant or of his agent or attorney or circumstances beyond the control of the applicant within sub-section 160(2) of the Act, does the Commissioner of Patents have power under sub-section 160(2) of the Act to extend the time for acceptance as provided by section 54 of the Act?

(2) If an application for a patent and complete specification is not accepted within the time for acceptance as provided by section 54 of the Act by reason of an error or omission on the part of an officer or person employed in the Patent Office within sub-section 160(1) of the Act, does the Commissioner of Patents have the power under sub-section 160(1) of the Act to extend the time for acceptance as provided by section 54 of the Act?

(3) If yes to (2),

(a) If an examiner's adverse report communicates objections which are later withdrawn by the Commissioner or are not upheld as lawful objections, is the failure of the commissioner to accept the application within the time for acceptance before such objections are so withdrawn or not upheld a failure to accept the application by reason of an error or omission on the part of an officer or person employed in the Patent Office within sub-section 160(1) of the Act?

(b) Is the Commissioner without more deemed to have extended the time for acceptance?

(c) If no to part (b), is the Commissioner then

(i) able,

(ii) bound

to exercise the duty to extend the said time for acceptance?
(4) Has the Tribunal for the purposes of reviewing a decision of the Commissioner under section 160 of the Act the power to decide

(i) whether any matter or matters constitute a lawful ground of objection to an application for a patent and complete specification and

(ii) whether any grounds of objection to an application and complete specification have been removed

within the meaning of section 52(1) of the Act?

(5) If an examiner's adverse report communicates objections which are later withdrawn by the Commissioner or are not upheld as lawful objections and if by reason only of such adverse report the Commissioner does not accept the application for a patent and complete specification within the time for acceptance as provided by section 54 of the Act -

(i) does the application lapse by operation of section 53 of the Act?

(ii) is the Commissioner under an obligation pursuant to section 52 of the Act to accept the application and complete specification notwithstanding that the time for acceptance as provided by section 54 of the Act has expired?"

The issues were put by counsel for the applicant as follows:

1. The proposed amendments submitted to the Commissioner on 19 April 1979 ought to have been allowed by the Commissioner and if they had been allowed all lawful grounds of objection to the application and specification under ss.48 and 48A were removed. The Commissioner ought to have been satisfied of this and therefore he was obliged under s.52 to accept the application and complete specification.

2. The second adverse report of the examiner of 8 May 1979 was in error and he should have reported that the amendments were allowable under s.49(2). There was therefore an error or omission on the part of an officer or person employed in the Patents Office within s.160(1) and therefore the Commissioner was obliged to extend the time for acceptance and to accept the application.

3. The applicant had a good case under s.160(2) in that the examiner's second report related to trivial objections and that there were special circumstances, in particular, an illness of the applicant's patent attorney, which would justify an extension of time under the provisions of s.160(2). In the circumstances the power in s.160(2) could be exercised by the Commissioner.

It is appropriate first to consider issue 3 which is that raised by question 1 in the stated case.

In Board of Control of Michigan Technological University v. Commissioner of Patents (1981) 34 A.L.R. 529, at pp.541-543. I expressed the view that s.160(2) did not appear to be available to extend the time for acceptance prescribed in s.54(1B).

The Full Bench of this Court also considered certain aspects of s.160(2) in A.B. Scaniainventor v. Commissioner of Patents (1981) 36 A.L.R. 101, and, inter alia, came to the following conclusions:

(a) That "required to be done or taken" in s.160(2) means requisite or needed to secure an advantage or avoid a disadvantage.

(b) As then advised the Court could see no reason why s.160(2) should not apply to an application for extension of time for lodging a complete specification pursuant to s.41(1).

(c) It was significant that s.141 was not mentioned in s.160(8). Section 160(2) is a remedial section which should be applied when it appears applicable unless there is some clear indication to the contrary. Section 160(2) applied to s.141.

Section 141 in itself contains nothing to suggest that s.160(2) should not apply and, in particular, no provisions similar to those in ss.53 and 54(1B).

Since the present case was argued the High Court have given judgment in Australian Paper Manufacturers Limited v. C.I.L. Inc. 1 December 1981, unreported. The same questions arose in that case as arose in A.B. Scaniainventor v. Commissioner of Patents, supra. The High Court, by a majority, did not differ from the ultimate conclusion reached by this court in A.B. Scaniainventor v. Commissioner of Patents. Stephen J, with whom Mason and Wilson JJ. agreed, said that: "Section 160(2) was applicable to s.141(1) just as it is applicable to other sections of the Act relating purely to domestic applications." The High Court was not concerned with ss.53 or 54(1B) which, in my opinion, contain a clear indication that s.160(2) is not to apply.

