Parke Davis Pty Ltd v Sanofi (No 2)

[1982] FCA 139

Re: PARKE DAVIS PTY. LIMITED
And: SANOFI, a French Corporation and THE COMMISSIONER OF PATENTS
(1983) 67 FLR 110
No. G198 of 1981
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY
GENERAL DIVISION
Bowen C.J.(1), Deane(2) and Ellicott(1) JJ.

CATCHWORDS

Patents - Extension of term - Petition presented after expiration of patent - Whether jurisdiction to order extension of term - Effect of order after expiration of patent allowing further period within which to present petition.

Patents Act 1952 ss. 90(1), 94(1).

Patents - Expiration of term - Extension - Petition presented after expiration of term - Whether jurisdiction to order extension of term - Effect of order after expiration of patent allowing period within which to present petition - Patents Act 1952 (Cth), ss 90(1), 94, 95, 98, 160 - Acts Interpretation Act 1901 (Cth), s. 15AA.

HEADNOTE

The respondent applied to the Supreme Court of Victoria for an extension of its letters patent at a time when the term of the patent had expired. The Supreme Court, acting under s. 90(1) of the Patents Act 1952, allowed the first respondent a time before which to lodge its petition to extend the term of its patent which was after the date when that patent expired and granted an extension of the patent.

On appeal,

Held: Per Bowen C.J. and Ellicott J., Deane J. dissenting - (1) On the true construction of s. 90(1) of the Patents Act 1952 the Supreme Court had no power to authorize the lodgment of the petition in the manner after the date of the expiry of the letters patent and accordingly had no power to grant an extension of letters patent.

Consideration by Bowen C.J. and Ellicott J. of the purpose or object underlying the Patents Act 1952 and of the legislative background of s. 90.

Re Brown's Patent (1920) 37 RPC 52, distinguished.

Re Robinson's Patent (1918) 25 CLR 116, explained.

Re Stamicarbon Naamloze Vennootschap's Patent unreported (High Court, Walsh J., 22nd March, 1971); Re General Tire & Rubber Co.'s Patent unreported (High Court, Windeyer J., 1966), not followed.

(2) The order of the Supreme Court extending the time for lodging the petition could not validate the petition when lodged.

(3) Although the order of the Supreme Court had been given effect to by an entry in the Register of Patents, the register could be rectified.

Wilde v. Australian Trade Equipment Co. Pty Ltd (1981) 145 CLR 590, discussed.

(4) Appeal allowed.

HEARING

1982, April 19-21; July 16. #DATE 16:7:1982

APPEAL.

The appellant appealed from orders of the Supreme Court of Victoria.

The facts appear from the headnote and judgment of Deane J.

K. R. Handley Q.C. and J. D. Heydon, for the appellant.

J. F. Lyons Q.C. and R. Merkel, for the first respondent.

B. Pearson, for the second respondent.

Cur. adv. vult.

Solicitors for the appellant: Minter Simpson & Co.

Solicitors for the first respondent: Moules.

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

T.J.G.

ORDER

1. The appeal be allowed.

2. The declaration and orders of Fullagar J. of 24 June 1981 be set aside.

3. The petition for extension of the term of Letters Patent No. 272,333 be dismissed.

4. The Register of Patents be rectified and that the Commissioner of Patents remove from the Register Australian Letters Patent No. 272,333 purported to be given and granted by way of extension of the term thereof and standing in the name of Sanofi (a French Corporation) as patentee.

5. Sanofi pay to Parke Davis Pty. Limited and to the Commissioner of Patents their costs of this appeal and of the application for leave to appeal (No. G108 of 1981).

JUDGE1

The facts are set out in the judgment of Deane J. and we have no need to repeat them.

The question for determination is whether the Supreme Court of Victoria "a prescribed Court" under the Patents Act 1952 ("the Act) had power under s.90(1) of the Act to allow the first respondent a time before which to lodge its petition to extend the term of its patent which was after the date when that patent expired. If it had no such power the appeal, in our view, should be allowed because the petition was in fact lodged after that date and the learned trial Judge therefore had no power to make any orders pursuant to it because such orders could only be made on a petition validly presented.

Section 90(1) of the Act provides:-

"90.(1) A patentee of a standard patent who considers that he has been inadequately remunerated by his patent may, after advertising, as prescribed, his intention to do so, present to a prescribed court, at least 6 months before the expiration of the term of the patent, or within such further period as a prescribed court allows, a petition praying that his patent be extended for a further term."

The appellant contends that pursuant to s.90(1) a prescribed court only has power to allow further time to present a petition up to but not beyond the date of expiration of the term of the patent.

The first respondent, on the other hand, contends that the words of the sub-section clearly give a prescribed court power to allow a petition to be lodged beyond that time. Indeed, the first respondent's counsel contends that the words of the sub-section are so clear that the construction for which he contends is beyond argument.

Counsel for the appellant relied heavily on the last words of the sub-section which describe the petition as one "praying that his patent be extended for a further term". The use of the word "extended", it was argued, supported a construction of the sub-section that required the petition for extension to be lodged, even if the time for lodgment was extended under the section, before the original term had expired so that there was in existence at the time of lodgment an unexpired term which, according to the prima facie meaning of the word, could be "extended". Reliance was placed on Brooke v. Clarke (1818) 1 B. & Ald.396; 106 E.R. 146 and Esso Research and Engineering Company v. Commissioner of Patents (1960) 102 C.L.R. 347. In the latter decision Fullagar J. referred to the prima facie meaning of "extend" but made it clear that the word is capable of being used to describe an extension of time where the time has already expired. As his Honour said (supra at p.351):-

"It is by no means a misuse of language to speak of what is really the prescription of a new period as an 'extension' of the period originally prescribed".

Therefore the use of the word "extend" in s.90(1) is not conclusive and could, if the context supported it, be used to describe a petition to "extend" the term of a patent even though lodged after the date of expiry of the letters patent. However, by itself, in that sub-section, the word lends positive, though not conclusive support, to the notion that what the legislature had in mind was that the petition for extension be lodged before the patent expired.

A great deal of time was spent in argument tracing the historical development of the provisions of s.94. This shows that there has been no consistent use of the power to order an extension only in cases where the patent has not yet expired and no consistent use of the power to order a regrant only in cases where the patent has expired. Although there is logic in so confining them as suggested in Ex parte Celotex Corporation (1937) 57 CLR 19 there is nothing in the history which compels this conclusion. Fullagar J. pointed this out in Re Usines de Melle Patent (1954) 91 CLR 42. It follows that no clear support can be gained by the appellant for its construction from this distinction in s.94. At the same time however, it does not necessarily support the respondent. In other words the use of the word "extension" in other than its primary sense in s.94 does not require the conclusion that "extended" is used in the same sense in s.90(1).

Counsel for the appellant also pointed to the use of the word "patentee" in s.90(1) to support his construction. Under s.6 of the Act, unless the contrary intention appears "patentee" means the person for the time being entered on the register as the grantee or proprietor of a patent. Section 20(1) provides for the keeping of a register in which must be entered "particulars of patents in force".

It is argued that if the word "patentee" is used to describe a person registered in respect of a "patent in force" the right to present a petition under the section could only have been intended to be given to a person who at the time of presentation was registered in respect of a patent whose term had not then expired.

