Mather, Seija Aulikki v Lockwood Australia Pty Ltd

[1997] FCA 1360

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 422  of  1997

BETWEEN:	SEIJA AULIKKI MATHER Applicant
AND:	LOCKWOOD AUSTRALIA PTY LIMITED ACN 004 239 392 Respondent

JUDGE:	EMMETT J
DATE:	26 NOVEMBER 1997
PLACE:	SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

HIS HONOUR:   There is before the court a notice of motion brought by Seija Aulikki Mather, the applicant in the present proceedings (“Mr Mather”).  Mr Mather seeks such orders as are necessary to extend the time for filing a notice of appeal from the decision of a delegate of the Commissioner of Patents concerning opposition to a patent application.  The problem sought to be addressed by the notice of motion arises from the fact that the applicant for the patent was deregistered shortly before the decision on the opposition was made.  It is necessary to set out the sequence of events to explain how the problem arises.

Patent application PK 0244 was lodged on 21 May 1990 in the name of Style Finish Nominees Pty Limited.  On 24 April 1991 all rights in that provisional patent application were as signed to Arx Pty Limited.  On 17 May 1991 an international application for patent under the Patent Co‑operation Treaty was filed in the name of Arx Pty Limited in respect of the invention described in application PK 0244.  On 18 December 1992 Arx Pty Limited entered into the national phase in Australia in relation to that application and the Australian national phase application was given the number 79625/91 but was deemed to have been filed on 17 May 1991. On 20 December 1994 all rights in application 79625/91 were assigned to Mr Mather. However, at that stage no steps were taken to notify the Patents Office in relation to the assignment.

Application number 79625/91 was accepted by the Australian Patent Office on 29 June 1994 and advertised as accepted on 18 August 1994.  On 18 November 1994 notice of opposition was filed on behalf of Lockwood Australia Pty Limited (“Lockwood”) and on 18 September 1996 a hearing was set down to determine the opposition.  The parties apparently did not require any oral hearing and written submissions were made by Lockwood.  No submissions were lodged on behalf of Arx Pty Limited.

On 16 April 1997 Arx Pty Limited was deregistered pursuant to section 574 of the Corporations Law apparently by reason of failure to file annual returns and other documents required to be filed with the Australian Securities Commission. The consequence of deregistration is that under section 576 of the Corporations Law, any estate and interest at law or in equity in any property of Arx Pty Limited which remained outstanding, together with all claims, rights and remedies that the company had in respect of such property, vested in the Commission.  There may be a question as to whether or not any rights in relation to the pending patent application constituted outstanding property of Arx Pty Limited at that time.  If they did, they vested in the Australian Securities Commission.

On 13 May 1997 the delegate of the Commissioner of Patents issued a decision in respect of the opposition of Lockwood.  The decision was that the opposition succeeded on all grounds relied upon although the delegate, in his reasons for decision, said that he believed that the specification could be amended to overcome all of the grounds.  He therefore allowed Arx Pty Limited a period of 60 days from the date of the decision within which to propose amendments.  That leave was not taken up for reasons which have not been addressed before me.

However, in the meantime, on 2 June 1997, an application was lodged with the Commissioner to record the assignment of the application from Arx Pty Limited to Mr Mather which had occurred on 20 December 1994.  On 3 June 1997 a notice of appeal was filed with the Court pursuant to Order 58 Rule 4.  Under Order 58 rule 4(2) an appeal must be instituted within 21 days after the date of the decision appealed from or within such further time as the Court on application fixes.  3 June 1997 was 21 days after the date of the decision of the delegate.  The appeal was filed in the name of Mr Mather and joined Lockwood as respondent.  Accordingly, if Mr Mather had standing to file the notice of appeal then the appeal was filed in time.

When the matter first came before the Court, counsel for Lockwood raised with counsel for Mr Mather the question of the standing of Mr Mather to file the appeal. Standing is given by section 60(4) of the Patents Act 1990 (Cth). Under section 60(4) “the applicant” and any opponent may appeal to the Federal Court against a decision of the Commissioner under section 60(1). The question which arises is whether Mr Mather was the applicant within the meaning of section 60 at the time when the notice of appeal was filed.

That question depends upon the construction to be given to section 113 of the Patents Act. Section 113(1) provides as follows:

Where, before a patent is granted, a person would, if the patent were then granted, be entitled under an assignment, or agreement, or by operation of law, to:

(a)the patent...

the Commissioner may, on a request made by the person in accordance with the regulations, direct that the application proceed in the name of the person...

Under section 113(2) where the Commissioner gives such a direction:

(a)      the person is to be taken to be the applicant... and,

(b)the patent request is to be taken to have been amended so as to request the grant of a patent to the person...

The concern which arises is as to the effect of section 113(2). It appears that the Commissioner has given a direction pursuant to section 113(1) which, according to a print out from the Patent Office database dated 24 July 1997, shows that change of applicant details were registered on 4 July 1997 pursuant to a request received on 3 June 1997.