Section 160(2) vests a discretion in the Commissioner in circumstances falling within that section to extend the time for doing an act or taking a step. Under s. 160(3) this may be done whether or not the time for doing the act or taking the step has expired. There is a provision for opposition and provision for certain protection is made by s.160(6). Section 160(1) to (7) was substituted for the previous section by No.107 of 1960. Section 160(8) was inserted by No.34 of 1969. Section 54(1) was substituted by No.34 of 1969 and it was amended by No.9 of 1979 in a way which is not relevant to the question under consideration. Section 54(2) was substituted by No.19 of 1979. Section 54(1B) was inserted by No.34 of 1969.

Section 54(1B) is therefore a later provision than s.160(2). The question arises whether s.160(2) can be read with s.54.

Section 53 clearly limits the time for acceptance of an application for a standard patent to the time provided by s.54. Section 54(1) fixes a time which may be extended under the power in s.54(1B) but "an extension under this sub-section shall not be granted for a period expiring" after a date fixed by this sub-section.

Section 54(1B) gives the Commissioner an unlimited discretion to extend the period within which an application for a standard patent and complete specification may be accepted but limits the period for extension of time under that sub-section for acceptance to "21 months after the date referred to in sub-section 1". Section 160(2) gives the Commissioner a discretion to extend the time for doing an act or taking a step in relation to an application for a patent upon certain limited grounds but for an unlimited period. Although s.160(2) provides for an extension of time for the applicant to do an act or take a step in relation to an application for a patent and s.54(1B) relates to the extension of the period within which the Commissioner may accept the patent, I consider that they cannot be read together and that s.54(1B) must be taken to have limited the powers of the Commissioner under s.160(2) to extend the time for acceptance of a patent and complete specification beyond that for which provision is made in s.54(1B). To use the words used by this court in A.B. Scaniainventor v. Commissioner of Patents (supra) I consider that there is "some clear indication" that s.160(2) is not applicable in this case. The fact that the period for which the Commissioner may extend the time for acceptance is limited in s.54(1B) made it unnecessary to include a reference to that section in s.160(8). Sections 54(1B) and 160(8) were both introduced by No.34 of 1969. I would answer the first question "No".

I pass now to the second issue which is that raised by question 2. Section 160(1) requires the Commissioner to extend the time for doing an act or taking a step in relation to an application if that act or step has not been done or taken by reason of an error or omission on the part of an officer or person employed in the Patents Office. I see no inconsistency between this section and s.54(1B). If facts are established which fall within s.160(1) I consider that the Commissioner has a duty to fulfil his obligation under that sub-section. However, for reasons which I will express later, I consider that once the application has lapsed as provided in s.53, the Commissioner has neither duty or power to apply s.160(1). Indeed once the application has lapsed the Commissioner has no power to apply s.160(2). This is a further reason why I would answer the first question "No".

It is necessary to consider the meaning of the words "shall lapse" in s.53. The effect of the lapse of an application for a patent was considered by Fullagar J. in Esso Research and Engineering Co. v. Commissioner of Patents (1959) 102 C.L.R. 347. This case was determined in relation to the Patents Act as it stood in 1955. In that case the time for acceptance had expired but an appeal against the refusal of the Commissioner to accept the application and complete specification had been lodged within the prescribed time. Fullagar J. held that s.53(2) of the Act, as it then stood, had the effect of enlarging the time for acceptance after the institution of an appeal within time. His Honour said at p.352 that s.53(2) and (3) were ". . . obviously intended for the protection of applicants desiring to exercise the right of appeal given in unqualified terms by s.52(3)".

Section 53(2) extended the time where an appeal "has been instituted" and the critical factor in the judgment of Fullagar J. is that the appeal was instituted within time. At p.350 his Honour said:
"I think that the word 'lapse' in s.54 connotes finality, and that the intention is that, when the time for acceptance has passed and there has been no acceptance, the application is to be no longer regarded as subsisting: cf. Re Freeman and Heatrae Ltd.'s Application (1959) R.P.C. 25 at p.27, where the words under consideration were 'deemed to be abandoned'."

In Re Freeman and Heatrae Ltd.'s Application (supra), Lord Evershed M.R. , with whom Sellars and Pearce L.JJ. agreed, said at p.27:
"I think 'abandoned' means 'abandoned'; and I am indeed content to adopt the language of the Assistant Comptroller, with one possible qualification. He said, 'I consider that in all these cases the words "deemed to be" have some such meaning as "treated as if" '. I agree, with this possible further addition-'treated for the purposes of this Act as if'. And therefore if the event has happened which is postulated in the sub-section, so that the application is 'deemed to be abandoned', it follows that the application must be treated for the purposes of this Act as abandoned, and that would be gone and out of the way for all relevant purposes."