Undoubtedly the word "patentee" can be used in the Act to describe a person who was the proprietor of a patent which has lapsed or ceased. In s.94 it is undoubtedly used with such a meaning because that section contemplates a person described as "the patentee" being granted a new patent or given an extension after the patent has in fact expired. However, the fact that it is so used does not require that it have the same meaning in s.90(1). The prima facie meaning in the Act is a person registered as the proprietor of a patent then in force (emphasis added). It could have another meaning in s.90(1) but for this to be so the prima facie meaning must be displaced by the context. The question is whether it is displaced.

The argument put by the appellant based on the words "extended" and "patentee" to support its construction of s.90(1) of the Act is therefore not conclusive. The most that can be said is that these words prima facie do not detract from the construction for which the appellant contends. The true construction of the section depends in our view on broader considerations than these.

In construing s.90 of the Patents Act 1952 it is essential to bear in mind the purpose or object underlying the Act. A construction that would promote the purpose or object underlying the Act is to be preferred to a construction that would not promote that purpose or object (Acts Interpretation Act 1901 s.15AA).

The purpose or object underlying the Patents Act is clear enough from the reading of the Act as a whole. It is a purpose or object with special aspects to it. One main aspect is to encourage inventors. The Act does so by enabling a person who has discovered a new manner of manufacture to obtain the grant of a monopoly. This grant prevents others from using the process or making, using or selling the article which is the subject of the patent during the period of the monopoly. The other aspect of the purpose is that the Act requires, as consideration for the grant, full disclosure, in the complete specification of the invention including the best method of performing the invention known to the applicant for the grant. This is to ensure that the invention is available to the public at the end of the term which is limited in the case of a standard patent to sixteen years reckoned from the date of the grant.

Various circumstances may occur which could lead to the result that the patentee of a standard patent has been inadequately remunerated by his patent. A further aspect of the purpose of encouraging inventors has therefore been provided by enacting that a patentee may present a petition praying that his patent be extended for a further term in these circumstances. Clearly if this right to petition for extension was left unrestricted it would seriously encroach upon the interests of the public which the Act otherwise seeks to secure. It would also man an undetermined de facto extension of the monopoly, since no commercial concern would consider the expenditure of capital moneys in connection with exploitation of the invention, while the patent remained under threat of extension. It is a further aspect of the purpose of the Act therefore to seek to maintain the balance in this regard between the interests of the patentee and the interests of the public by introducing the notion that a petition for extension should be presented at least six months before the expiry of the patent. The Act also requires that the petition be advertised. This is to ensure that members of the public will have reasonable warning of any application which is on foot to extend the term. Any member of the public contemplating the exercise of the right secured to him by the Act to use the invention after expiry of the monopoly would be able to refrain from spending moneys until determination of the application.

In case the time of six months might prove too inflexible a discretion was conferred on the court to allow a "further period for the presentation of the petition". The phrase "further period" appears to be a reference to a period of the type previously referred to in s.90(1). That is a period before the expiration of the term of the patent. Certainly this would ensure as would the six months period, that the protection of the interest of the public was maintained though a shorter period would tend to lessen that protection. At least the public would not be lulled or left in limbo.

It might be said that use of the phrase "later time" in s.95(5) runs counter to this view of s.90(1). We do not think it does. Indeed, the change of wording may well have been deliberate having regard to the fact that s.95 deals with war loss and applies to petty patents as well as standard patents. Having regard to the object of s.95 the interpretation to be placed on s.95(5) may be different (cf. Re Brown's Patent (1920) 37 RPC 52 at p.54). However, we think it is unnecessary in connection with this case to express a concluded view upon it.

As stated earlier two interpretations of s.90(1) were advanced before us. Of these two interpretations it is clear that the appellant's interpretation would promote the purpose or object underlying the Act as we have analysed it. It is equally clear that the argument advanced by the first respondent would not promote the whole of that purpose but in relation to the interests of the public would tend to defeat it. Thus taking the respondent's interpretation it would be permissible for an application for extension of time to be made say five years after the expiry of the patent. It is argued for the respondent that one can trust to the court to exercise a proper discretion to protect the interests of the public and that the court will be aided in this respect by the Commissioner of Patents who will be a respondent to the application. However, such an application need not be advertised. Neither the Commissioner nor the court will have any means of knowing what action, if any, is being taken by any member of the public to spend capital moneys preparatory to using the invention in the manner contemplated by the requirement of full disclosure in the Act and the time limit placed on the original monopoly. The suggested protection of the public might well prove illusory as indeed happened in the present case.

It is true that if an extension of time to present a petition for extension is granted the petition itself will have to be advertised. The public will then be placed on notice. However, three comments may be made. First, capital expenditure may have already been incurred. The terms and conditions in the Celotex order will not compensate for this. One might have thought that if the interpretation contended for by the respondent had been intended by Parliament, some provision for compensation would have been made. (Cf. s.160(6)). Secondly, information may be available to a member of the public wishing to exercise his right that the original patentee had decided not to apply for an extension and had deliberately allowed the patent to expire. Yet after the expiry the original patentee by sale or on liquidation or as a result of a merger may pass any rights he possesses to a successor. If the successor after expiry of the patent decides to apply for an extension of the patent this information will not ordinarily be available to the public. Thirdly, the public after the lapse of some time following the expiry of the patent might be excused for thinking that it was unnecessary to continue a watch on the Official Journal over the next ten years. It might well miss a later advertisement of the petition for extension.

It appears to us that the interpretation argued for by the respondent, as we have said, tends to defeat one aspect of the purpose of the Patents Act, namely, protection of the interests which it secures for the public.

It was argued for the respondent that s.94(1) in providing for re-grant as well as for extension supported their construction of s.90(1). As indicated earlier we cannot accept this argument. Section 94(1) is directed to a different problem. It has no bearing on the interpretation of "further period" in s.90(1). Section 94(1) provides for re-grant as well as extension to cover the circumstance that even though the petition for extension has been lodged before expiry of the patent, the actual order of the court after a hearing may be made after the expiry of the patent. It has to be borne in mind that a full account of profits is required to be furnished to the court to enable it to decide whether the patentee has been inadequately remunerated. Too early an accounting may lead to the court's not being satisfied. Furthermore, in a complex matter it is almost inevitable that the time taken will mean that the court's decision after a hearing will be given at a time when the patent has expired. In such circumstances it is usual, though not essential, to order a re-grant rather than an extension.

It is our view, therefore, that the Supreme Court of Victoria as a prescribed court, on the true construction of s.90(1), had no power to authorise the lodgment of the petition in this matter after the date of expiry of the letters patent. This, in turn, means that Fullagar J. had no power to grant an extension of letters patent and that the appeal should be allowed.

The view we have formed is, we think, supported by a consideration of the history of provisions relating to extension of the terms of letters patent, both under United Kingdom and Australian legislation. It is also consistent with and supported by a consideration of the approach the legislature has taken in other provisions of the Act, particularly those dealing with extensions of time and restoration.

The legislative background to s.90 both in the United Kingdom and Australia illustrates the significance which the legislatures in each country placed on the requirement that the petition for extension be lodged prior to the expiration of the original letters patent. Where the legislature wished to depart from this, clear words were used or a clear legislative intent was discernible.

Provisions for extending the term of letters patent were first introduced into English legislation in 1835 by 5 and 6 William IV. c.83. Prior to that the practice had been for the patentee to seek an extension by means of special Act of Parliament. By 1835 applications for private legislation had become so frequent that it was thought desirable to enact general procedural provisions.

The Act 5 and 6 Wm. IV c.83 (Lord Brougham's Act) allowed for an application for prolongation of the term to be made after advertisement and to be heard by the Judicial Committee of the Privy Council. However, such an application had to be "made and prosecuted with effect before the expiration of the term originally granted".

