International L aw —Conjlict o fla w s ~ A c t o f sovereignty— Grant
o f letters patent—
H. C. OF A.
Patent granted in one State o f Commonwealth— Action fo r infringement brought
in another State o f Commonwealth— Patents A c t 1899 (ALN, IK.) [No. 19 o f
1906.
1S99).
Melbourne,
The grant of letters patent for an invention is a grant of a right to exclude
1905
others from manufacturing or using the particular invention within the
Nov. 23, 24.
territory of the State under whose laws it is granted, and the title to the right
must devolve, as in the case of land, according to the laws of that State.
1906
Feb. 27, *28.
The grant of letters patent is an exercise of the sovereign power of the
}far. 1, 2, 20.
State, and therefore, as in the case of title to land, the validity of the grant is
Griffith C.J.. Burton and
not examinable in the Courts of another Stale, except in cases where the
question of that validity arises merely incidentally in an action otherwise
O’Connor JJ.
cognizable by the Courts of that other State.
The circumstance that patent rights cannot be enforced against a person M'ho can prove that the invention was not novel does not exclude the operation of the above rule.
The grant of letters patent is within the powers of sovereignty conferred upon the State of New South Wales by its Constitution, and a grant of such
letters under the Patents A ct 1899 (N.S. W .) is an exercise of such powers.
It is competent for the Courts of one State to inquire as to the limits of the rights of sovereignty possessed by another State, If the act in question purports to be done within those lim its, the case is in principle the same as one of an act done in the exercise of an unlimited sovereignty.
An action was brought in Victoria alleging an infringement in New South ales by the defendants, a Victorian Company carrying on mining operations in New Soxith Wales, of the plaintiff’s New South Wales patent, and claiming
4 S 0 HIGH
COUUT
[1906,
H. C. OF A.
au injunction and damages.
The defendant by its defence alleged that th
1906. plaintiffs patent was invalid on various grounds.
Htld, that…
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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AGLC
Potter v Broken Hill Proprietary Co Ltd [1906] HCA 88
Case
[1906] HCA 88
Decision Date
CaseChat Overview and Summary
Potter brought an action in New South Wales against Broken Hill Proprietary Co Ltd for infringement of letters patent granted in New South Wales. The defendant argued that the letters patent were invalid because they were granted pursuant to an Act of the New South Wales Parliament which, it was contended, had no power to grant such patents extraterritorially. The case was heard by the High Court of Australia.
The central legal issue before the High Court was whether the New South Wales legislature had the power to grant letters patent for inventions that had effect beyond the territorial limits of New South Wales. This involved considering the nature of letters patent as an act of sovereignty and the extent of the legislative powers of a colonial legislature under the British Crown.
The Court held that the grant of letters patent is an act of sovereignty, and the power to grant such patents is limited to the territory over which the sovereign has jurisdiction. Therefore, the New South Wales legislature could only grant patents that had effect within New South Wales. The Court reasoned that the Patents Act 1899 (NSW) did not confer any extraterritorial operation on the patents granted under it. Consequently, the letters patent relied upon by the plaintiff had no force or effect outside New South Wales, and the defendant could not be held liable for infringement within New South Wales based on acts done outside that territory.
The High Court found in favour of the defendant, holding that the letters patent were invalid in so far as they purported to grant exclusive rights outside New South Wales. The plaintiff's action for infringement was dismissed.