At p.28 it was said that ". . . the application, therefore, had to be treated, for the purposes of the Act, as abandoned".

Section 53 provides for the application to lapse if the application and complete specification are not accepted "within the time for acceptance as provided by section 54".

Section 54(1) commences with the words "Subject to this section . . ." and provides that acceptance may take place within 12 months of the first report of the Examiner. Section 54(1B) provides power for the Commissioner to extend the time for acceptance for a period not beyond the period stated therein. Section 54(2) provides for the case where an appeal has been instituted or an application for review made within time.

I am of the opinion that once time for acceptance as provided by s.54 has passed the application will lapse and it will be then no longer subsisting and it will be "gone and out of the way for all relevant purposes" and indeed, the Commissioner will no longer have any power to accept the application and complete specification.

I am therefore of the opinion that, once the time for acceptance has passed, the Commissioner has no power or duty under s.160(1) or (2) because the application has gone and is out of the way for all relevant purposes. This means that when the application under s.160(2) was made to the Commissioner on 27 July 1979, a date after both the 13 May 1979 and 13 July 1979, there was no application for a patent before the Commissioner in respect of which he could apply the provisions of s.160(1). It appears unfortunate that it is not possible to treat s.160(1) in a different manner to s.160(2). There is no relevant provision for restoration of a lapsed application: cf., for example, s.47E. The provision in s.160(3) permitting the exercise of the power to grant an extension of time although that time has expired does not deal with the restoration of an application for a patent which has lapsed. I would answer question 2 "No".

I would answer questions (1) and (2) "No".

Question (3) does not arise and, in any case, it and question (5) are hypothetical and I would not answer them.

I consider that Question (4) does not arise.

I would give leave to either party to seek an order for costs.

JUDGE2

The facts relevant to this reference and the questions raised by it are set out in the judgment of Franki J. and we do not need to repeat them.

The answers to Questions (1) and (2) depend upon whether s.160 of the Patents Act 1952 (the Act) applies to allow, in the circumstances therein mentioned, an extension of the time fixed by s.54 of the Act for acceptance of a standard patent. This raises a difficult question of construction but after considering the terms and the history of the relevant provisions, we are satisfied that s.160 does so apply.

Sub-sections (1) and (2) of s.160 are in their terms wide enough to cover cases where an application for a standard patent and complete specification have not been accepted by the Commissioner within the time for acceptance provided by s.54 of the Act. It is clear, we think, that the acceptance by the Commissioner of an application and specification within such time is "an act or step in relation to an application for a patent . . . required to be done or taken within a certain time". It is equally clear that the act or step of acceptance by the Commissioner may not be done or taken in a given case by reason of an error or omission on the part of an officer or person employed in the Patent Office, or on the part of the person concerned, his agent or attorney or by reason of circumstances beyond the control of that person. The section therefore, on its face, is capable of being applied to extensions of the time for acceptance by the Commissioner.

On 1 December 1981 the High Court gave judgment in Australian Paper Manufacturers Limited v. C.I.L. Inc. in which Stephen, Mason and Wilson JJ., Murphy and Brennan JJ. contra, upheld the decision of the Federal Court in A. B. Scaniainventor v. The Commissioner of Patents (1981) 36 A.L.R. 101. In his reasons for judgment Stephen J. said:
"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."
Mason and Wilson JJ. agreed with the reasons given by Stephen J.

As pointed out in A. B. Scaniainventor v. The Commissioner of Patents per Fox A.C.J., Franki and Northrop JJ. at p.105:
"Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary."
Thus, in that case, it was applied to permit an extension of time for making a convention application for a patent under s.141(1) of the Act.

It is suggested, in this case, that there is a clear indication to the contrary in s.54.

In turning to that section there are some aspects of s.160, in its present form, which it is important to bear in mind. Sub-section (1) of s.160 makes it mandatory for the Commissioner to extend time where the Patent Office is at fault and obviously the period of the extension should be sufficient to enable the relevant act or step to be done or taken. Sub-section (2) confers a discretion but the discretion can arise not only where the agent or attorney is at fault or where the failure to do or take the step is due to circumstances beyond the applicant's control, but also where the applicant is at fault. Furthermore, the time may be extended under each sub-section even though that time has expired. The section therefore confers important and wide-ranging benefits on those entitled to them.