The Council was empowered to report to the Crown that "a further extension of the term not exceeding 7 years" should be granted and the Crown was empowered as a consequence "to grant new Letters Patent for" the invention not exceeding 7 years after the expiration of the first term. In Bodmer's Patent (1838) 1 Web. PC 740 the Privy Council was not able to deal with an application under this Act until after the patent had expired. It was held that the words "prosecuted with effect" meant that some conclusion must be arrived at by the Council before the patent expired and that therefore the Council had no power to proceed with the matter.

As a result the statute 2 and 3 Vict. c.67 was passed. Under this Act the provision that no extension could be granted unless the application was prosecuted with effect before the expiration of the original term was repealed.

Section 2, however, empowered the Privy Council to report in favour of an extension in spite of failure to prosecute with effect before expiry where the default arose from causes other than the neglect or default of the Petitioner. In the event of a favourable report the Crown was empowered "to grant such extension or to grant new Letters Patent for the invention . . . . . for a term not exceeding seven years." This Act drew, apparently for the first time, the distinction found in s.94(1) of the Act, between the grant of an extension and the grant of new letters patent. Section 2 went on to provide:-

"Provided always, that no such Extension or new Letters Patent shall be granted if a Petition for the same shall not have been presented as by the said recited Act directed before the Expiration of the Term sought to be extended, nor in case of Petitions presented after the Thirtieth Day of November One thousand eight hundred and thirty-nine, unless such Petition shall be presented Six Calendar Months at the least before the Expiration of such Term, nor in any Case unless sufficient Reason shall be shown to the Satisfaction of the said Judicial Committee for the Omission to prosecute with Effect the said Application by Petition before the Expiration of the said Term."

It can readily be seen that this statute continued to place emphasis on the need to lodge the application prior to the expiration of the term even though it acknowledged that the hearing before the Privy Council could take place afterwards.

It will be noted however that under this provision, a patentee could, after 30 November 1839, still lodge his petition after the date, six calendar months before the expiration of the term, provided it was prosecuted with effect before the term expired. This created a right to apply in the patentee which was recognised in a number of cases commencing with Brandon's Patent (1884) 9 A.C. 589 and which was not destroyed in relation to pre-existing patents by the repeal of these earlier acts by the Patents Act 1883 (U.K.).

Section 25 of the Patents Act 1883 (U.K.) dealt with extension of the term of a patent. It provided in sub-s. (1):-

"A patentee may, after advertising in manner directed by any rules made under this section his intention to do so, present a petition to her Majesty in Council, praying that his patent may be extended for a further term; but such petition must be presented at least six months before the time limited for the expiration of the patent."

In 1907 the Patents Act 1883 (U.K.) was replaced by the Patents Trade Marks and Designs Act 1907 (U.K.). Section 18(1) of that Act dealt with the extension of patents and was substantially identical with s.25(1) of the earlier Act. It replaced the Privy Council with the Court. Section 18(1) however was amended by the Patents Trade Marks and Designs Act 1919 (U.K.) s.7(1) which added to it the following proviso:-

"Provided that the court may in its discretion extend such period within which such a petition may be presented".

It is this proviso that was the subject of consideration by Sargant J. in Re Brown's Patent (supra) to which we will subsequently refer in greater detail.

The provisions of the first Commonwealth Patents Act granting a right of extension in substance repeated the U.K. Act of 1883. Section 84(1) of the Patents Act 1903 provided:-
"(1) A patentee may, after advertising in the prescribed manner his intention to do so, present a petition to the High Court or the Supreme Court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent."

As a result of the Patents, Trade Marks and Designs Act (Nos. 15 and 16) 1914, the Governor-General was given power to make regulations for extending the time within which any act or thing may or is required to be done under the Patents Act 1903 (See Act No. 15 of 1914 s.3 and Act No. 16 of 1914 s.3). Pursuant to this power the Patents (Temporary) Regulations 1914 were made and reg. 8 thereof provided:-
"8. The Minister or the Commissioner may, at any time during the continuance of these Regulations, extend the time prescribed by the Patents Act 1903-1909, or any Regulations made thereunder, for doing any act or filing any document, upon such terms and subject to such conditions as he thinks fit, in the following cases, namely:-

(a) Where it is shown to his satisfaction that the applicant or patentee, as the case may be, was prevented from doing the said act or filing the said document by reason of active service or enforced absence from the Commonwealth, or any other circumstances arising from the present state of war, which, in the opinion of the Minister or the Commissioner, would justify such extension;

(b) Where the doing of any act would, by reason of the circumstances arising from the present state of war, be prejudicial or injurious to the rights or interests of any applicant or patentee as aforesaid."

By virtue of s.2 of the Patents Trade Marks and Designs Act 1914 (No. 15 of 1914) those regulations only continued in force until six months after the continuance of the then state of war. That Act empowered the making of regulations on other matters as well, including the avoidance and suspension of patents and licenses for patents and enabling the Minister to grant licenses in relation to patents.

Regulation 8, therefore, ceased to operate as from 11 May, 1920.

Section 84 of the Patents Act 1903 was amended in 1921 by adding the following new sub-section:-
"(7) Notwithstanding anything contained in this section the Court may, in its discretion, either before or after the expiration of the term of a patent extend the period within which proceedings may be taken for the extension of the term of the patent, whether such proceedings are by petition or by originating summons."

As a result of this provision there could be no doubt that under s.84, as so amended, the time for lodging a petition for extension could be extended beyond the date of expiry of the original term.

In 1949 following the Swan report, the U.K. Act of 1907 was repealed and replaced by the Patents Act 1949 (U.K.). Section 23 deals with extension on the ground of inadequate remuneration. Sub-section (2) thereof provides:-
"(2) An application for an order under this section shall be made by petition after such advertisement as may be prescribed by rules of court, and shall be made not more than twelve nor less than six months before the expiration of the term of the patent or at such later time (not being later than the expiration of the said term) as the court may allow."

After Re Brown's Patent (supra) the English courts had, following the insertion of the proviso in s.18 of the Patents, Trade Marks and Designs Act 1907 (U.K.), extended the time for lodging a petition for extension beyond the date of expiration of the original term. The 1949 Act however changed the practice and under that Act there was no provision for extension of that time beyond the expiration of the term.

It was against the background of this legislative history that s.90(1) of the Patents Act 1952 (Cth) was enacted following upon the report of the Dean Committee. Between 1903 and 1 May 1954 when the Act came into operation, apart from the period of the first world war, the provisions as to the time for lodgment of the petition were clear and unambiguous. Between 1903 and 1914 the time could not be extended. Between 1920 and 1954 it could be and to a date after the expiration of the original patent.

The provisions relating to the war period were, in our view, equally clear. Regulation 8 empowered a Minister to extend the time for doing any act or filing any document. It had to be shown to his satisfaction that the applicant was prevented from doing the act or filing the document by reason of active service or enforced absence from the Commonwealth or any other circumstances arising from the then state of war which in the opinion of the Minister would justify such extension. Once it was decided that the words "the time prescribed for doing any act or filing any document" included the time for lodging a petition for extension there could, in our view, be no doubt that the Minister had power to extend that time to a point beyond the expiration of the patent. The circumstances he was required to consider preventing presentation of the petition, were active service, enforced absence from the Commonwealth or other circumstances arising from the then state of war. There could be no justification for restricting those circumstances to such as prevented the lodging of the petition before the expiration of the term of the patent. In effect what s.84(7), added in 1920, did was to make explicit what had already clearly been the position during the war and had been held to be so in Re Robinson's Patent (1918) 25 C.L.R. 116.

