R v Commissioner of Patents; Ex parte Martin

The case of *R v Commissioner of Patents; Ex parte Martin* concerned an application by Henry George Martin to amend his patent applications and the resulting letters patent. Martin had inadvertently declared himself the actual inventor in his applications, when in fact he was an assignee of the inventors. Letters patent were subsequently issued based on these applications. Martin sought to amend the documents to reflect his status as assignee, rather than inventor. The matter came before the High Court of Australia.

The central legal issues before the Court were whether the Commissioner of Patents had the power to amend the patent application and the letters patent to correct the misstatement of the applicant's inventorship, and if so, under which provisions of the *Patents Act 1903-1950* or associated regulations. Specifically, the Court considered the scope of Section 117 of the Act, which permits the correction of clerical errors in the Register or in proceedings, and Regulation 147 of the Patents Regulations, which purports to grant broader amendment powers. The validity of Regulation 147 itself was also questioned.

A majority of the Court (Webb, Fullagar, Kitto, and Taylor JJ.) held that the amendment was not appropriate. Webb J. found the letters patent void due to a proviso therein and considered that an amendment to validate void letters patent would contravene legislative intent. Fullagar, Kitto, and Taylor JJ. reasoned that correcting the application would create a falsity in the letters patent and the Register, as it would appear the patent was granted on a declaration that was not in fact made. Furthermore, Fullagar, Kitto, and Taylor JJ. found Regulation 147 to be *ultra vires* and invalid, as the Act was presumed to have provided for all amendments the legislature deemed necessary. Williams A.C.J., dissenting, believed the error was a clerical error within the meaning of Section 117.

The Court ultimately discharged the order nisi for mandamus. The applications for amendment were refused, and consequently, no order was made for the rectification of the Register of Patents.