Another feature of s.160 is that sub-section (8) specifically excludes from the section's operation the doing of acts or taking of steps under the provisions therein named (ss.47, 47A, 47B, 47C and 52B(1)). Section 54 is not included.

The section also contains provisions to protect those who availed themselves of the invention or took steps to do so because the act or step was not taken within the time allowed (sub-section (6)) and to enable opposition to the granting of an application under the section (sub-section (5)).

Section 160 therefore is not only apt to apply, according to its terms, to a failure to accept an application but contains provisions aimed at protecting those who may be affected by an extension.

In considering those provisions of the Act to which s.160 is intended to apply one should not expect to find in a provision which fixes a time for doing an act or taking a step any express indication that the time it fixes is subject to the provisions of s.160. For instance, s.141(1) provides that where the applicant for a patent in a Convention country makes an application within 12 months after the basic application, the priority date of any claim fairly based in the basic application is the date of making that application. The provision says nothing about s.160 or time being extended. Section 160 operates on the provision of its own force and does not depend on any indication in it that it should apply. In the A.P.M. Case, supra, Stephen J. said:
"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)."

In our opinion, the real test, in construing such provisions, is whether they contain a clear indication that s.160 should not apply. This is by no means an easy question to determine because the Act contains so many sections which have extension provisions within them (e.g. ss.59 and 66, but in the latter section the words "in accordance with section 160" were added to the end of sub-section (1) by s.69 of Act No. 19 of 1979). However, an important matter to bear in mind, in our view, in construing sections such as these is that s.160 is in part mandatory and is intended on its face to deal with extensions needed in special cases, i.e. where there is an error or omission on the part of the office, the agent or attorney, or the person concerned, or where there are circumstances beyond that person's control. It does not confer a general discretion to extend and is careful to ensure protection to those who might be affected.

We turn now to a consideration of ss.53 and 54 of the Act.

Section 53 provides, in effect, that the consequence of the application not being accepted within the time provided by s.54 is that it shall lapse. Therefore, to determine whether an application has lapsed one has to ask in relation to it what is the time for acceptance of it "as provided by section 54". If s.54 is to be read subject to a power to extend the time therein provided for acceptance under s.160 the time, as so extended, in our view, is still properly described as "the time for acceptance as provided by section 54". The real question is whether s.54 is to be so read.

Sub-sections (1) and (1A) of s.54 make provision, in the circumstances therein mentioned, as to the period of acceptance, but this is expressed to be done "Subject to this section" (sub-section (1)) and "Subject to the succeeding provisions of this section" (sub-section (1A)). The other provisions of the section either extend or allow the time for acceptance to be extended. For instance, sub-section (2), in the case of an appeal, extends the time automatically until three months after the determination of the appeal. On the other hand, sub-sections (3) and (4) in the event of death of the applicant or an adverse report under s.48(3)(a) respectively, confer a discretion on the Commissioner to extend time.

The provision to which special consideration needs to be given is sub-section (1B) which provides:
"(1B) The Commissioner may extend the period within which an application for a standard patent and complete specification may be accepted, whether or not that period has expired, but an extension of time under this sub-section shall not be granted for a period expiring more than 21 months after the date referred to in sub-section (1)."

There are several aspects of this provision to be noted in the light of our analysis of s.160. First, it only enables an extension for a limited period but, in so doing, is careful to refer to it as "an extension under this sub-section". Secondly, it confers a discretion on the Commissioner in general terms and does not make an extension mandatory in the event of error by the Patents Office. Thirdly, although the time can be extended after the period has expired, no protection is given, as in s.160(6), to persons who may have taken a step on the basis of the application not having been accepted within the time previously fixed either by sub-sections (1) or (1A) or under an earlier extension of time pursuant to sub-section (1B).

The submission put on behalf of the Commissioner is that apart from sub-sections (2), (3) and (4), sub-section (1B) of s.54 is the only provision in the Act under which the time for acceptance can be extended. It confers a general discretion and it covers all possible contingencies including those specifically mentioned in s.160(1) and (2).

There is much force in this submission but we do not think it is correct. Having regard to what we have already said in relation to s.160, we think it is necessary to find in s.54 something which either expressly or by strong implication excludes its otherwise apt application according to its terms to a time such as the time fixed for acceptance. Sub-section (1B) is clearly designed to give the Commissioner a general administrative discretion limited as to time but not as to the circumstances of its exercise. It confers no right to an extension.

On the other hand it is not inconsistent for the Commissioner to have a duty or power to extend time for an appropriate though otherwise unlimited period in the special circumstances mentioned in s.160(1) and (2). The two provisions can work together.