Counsel for the respondent relied heavily on this case and submitted that it determined the construction of s.90(1). In our opinion this submission is erroneous. The legislation, there under consideration, was, for the reasons we have already given, clear in giving the Minister, and through him, the Solicitor-General, in that case, the necessary power to extend the time. Isaacs J. dealt, at some length, with the history of the legislation in England and the use of the words "prolongation and extension". Having done so his Honour said (at p.137):-
"It is not, and could not be, disputed that the Court's order, like the English recommendation and grant, may be made after the expiration of the original term, that is, notwithstanding a gap has occurred. If so, there is nothing in s.84, any more than there is or ever was in the long line of patent legislation interpreted by authoritative decisions, to insist on an uninterrupted period for the whole term comprised within the original and extending grants. If in the nature of the thing itself as ordinarily understood and practised no such necessity exists, then the objection fails, for there is then no reason for cutting down the full natural sense of the words in the Act No. 16 of 1914. Those words in their natural and primary sense are unlimited, except by their subject matter, and as the subject matter does not create the limit suggested, that limit does not exist."

His Honour also dealt with the meaning of the word "patentee" (which was then defined as meaning "person for the time being entitled to the benefit of a patent") and referred to in Re Brandon's Patent (supra).

His Honour said (at p.138):-
"As one of the 'benefits' of the patent is the chance of an extension. . . . . . . the petitioner remains the 'patentee' within the meaning and for the purpose of the section so long as the possibility of extending the term continues, as, for instance, after the expiration of the term between petition and judgment."

The definition of "patentee" was different in the 1903 Act. In our opinion his Honour in this passage is not dealing with the same point as was raised by counsel for the appellant. Counsel sought to get assistance from the combination of the definition and s.20(1) of the Act. As we have already said there can be no doubt that the word "patentee" is sometimes used in the 1952 Act to refer to a person who is not currently the holder of a patent in force. The point in relation to s.90(1) of the Act is that the word "patentee" does have a primary meaning and that meaning is not only consistent with, but supports the appellant's contention.

For these reasons we do not regard Re Robinson's Patent as having the effect contended for by counsel for the respondent.

He also relied on the fact that after the 1952 Act came into force in May 1954 it was the practice of justices of the High Court to grant an extension of the time for lodging a petition beyond the date of expiry of the letters patent, e.g. Re Stamicarbon's Patent, Walsh J. 22/3/71 (unreported) and Re General Tire & Rubber Co's Patent Windyer J. 1966 (unreported). There can be no doubt that their Honours proceeded on a view of the section inconsistent with that for which the appellant must contend. However, the true construction of s.90(1) was never fully argued and on occasions the extension appears to have been granted by consent. These decisions are not binding on this court although a considered view by a justice of the High Court of this matter would of course be of considerable weight. In the absence of such consideration, we would not, with respect, feel impelled to follow the view which those decisions either expressly or by implication embraced.

As stated earlier, considerable reliance was also placed by counsel for the respondent on the English practice following Sargant J's decision in Re Brown's Patent (supra).

We have already set out the relevant English provisions consisting of s.18(1) of the Patents Trade Marks Designs Act 1907 (U.K.) and the proviso thereto added in 1919.

Sargant J. said this (at p.54) of the provisions:-
"I must look at the language of the two Sections. Section 18, sub-sec. (1) of the Act of 1907 is in these terms:-

'A patentee may, after advertising in manner provided by Rules of the Supreme Court his intention to do so, present a petetion to the Court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent.'

There there is a punctum temporis, six months before the expiration of the patent, before which the petition has to be presented, and there is a period of six months from that punctum temporis down to the expiration of the patent. The language of Section 7, sub-sec. (1) of the Act of 1919 is curiously inappropriate to that state of things. The words to be inserted are:-

'Provided that the Court may in its discretion extend such period within which such a petition may be presented.'

There is no period which was to be extended. There was a period of time prior to which a petition had to be presented. But I think looking at the language the true meaning of 'extend such period' is 'enlarge the time', and that the words must be read 'Provided that the Court may in its discretion enlarge the time within which such a petition may be presented.' That is to say, it may allow the petition to be presented after the punctum temporis, six months before the expiration of the patent.

If that is so, is there any sufficient reason for putting a limit on the discretion of the Court, and saying that the Court is debarred in its discretion from enlarging that time beyond the date of the expiration of the patent? The only suggestion, when once that construction has been put upon the language, is that the patentee is no longer a patantee. I do not think that that is sufficient. He was a patantee, his rights are in respect of that which was a patent, and, in my opinion, having regard to the object of Section 7, which obviously is to protect patentees who lost, or omitted to exercise, their rights owing to the state of war that had been existing, and looking to the fact that the whole matter is within the discretion of the Court, I see no sufficient reason for limiting that power to enlarge the time, to a power to enlarge it merely up to the date of the expiration of the patent. In my judgment it is left to the discretion of the Court to enlarge the time to any extent that the Court in its discretion may think fit."

We think it is apparent from this passage that his Lordship allowed what he regarded as the object and purpose of s.7 of the Act of 1919 to determine its construction. He did not deny that the other construction was open. He did not think the reference to "patentee" was sufficient because the section was obviously intended to protect patentees who had lost or omitted to exercise their rights owing to the state of war. The war had in fact concluded when the proviso was added and it would have been impossible to have fulfilled the object of the Act unless the wider construction was given to it. For instance, a patentee whose patent expired in the middle of a long period when he was on active service would hardly be assisted by a construction which required him to lodge his petition before the date of expiry of the term of his patent.

After Re Brown's Patent was decided it was followed consistently in England. However, it should be noted that the question of construction was never considered on appeal.

The decision in that case is of course only persuasive. It is on analysis, in our view, clearly distinguishable. We do not think it determines the construction which should be placed on s.90. The words of the respective provisions are superficially similar but the two sections are differently structured and s.90(1) of the Act is in no sense directed to problems arising out of the war. It stands for construction as part of a legislative history where the Act it replaced, as amended from time to time, either made it clear that no extension could be granted or that the time for lodgment of the petition could be extended beyond the time of expiry of the letters patent. When in 1952 the Parliament departed from the clear terms of s.84(7) of the Patents Act 1903 and enacted s.90(1) in our opinion it pursued a different course - one that had been adopted in England in 1949, i.e. it intended to emphasise again, as had been done prior to 1914 in Australia and England, the significance of the petition being lodged prior to the date of expiry of the patent so that the question of extension would not, as far as practicable, be left in doubt. It did so by referring to the allowance of "a further period" but one which, in the sub-section itself, was, in our view, confined by reference to the date of expiration of the term of the patent.

The construction which we would place on s.90(1) gains support not only from the words of the sub-section the discernible object and purpose of the section and a review of its statutory origins but also from other provisions in the Act.

We refer in particular to provisions relating to extension of the time for doing an act or taking a step and those relating to the restoration of patents.

Section 160 enables the Commissioner to extend the time for doing an act or taking a step in relation to an application for a patent or in proceedings under the Act (other than court proceedings) in cases of error or omission in the Patent Office or on the part of the person concerned, his agent or attorney or in a case where the act or step is not done or taken because of circumstances beyond the control of the person concerned. Under this section, there is express provision for enabling the time to be extended "although that time has expired". (sub-s.(3)). Sub-section (6) thereof provides:-
"(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed."