On one view the effect of section 113(2) is that the person in respect of whom a direction is given is to be taken to be the applicant for all purposes. If that is the correct view then, notwithstanding the time when those details were registered, Mr Mather is to be taken to be the applicant not only prospectively but at the time when the notice of appeal was filed, namely, 3 June 1997. On that view there would be no difficulty with section 60(4).

The alternative view is that section 113(2) only operates prospectively and does not have the effect of deeming the assignee to have been the applicant at all times in the past. I am disposed to the latter view, although in the circumstances it is not necessary for me to reach a final conclusion on that question.

The application which has been made today is not opposed by Lockwood, although Lockwood does not concede that the relief sought in the notice of motion before me will necessarily overcome the difficulty which has been raised.  As I have said, the motion seeks such orders as are necessary to extend the time for filing the notice of appeal to a date seven days after the hearing and determination of the notice of motion.  The motion also seeks an order that the notice of appeal in these proceedings be the notice of appeal from the decision and be taken to have been filed on the date seven days after the hearing and determination of the motion.

It was submitted on behalf of Mr Mather that such orders would be effective to overcome the difficulty, if one exists.  I was referred to the decision of the Full Court in Hannpost Pty Ltd v Mita Copiers Australia Pty Ltd (1996) 67 FCR 416. In that case, a cross appeal was held to be incompetent but the cross appellant would have had the capacity to file a notice of appeal at the time when the cross appeal was filed. The Court considered that no point would then be served by the granting of leave to file and serve a notice of appeal in terms substantially the same as its purported notice of cross appeal. The Court indicated that an order would be made dispensing with the requirement for the cross appellant to file and serve a notice of appeal on the basis that its purported notice of cross appeal be treated as a notice of appeal filed and served in accordance with the rules. I do not have any doubt that the course adopted in that case was correct.

However, I do not consider that the question which arose in the Hannpost case is the same as that which has arisen here.  Here, the difficulty arises, if there is a difficulty, because of the lack of standing on the part of Mr Mather to file the notice of appeal at the time when it was filed.  In the Hannpost case, there was no doubt that the purported cross appellant had standing to file a notice of appeal at the time when the notice of cross appeal was  filed.  Accordingly, if there is a difficulty with the standing of Mr Mather, the relief sought in the notice of motion would not be effective.

I consider that in order to overcome the difficulty, a different course must be adopted.  I bear in mind that when dealing with patents, the Court is concerned not simply with the rights between the parties to the dispute.  Rather the proceedings are in the nature of a real action, in the sense that the determination of the Court is effective, not simply as between the parties to the litigation, but so far as the whole world is concerned.  For that reason, I consider that if there is any doubt about the question of standing, orders ought to be made to ensure that the ultimate determination of the Court will be effective and binding in relation to the patent as against the whole world.

Counsel for Lockwood has indicated that there is no opposition to the Court making orders of the nature which I propose.  The orders are designed to overcome what is a purely technical defect, if it is a defect at all, in the proceedings.  The defect would be overcome if a notice of appeal had  been filed by Mr Mather after recording the assignment to him.  I propose that a fresh notice of appeal be filed in separate proceedings and an application then be made in those proceedings, pursuant to Order 58 Rule 4, for an order fixing the time within which that appeal may be instituted to the date on which the fresh proceeding is commenced.  Accordingly, I propose to give leave to Mr Mather to have a notice of appeal made returnable before me on 5 December 1997.  I will direct that service may be effected by being served on the solicitors who filed an appearance in the existing proceedings, no later than Friday 28 November.

I will give leave to the applicant in those fresh proceedings to apply under Order 58 Rule 4 to extend the time within which the notice of appeal may be filed to 28 November 1997.  I dispense with the rules insofar as they require the filing of a further notice of motion, in those fresh proceedings.  I direct that the affidavit and other evidence relied on in the hearing of the motion in proceedings NG 422 of 1997 may be read and relied upon in support of the application to fix the time within which such notice of appeal may be filed.

In proceedings NG 422 of 1997, I will order that Mr Mather pay the costs of Lockwood thrown away by reason of the need to file a new notice of appeal.  Such costs, if not agreed within 14 days, may be taxed forthwith and paid thereafter on a party/party basis.  I will order that the costs of proceedings NG 422 of 1997, other than those which are the subject of the order just made, be costs of the parties in the fresh proceedings for which leave has just been granted.

I will also stand over proceedings NG 422 of 1997 to 5 December 1997.  I will also direct that the documents which are attached to the certificate of the supervising examiner of patents of 13 June 1997 are to be taken to have been filed in the proposed fresh proceedings.

I certify that this and the preceding five (5) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:            26 November 1997

Counsel for the Applicant:	J. Baird
Solicitor for the Applicant:	Chrysiliou Moore Chrysiliou
Counsel for the Respondent:	S. Burley
Solicitor for the Respondent:	Phillips Ormonde & Fitzpatrick
Date of Hearing:	26 November 1997
Date of Judgment:	26 November 1997