The pivotal provision is s.54(1) and, in a given case, the actual time for acceptance will reflect any changes made at that time as a result of the operation of the other sub-sections. Equally, in our view, the time for acceptance fixed by it could reflect any extension of time brought about by the application of s.160 if that provision applied. We can find nothing in s.54 itself which makes it inconvenient, difficult or incongruous to apply s.160 to s.54(1). It seems to us to be as appropriate as a matter of language and operation to apply s.160 to it, as it is s.54(1B). It means that s.54(1) must also be read as being subject to s.160 but, as we have pointed out, so must s.141 to which s.160 has been held to apply in the A.P.M. Case, supra, and the A.B. Scanianinventor Case, supra.

Indeed, one difficulty we have in the absence of an express provision excluding it, is to identify a reason why the legislature would have intended to deprive an applicant of the benefit of s.160 in relation to such an important matter as the time for acceptance of an application, having in mind that its terms are so apt to apply to such a matter. There could obviously be cases where an application is not accepted in time due to any of the circumstances mentioned in s.160(1) and (2) and those provisions, as we have pointed out, are different in their nature and scope of operation from s.54(1B). For instance, s.160(1) compels an extension for an appropriate period where the office is at fault. Why shouldn't this right, one might ask, be available to an applicant whose application lapses at the expiry of the 21-month period because the Commissioner has not dealt with it through some error in the Patent Office? The answer given is that the legislature has, by inserting sub-section (1B), shown an intention to confine the power of extension to that contained in the sub-section. We do not accept this argument. The sub-section and s.160 are different in character. Section 160, although it places no limit on the time for extension, deals with extensions needed by reason of the specific circumstances therein mentioned. In the absence of an express provision excluding it, we think it applies.

Sub-section (1B) was added to s.54 in 1969. In our view a decision that s.160 does not now apply to s.54 involves holding that sub-section (1B) impliedly excluded the application of s.160 to s.54(1). A consideration of the history of the various relevant provisions (ss.53, 54 and 160) leads, in our opinion, to the conclusion that, prior to the addition of sub-section (1B), s.160 did apply to s.54(1). At the same time as sub-section (1B) was added to s.54, sub-section (8), which expressly excludes certain provisions from the application of s.160, was added to the latter section. If the legislature had intended the addition of sub-section (1B) to s.54 to effect a partial limitation on the application of s.160, it would have been so easy to add it to sub-section (8).

The substantial argument in favour of the view that the addition of sub-section (1B) to s.54 did exclude the application to it of s.160 is that the new sub-section contained a wide discretion to extend time. In our opinion the two provisions are different in significant respects. Section 160 has its own history and was obviously designed to encompass extensions whether the Patent Office or the applicant's agent are at fault and, for the reasons we have given, the application of it to probably the most significant act or step to be done or taken in relation to an application for a patent has not been excluded.

Another argument put against its application is the effect of s.53 which provides that the application lapses if it is not accepted within the time provided by s.54. It is said that once the time fixed expires the application lapses or is deemed to be abandoned and the Commissioner no longer has any power to accept it. We think this submission is answered by the terms of sub-section (1B) itself. It provides that the period for acceptance may be extended "whether or not that period has expired". In this respect it is the same in substance as sub-section (3) of s.160. The effect of it in a given case is that even though on the face of the record the period fixed by s.54(1) has expired and the application appears to have been abandoned, the time for accepting it can nevertheless be extended within the limits of time prescribed by sub-section (1B) with the result that the application is revived and the Commissioner can accept it. There is no more difficulty in applying s.160 in this way to the period fixed by s.54(1) than there is in applying sub-section (1B) to it. For these reasons we do not think there is any substance in the argument.

We would therefore propose that Questions (1) and (2) in the Reference be each answered "Yes". In our opinion, Questions (3) and (5) are at this stage hypothetical and should not be answered.

Question (4) asks whether the Tribunal has power to decide, for the purpose of reviewing the Commissioner's decision under s.160, whether a matter constitutes a lawful ground of objection and whether it has been removed within the meaning of s.52(1).

In our opinion, if such an issue properly arises in the course of deciding whether an extension should be granted under s.160, the Tribunal has power to determine that issue. We would therefore propose that Question (4) be answered - "Yes, if those issues properly arise".

We think it is clear that in determining whether the Patent Office has been at fault under s.160(1) it may be necessary in a given case to consider whether a lawful ground of objection has been raised and whether it has been removed. It is not so clear that these issues could arise under s.160(2). However, we are not prepared to hold that they coudl not. It is a matter for the Tribunal to decide in each case all questions of fact and law that properly arise in relation to it.