This section is the general provision in the Act for extending time. It has a wide operation (See Australian Paper Manufacturers Limited v. C.I.L. Inc. (1981) 37 A.L.R. 289; Scaniainventor v. Commissioner of Patents (1981) 36 A.L.R. 101; Lehtovaara v. Commissioner of Patents (1981) 39 A.L.R. 103). It is, we think, significant that the legislature in this section expressly provided that time could be extended even though the time had expired. This makes it clear that the prima facie meaning of the word "extend" is not to apply to s.160. It is also significant that the legislation made express provision to deal with injustices that could result from an extension. Such injustices could occur particularly where time was extended after expiry. The provisions of sub-s. (6) include compensation. They are potentially much wider in scope than those imposed under a Celotex order in relation to extensions of the term of the patent.

The power to allow a further period under s.90(1) is in substance a power to extend time. If it operates to enable the Court to extend time after the patent has expired the same injustices can obviously occur as with extensions under s.160.

The point is reinforced in the provisions in ss.97 and 98 relating to patents that have ceased by reason of failure to pay a prescribed fee within the prescribed time. Section 98(4) provides:-
"(4) Where a patent is restored under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by contract or otherwise to avail themselves, of the subject matter of the patent after the patent was notified in the Official Journal as having ceased and before the date of the first advertisement of the application."

Again the legislature has seen fit to give special consideration to injustices that may have occurred due to the default of the patentee (See too s.47E(8) relating to the restoration of a lapsed application).

As we have already pointed out, if the true construction of s.90(1) is as we have held it to be, there is no need for a provision compensating a third party. He would be able to search up to the date of termination of the patent and would know whether a petition had been lodged. If he took steps to tool up before then or knowing that a petition had been lodged he could hardly expect to be compensated.

In our view therefore a consideration of order provisions of the Act only serves to reinforce the interpretation which we place on s.90(1). Had the legislature intended an unlimited power to allow further time, in the light of provisions such as ss.97, 98 and 160 (and particularly having in mind s.84(7) of the 1903 Act) one would have expected it to have inserted in s.90 provisions such as s.160(3) and (6) and s.98(4).

The fact that the legislature did not include in s.90 a provision for compensation similar to that in s.160(6) and s.98(4) therefore supports the construction of s.90 which we have adopted.

Our conclusion is that Fullagar J. had no jurisdiction to make an order extending the term of the first respondent's letters patent 272333.

It was argued that the order of Murray J. made on 10 June 1980, extending to 29 August 1980 the time within which a petition for extension of the term of the patent could be presented, was final and that since the extension was made, it was not open to the appellant to argue that the petition was not presented within time.

We do not think this argument is sound. The order of Murray J. in terms extended the time for lodging the petition but this could not validate the petition when lodged. As we construe s.90(1) no petition lodged after the date of expiry of the term of the patent could give the court jurisdiction to make an order extending the patent because, in our view, that jurisdiction depended on the petition being lodged prior to that date. In the absence of such a petition nothing a court did after that date could restore the position. Its orders even if final could have no effect. For this reason alone we think this submission should be rejected. The order of Murray J. therefore was of no effect. This being so there is no need to make an order setting it aside. If, contrary to this view, it were necessary, we would have made such an order. It was, in our view, an interlocutory order and s.28(4) of the Federal Court of Australia Act 1976 preserves this Court's power to give such decision on an appeal as is just notwithstanding that there has been no appeal from an interlocutory judgment or order.

The appellant sought leave to appeal from the order of Murray J. This application is still before us. Because it is interlocutory in nature we do not need to grant leave to appeal. If it had been necessary, we would, for the reasons already expressed, have exercised our discretion in favour of granting leave and allowed the appeal.

It was also argued that even though Murray J's. order could be set aside the patent had already been extended by Fullagar J. and the extension given effect to by an entry in the Register of Patents. Reliance was placed on the decision of the High Court in Wilde & Anor (Liquidators of Blackburn Industries Pty. Limited) v. Australian Trade Equipment Co. Pty. Limited (1981) 55 A.L.J.R. 280. It was argued, on the basis of this case, that the register was prima facie evidence of the existence of the extended patent and that it could not now be rectified.

We have already expressed our view as to the effect of Murray J's. order. We do not think that anything in Wilde's Case constrains us from ordering that the register be rectified. Such an order is consequential upon our decision that Fullagar J. lacked jurisdiction and that his order should be set aside. The Register of Patents is prima facie evidence only of its contents and by s.32 of the Act an entry wrongly existing on the register can be removed. In Wilde's Case it was not seriously argued that the order extending time was made without jurisdiction. Furthermore, the Court though it had power to rectify an entry in the register had no power to remove such an entry and the certificate of the Commissioner as to the registration was by the legislation made conclusive evidence that the requirements as to registration had been complied with.

In our view we clearly have power to give effect to our decision, that Fullagar J. had no jurisdiction to make the declaration and orders in question and can do so by ordering the rectification of the register.

The orders we propose are:-

(1) That the appeal be allowed.

(2) That the declaration and orders of Fullagar J. of 24 June 1981 be set aside.

(3) That the petition for extension of the term of Letters Patent No. 272333 be dismissed.

(4) That the Register of Patents be rectified and that the second respondent remove from the Register Australian Letters Patent No. 272333 purported to be given and granted by way of extension of the term thereof and standing in the name of the first respondent as patentee.

(5) That the first respondent pay to the appellant and to the Commissioner of Patents their costs of this appeal and of the application for leave to appeal (No. G108 of 1981).

JUDGE2

Under the Patents Act, 1952 ("the Act") a petition for extension of a patent on the ground of inadequate remuneration must be presented to a prescribed court at least six months before the expiration of the term of the patent or "within such further period as a prescribed court allows". The present appeal raises for decision the question whether a prescribed court possesses jurisdiction to allow a further period for presenting a petitionin a case where the application for further time is not made until after the patent has expired.

The letters patent involved are Australian Letters Patent No. 272,333 ("the patent") which expired on 16 October, 1979. At the time of expiry, the registered proprietor of the patent was a French corporation called Labaz S.A. On 28 December, 1979, Labaz S.A. merged with the respondent, Sanofi, which is also a French corporation and which, at that time, was named "Omnium Financier Aquitaine Pour 1' Hygiene et la Sante (Sanofi)". The result of that merger, under French law, was that the respondent was the universal successor of Labaz S.A. It is common ground that, as a consequence, the respondent became entitled to all the property of Labaz S.A. including any right, title or interest Labaz S.A. may have had in respect of the expired patent. The patent was a convention patent and related to a new use of the substance dipropylacetic acid (and derivatives thereof) in association with a pharmaceutically acceptable diluent or carrier.

On 10 June, 1980, Sanofi filed, in the Supreme Court of Victoria, which is a prescribed court, a notice of motion for an "order extending the time within which" it might present a petition for extension of the patent. On that day, Murray J. made an order which purported to extend the time for presentation of a petition until 29 August, 1980. A petition to the Supreme Court was filed on 29 August, 1980. The petition was heard by Fullagar J. who, on 24 June, 1981, ordered that, subject to the insertion therein of certain limitations and a condition, new Letters Patent be granted to and in the name of Sanofi for a term of ten (10) years from the date of expiry of the patent in respect of the matters comprised in the patent.

The appellant, Parke Davis Pty. Limited ("Parke Davis"), was not a party to the application for extension of time before Murray J. Nor did it participate in the proceedings before Fullagar J. up to the time when his Honour delivered judgment and pronounced orders. It had however, in the belief that the patent was about to expire and, after 16 October, 1979, that it had expired, spent substantial sums of money in developing and preparing to market a product which could not be marketed if there were an extension of the term or a new grant of the patent. Subsequent to 24 June, 1981, Parke Davis unsuccessfully sought, in the Supreme Court, to prevent the passing and entry of the orders which Fullagar J. had made. It then sought special leave to appeal to this Court from the order of Murray J. extending the time for presentation of a petition and from Fullagar J's judgment and orders on the petition. Special leave, limited to two specified grounds, was granted to bring the present appeal from the judgment and orders of Fullagar J. The application for special leave to appeal from the order of Murray J. was stood over until the hearing of the present appeal.

The grounds, to which Parke Davis is restricted upon the appeal, are connected. As has been indicated, they concern the extent of the jurisdiction of a prescribed court to make an order allowing a further period for the presentation of a petition for extension of a patent on the grounds of inadequate remuneration. Parke Davis' primary submission is that an order allowing such a further period cannot authorize the presentation of a petition after the relevant patent has expired. Alternatively, and more narrowly, it is submitted that such an order cannot be made upon an application which is itself not brought until after such expiry. It is common ground between the parties that the validity of those related submissions depends upon the effect of the provisions of s.90(1) of the Act. Acceptance of either of them would, it is said, mean that Murray J. did not possess jurisdiction to make the order extending the time for presenting the petition which he purported to make and that there was no validly instituted proceeding before Fullagar J. in which he could properly have made an order for a new grant.

Section 90(1) of the Act provides:
"A patentee of a standard patent who considers that he has been inadequately remunerated by his patent may, after advertising, as prescribed, his intention to do so, present to a prescribed court, at least 6 months before the expiration of the term of the patent, or within such further period as a prescribed court allows, a petition praying that his patent be extended for a further term".

As can be seen, s.90(1) contains no express grant of jurisdiction to allow a further period for the presentation of a petition for extension of a patent on the grounds of inadequate remuneration. The grant of jurisdiction must be inferred from the right which s.90(1) confers upon a "patentee" to present a petition within such further period "as a prescribed court allows". Neither the sub-section nor the Act contains any express limitation as to the duration of the further period which a prescribed court may allow or as to the time before which an application for an order allowing a further period must be made. It is submitted however, on Park Davis' behalf, that such a limitation is implicit in the actual words of the sub-section by reason of the description and nature of the petition as a petition praying that the patent "be extended for a further term". A provision for extending something - be it time or otherwise - should, it is contended, be construed as operating only while the thing to be extended is still current or existing. In support of this contention, reliance was placed upon, inter alia, Esso Research and Engineering Company v. Commissioner of Patents ((1960) 102 C.L.R. 347 at p. 351) where Fullagar J. accepted that as "the most natural meaning of the word 'extend'" and Brooke v. Clarke ((1818) 1 B. & Ald. 396 at p. 403; 106 E.R. 146 at p. 148) where Lord Ellenborough C.J. stated, as the starting point of his judgment, that "extension imports the continuance of an existing thing" and concluded that the word extension was "too strong . . . to grapple with" and precluded a statutory provision for extension of copyright from being construed as reviving a right that had, by lapse of time, become extinct.

It is apparent that, as a matter of language, a reference to extending something will commonly involve the inference that what is to be extended must be current or existing. The propriety of such an inference will, however, depend largely upon the nature of what is to be extended. In the case of extending a physical thing, such as a rubber band or one's neck, the inference will ordinarily be irresistible. When non-physical things, such as time or rights, are involved however, the inference will depend upon whether the concept of "extending" the particular thing carries with it the implication that what is to be extended must still be current or existing. In the present case, it is said that the inference to be drawn from the reference, in s.90(1), to a petition to extend a patent is that the patent should be current at least at the time the petition is presented. Whether this is so must depend upon whether, in the context of patents legislation, the concept of extending a patent carries with it the notion that the patent is current. Prior legislative provisions and judicial statements combine to establish that it does not.

Until 1835, neither the Crown nor the courts in England possessed power to extend the term of a patent: any such extension needed to be by special legislation. In that year, the Act 5 & 6 William IV c. 83 permitted a patentee, after prior advertisement, to petition for a prolongation of the term of his patent and empowered the Crown, upon a favourable report of the Judicial Committee of the Privy Council to which the petition might be referred, to grant new letters patent for a term not exceeding seven years from the expiry of the original term. Under subsequent 19th century legislation (in particular, 2 & 3 Vict. c.67 and 46 & 47 Vict. c. 57), the power to extend the term of a patent remained in the Crown acting upon a report of the Judicial Committee.

From the introduction of the 1835 Act, it was clear that an order by the Crown that a patent be "extended" could, in some circumstances, be made after the patent had expired. With the enactment of the Act of 2 & 3 Victoria, it was established that a patent could be prolonged or extended by either a simple extension of term or by a new grant. Isaacs J. adverted to these aspects of the 19th century legislation in In re Robinson's Patent ((1918) 25 C.L.R. 116 at p. 136) when, after referring to 5 & 6 Will. IV c.83 and 2 & 3 Vict. c.67, he said:
" The important fact to bear in mind is that, reading the two Acts together, it is plain (1) that whether the Crown made a simple extension of the old patent or made a new grant it was equally a "prolongation" of the original patent; (2) that even under the Act of 1835 the Crown might "prolong" or "extend" the original patent although it had expired, provided the Judicial Committee had reported favourable on it before the expiration of the term; (3) that under the Act of 1839 both the actual extension of the original term and the recommendation for such extension could take place after the expiration of the term, and, what is much to the point, Parliament recognized and called the exercise of the power, though after the expiration of the term, a "prolongation" or "extension" of that term.

In the case of Ledsam v. Russell (1 H.L.C., 687) the learned Lords in the case cited referred to the new grant as an "extension" of the earlier patent (see pp. 693, 699, 701 and 702 of the Report). See, also, per Patterson J. in the Exchequer Chamber (16 M. & W., 633, at pp. 641, 642). When the case was in the Court of Exchequer, Parke B., who delivered the judgment of the Court, and all the Courts agreed, said (14 M. & W., 574, at p. 583):- "The use of the terms 'prolongation' and 'extension' would seem to indicate one continuous term, without an interval. On the other hand, the remainder of the clause appears not to require it". And the Court held, as finally approved, that the Crown could "prolong" or "extend" a term that had in fact expired. See In re Heath's Patent (8 Moo. P.C.C., at p. 225), where the Privy Council refer to new letters patent as carrying out a report in favour of an extension of the original patent.

The Act 16 & 17 Vict. c. 115, sec. 7, passed a few months afterwards, speaks of new letters granted for a further term as "new letters patent granted by way of prolongation". The new letters patent so granted, though "new" and subject to some provisions in the Act relating to new patents (see In re Cocking's Patent (Griff. P.C. 258) and In re Smith's Patent (Griff. P.C. 268), are not "original" (see In re Betts' Patent (1 Moo. P.C.C. (N.S.), at p. 57)) and are free from certain other provisions relating to original patents. In Bovill v. Finch (L.R. 5 C.P., 523, at p. 532) it is said:- "The 2 & 3 Vict. c. 67, s.2, which enables the Crown to grant an additional term, speaks of it as a 'prolongation' of the 'term' and 'a further extension of the term in the letters patent'. Every new grant, therefore, is a graft only on the original grant, and has no existence apart from the parent grant"."
(See also, as to the nature of a new grant, Ex parte Celotex Corporation; In re Shaw's Patents (1937) 57 C.L.R. 19 at pp. 24-25; In re Usines de Melle and Firmin Boinot's Patent (1954) 91 C.L.R. 42 at pp. 50-52).

The Patents and Design Act, 1907 (U.K.) transferred the jurisdiction to grant an extension of a patent to the High Court of Justice where it has since remained. The relevant provisions of the 1907 Act was repealed by the present Patents Act, 1949 (U.K.). The two features of the 19th century legislation, to which particular reference has been made, have been preserved in the United Kingdom. A patent can be extended after expiry. Extension of a patent can be effected either by a simple extension of term or by a new grant. An order for a new grant is ordinarily appropriate where the patent has expired at the time of the order but it would seem that extension of term and new grant are properly to be seen as "two alternative forms of order, either of which can be made whether the patent has expired or not" (In re Usines de Melle and Firmin Boinot's Patent, supra, at p. 51).

Under the United Kingdom legislation from the Act 2 & 3 Vict. c. 67 to the 1907 Act, the actual petition for the extension of a patent was required to be presented at least six months before the time limited for its expiry. In 1919, the Patents and Designs Act, 1907 (U.K.) was amended to provide that the High Court of Justice "may in its discretion extend such period within which such a petition may be presented". In re Brown's Patent ((1920) 37 R.P.C. 52), Sargant J. held that that provision empowered the court to extend the time for petitioning notwithstanding that the patent had expired before the application for extension of time was made. Indeed, the patent in re Brown's Patent (supra) had expired before the 1919 amendments introduced the power to extend the time for petitioning. No appeal lay from Sargant J's decision to extend time in re Brown's Patent (supra) and his conclusion that the time for petitioning could be extended on an application made after the petition had expired was followed, in the United Kingdom, in subsequent cases in the Chancery Division (see, e.g., re Petersen's Patent (1921) 38 R.P.C. 267 at p. 275; re Patents of Neufeldt and Kuhnke G.m.b.H. (1930) 47 R.P.C. 553 at p. 563; re Ruths' Patent (1931) 48 R.P.C. 553 at p. 554). Under the 1949 Act (s.24(3)), a power to extend the time for petitioning on an application made after the patent has expired exists if the applicant has, by reason of active service or the effect of hostilities, been prevented from presenting a petition for extension on the ground of war loss. The wording of the 1949 Act indicates a legislative assumption that a simple provision that the petition may be presented "at such later time as the court . . . may allow" would prima facie empower the court to extend time so as to allow a petition to be presented after the patent had expired (s.23(2)) and to make such an order even though the application to extend time was not itself made until after such expiry (s.24(3)).

Prior to Federation, the various Australian colonies had enacted patents legislation which continued in operation until the Commonwealth took possession of the field with the Patents Act, 1903. Section 84 of that Act conferred jurisdiction upon the High Court and the State Supreme Courts to extend a patent in terms that substantially corresponded with the provisions of the current United Kingdom legislation (46 & 47 Vict. c.57 s.25). An order could be made after the patent had expired but only on a petition presented at least six months before expiry. In 1914, regulation 8 of the Patents (Temporary) Regulations, 1914 made under the Patents, Trade Marks and Designs Acts of that year empowered the Minister or the Commissioner in certain circumstances to "extend the time prescribed by the Patents Act, 1903-1909, or any Regulations made thereunder, for doing any act or filing any document upon such terms and subject to such conditions as he thinks fit". In In re Robinson's Patent (supra), Isaacs J. held that, under the provisions of that regulation, the Solicitor-General, as delegate of the Minister, had acted within power in extending the time for presenting a petition three months after the patent had expired. Regulation 8 ceased to operate in 1920. In 1921, a new sub-section (ss.7) was added to s.84 of the Patents Act, 1903 in the following terms:
"Notwithstanding anything contained in this section the Court may, in its discretion, either before or after the expiration of the term of a patent extend the period within which proceedings may be taken for the extension of the term of the patent, whether such proceedings are by petition or by originating summons".
This sub-section remained operative until the Patents Act, 1903 was repealed by the Act on 1 May, 1954.

Thus, at the time of the enactment of s.84 of the Act, it was plainly established that a patent could be "extended" after it had expired and that the order for "extension" on a petition could take the form of a new grant grafted on the expired patent. Indeed, these had been features of all United Kingdom and Commonwealth legislation providing a non-legislative procedure for extending a patent. It had been held, in United Kingdom cases, that general words conferring jurisdiction to extend the time for petitioning extended to authorize the making of an order extending time on an application for extension which was not made until after the patent had expired. The main United Kingdom decision in that regard (re Brown's Patent, supra) had been referred to with approval in the High Court of Australia in In re Dunlop's Patent ((1922) 31 C.L.R. 579 at pp. 580-581) where Starke J. had held that the jurisdiction to extend the time for petitioning which was conferred upon the court by s.84(7) of the Patents Act, 1903-1921 extended to a case where the relevant patent had expired some two years before the provisions of s.84(7) were enacted. In those circumstances, it is, in my view, clear that the concepts of extending a patent and of allowing further time for presenting a petition for such an extension do not carry with them any inference or presumption that the patent must be current either at the time the petition for extension is presented or at the time when the application to extend time for petitioning is made.

It was argued on Parke Davis' behalf that the contrast between s.84(7) of the Patents Act, 1903, with its express provision that the period for petitioning may be extended by the court "either before or after the expiration of the term of a patent," and s.90(1) of the Act, which contains no such express provision, indicates a legislative intent that an extension of the time for petitioning cannot be granted under s.90(1) after the patent has expired. This argument does not improve with closer examination. Australian patents legislation has always been largely based on the provisions of United Kingdom legislation and the reference to "within such further period" as a prescribed court may allow needs to be viewed in the context of the United Kingdom decisions that general words conferring a power to "extend the period" in which a petition might be presented were effective to confer jurisdiction to extend time on an application made after the patent had expired. In this regard, it is relevant to note that s.90(1) is framed in the words recommended by the expert committee chaired by Dean J. of the Victorian Supreme Court. It would seem unlikely that, if that Committee had been of the view that the enactment of the sub-section would achieve a significant curtailment of the existing judicial power to extend the time for presenting a petition, they would have failed to make some mention of the matter in their Report to the Attorney-General. In fact, that Report, upon which the Parliament relied, contains no suggestion that the power to extend time for petitioning contained in s.90(1) of the Act was either intended to be more restricted than that which had been held to be conferred by a grant in general terms of such power to extend time or to be significantly different from that which, at the time of the Report, existed in s.84(7) of the 1903 Act (see, as to the propriety of referring to the contents of the Dean Report, Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited (1980) 144 C.L.R. 253 at pp.289ff; Pillai v. Mudanayake (1955) 2 ALL E.R. 833 at p. 837; Wacal Developments Pty. Limited v. Realty Developments Pty. Limited (1978) 140 C.L.R. 503 at p. 509; pp. 520-521). The absence of any express reference in the Act to a prescribed court being empowered to grant a further period after the expiration of the term of the patent is to be explained by the change from an express grant of jurisdiction such as was contained in s.84(7) to an implied grant of jurisdiction such as is found in the Patents Act, 1949 (U.K.) and s.90(1) of the Act.

It was suggested in argument that the fact that the power to extend time in the 1949 United Kingdom Act was more limited than that under the amended 1907 United Kingdom Act supports the giving of a more limited meaning to the general words of s.90(1). I do not think that that is so. To the contrary, one finds in the 1949 United Kingdom Act (s.24(3)) an assumption that a general implied grant of power to extend the time for applying for prolongation of a patent would prima facie include power to extend time on an application not made until after the patent had expired. The express limitations of the power to extend time for petitioning which are found in the United Kingdom Act (ss.23(2) and 24(3)) were, one assumes, deliberately omitted from the corresponding provisions (ss.90(1) and 95(5)) of the Act.

It was next contended that the scope of the power to extend time, which is, by implication, conferred by s.90(1), is limited by the fact that the sub-section states that a petition for extension may be presented by a "patentee". Section 6 of the Act provides that, unless a contrary intention appears, a "patentee" means "the person for the time being entered on the Register as the grantee or proprietor of a patent". This, so it is said, means that a petition can only be presented by the registered patentee or proprietor of a current patent. Once again however, closer examination deprives the argument of real force.

The provisions of the Act dealing with extension of patents are to be found in Part IX. Section 96 of the Act provides that a reference to a patentee in Part IX includes a reference to an exclusive licensee. That section makes clear that the word "patentee" in Part IX does not bear its simple defined meaning and indicates that the word "patentee" is used uniformly throughout Part IX. As Fullagar J. demonstrates in his judgment in the Supreme Court, the word "patentee" is used in other sections in Part IX (e.g., s.94(1) and s.95(9)) in the traditional sense in which it has been used in legislative provisions dealing with extension of patents, namely, as including the person who was the patentee under an expired patent. In my view, "patentee" as used in s.90(1) is prima facie used in that traditional sense. In that regard, it is relevant to note that the word is so used in provisions of the Patents Act, 1949 (U.K.) dealing with extension of patent (see, e.g., s.24(3)) notwithstanding a prima facie definition of the word in terms corresponding to those used in the definition in s.6 of the Act.

Nor am I able, as a matter of construction, to find any warrant in other provisions of the Act for limiting the power to extend time conferred by s.90 in the manner suggested by Parke Davis. If one goes to provisions of the Act outside Part IX, one can find some slight indications which point in favour of Parke Davis' construction of s.90 (e.g., s.160(3) which expressly provides that time can be extended after it has expired) and some equally slight indications which point against it (e.g., s.47D(2) which impose an express limitation upon a general power to extend time). None of such indications is, however, of real persuasive weight. Other provisions within Part IX dealing with extension of patents are of more assistance and support giving to the power to extend time which is conferred by the general words used in s.90(1) the broad scope which re Brown's Patent (supra) and other cases support. The provisions of s.95(5) are of particular significance in that regard. The provisions of that sub-section are based on the provisions of s.24(3) of the Patents Act, 1949 (U.K.). It is plain that the words in s.24(3) of the United Kingdom Act ("at such later time as the court or comptroller may allow") which correspond to the relevant words in s.95(5) ("at such later time as a prescribed court or the Commissioner . . . allows") are used in the sense that they confer a power to extend time for petitioning notwithstanding that the application to extend time was not made until after the expiration of the term of the patent. It appears to me to be unlikely that the general words of s.90(1) ("within such further period as a prescribed court allows") were intended to confer, for present purposes, a significantly narrower power than that conferred upon a prescribed court or the Commissioner by the correspondingly general words of s.95(5) or that it was intended that words in s.95(5) of the Act should have a different meaning to that which they had in the United Kingdom section from which they were taken.

In the result, I consider that the power to extend time for petitioning which is implicit in the words of s.90(1) of the Act extends to a case, such as the present, where the application for extension of time was not made until after the patent has expired. As a matter of language, the words "within such further period as a prescribed court allows" confer, by implication, such an unrestricted power. That prima facie construction of those words is confirmed by the nature and legislative history of non-legislative powers to extend a patent, by judicial decision as to the scope of a general power to extend time for presenting a petition and, on balance, by the general context provided by other provisions in Part IX of the Act. It also accords with the settled practice of the Supreme Court of Victoria and with what was said by Walsh J. in his judgment in Re Stamicarbon (22 March, 1971: unreported but referred to in (1971) A.L.J.R. 175). In that case, the patent had expired "on or about" 22 December, 1970. A notice of motion seeking an extension of the period within which the patentee might present a petition pursuant to s.90 of the Act had been filed on 21 December, 1970. On 22 March, 1971, Walsh J. allowed further time within which a petition could be presented. In the course of his judgment his Honour said:
"Section 90 ss(1) provides that such a petition is to be presented at least six months before the expiration of the term of the patent or within such further period as the High Court allows. The question has been raised whether the terms of that provision require that the petition presented within an extended time allowed by the Court must nevertheless be presented before the patent expires. The question has also been raised, whether the application for the extension of time ought to be made before the standard time for presenting the petition has expired.
On a consideration of the provisions of the section in its context I am of opinion that I have power to make an order now although the patent has expired, allowing a further time within which a petition under section 90 may be presented. I propose to act on that view. The contrary has not been argued, although, as I have said, the question has been raised".
In my view, Fullagar J. possessed jurisdiction to make the orders which he made in the Supreme Court in the present case.

It should be mentioned that reliance was placed by Parke Davis upon what was suggested as being likely legislative policy. The consideration for the monopoly which the patent grants to a patentee is the publication to the world by the patentee of the details of his previously unpublished invention. The expiry of a patent without a petition for extension having been filed or an application for extension of time for petitioning having been made constitutes, so it was said, a representation that others are entitled to act on the basis that the monopoly of the invention has come to an end. It is argued that it is unlikely that it was the legislative intent that a third party who takes advantage of the invention in a period in which the patent has expired without there being any pending application or petition by the patentee, should be at risk that a subsequent order extending time for petitioning might not only place in jeopardy the benefit of any expenditure on research and tooling-up but also arguably convert acts which were innocent at the time they were committed into infringements of patent. There is obvious force in these policy considerations. On the other hand, there is somthing to be said, as a matter of policy, for the view that powers to extend time for curial proceedings or procedures should be widely framed so to allow scope for avoiding injustice in the exceptional case. These conflicting perceived policy considerations are, however, essentially matters for the Parliament and the content of patents legislation over the years indicates that views have varied at different times and in different places as to which should prevail. It suffices for present purposes to say that I am unable to find in these policy considerations any warrant for giving to the relevant words of s.90(1) a different scope or effect to that which, in my view, they bear as a matter of construction.

The appeal should be dismissed. Parke Davis should be ordered to pay the costs of Sanofi and of the Commissioner of Patents both of the appeal and of the application for special leave to appeal from the judgment and order of Fullagar J. There remains for consideration the application for special leave to appeal from the ex parte order of Murray J. extending the time in which Sanofi could present a petition. The only attack on that order was on the ground that Murray J. possessed no jurisdiction to make it. The conclusion which I have reached on the proper scope of the power to extend time for petitioning contained in s.90(1) of the Act, disposes of that ground. It follows that I am of the view that that application for special leave to appeal should be refused and that Parke Davis should be ordered to pay Sanofi's costs thereof.

There are three further matters to which I would make brief reference. The first is that it is undesirable that a prescribed court should, after a patent has expired, make an order extending the time for petitioning without being satisfied that appropriate public notice has been given of the intention to make the application for such an extension. The second is that an order granting an extension of time to present a petition for extension of a patent upon an application which was made after the time when the patent expired and which had not been adequately advertised before that time, should only be made in exceptional circumstances. The third is that it should be recognized that orders of the type made in Ex parte Celotex Corporation; In re Shaw's Patents (supra at pp. 25-26) will not uncommonly be inadequate to provide proper protection for third parties who have properly expended effort and incurred expenditure during a period between expiry of a patent and a subsequent order that there be a new grant of letters patent dating from the time of that expiry.