R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd

[1981] HCA 25

HIGH COURT OF AUSTRALIA

Gibbs C.J., Mason, Murphy, Aickin and Wilson JJ.

THE QUEEN v. SMITH; Ex parte MOLE ENGINEERING PTY. LTD.

(1981) 147 CLR 340

2 June 1981

Patents

Patents—Application—Opposition—Hearing by Acting Deputy Commissioner—Interim decision that specification defective—Leave to amend specification—Applications for amendments—Retirement of hearing officer—Hearing of opposed amendment applications by different officer—Application for rehearing of grounds of opposition to unamended application—Whether competent—Patents Act 1951 (Cth), ss. 6 "The Commissioner", 10(2), 11, 59, 60 (5), 77, 78.

Decisions

1981, June 2.
The following written judgments were delivered: -
GIBBS C.J. I have had the advantage of reading the judgments prepared by my brothers Mason and Wilson and agree with them. Accordingly I would make absolute the order nisi for prohibition. (at p342)

MASON J. This is an application to make absolute an order nisi for prohibition made by Aickin J. prohibiting the Commissioner of Patents from re-hearing an application by Mobile Drilling Co. Inc. ("Mobile") for Australian Patent No. 451, 718 entitled "Drilling Apparatus". (at p342)

2. Notice of opposition to the application for a patent was lodged by the prosecutor, Mole Engineering Pty. Ltd ("Mole"). A hearing into the grounds of opposition was conducted by Mr. P. F. Kildea, Acting Deputy Commissioner of Patents. On 3 August 1977 he gave a decision which was entitled "INTERIM DECISION OF ACTING DEPUTY COMMISSIONER OF PATENTS". The last paragraph of the decision was expressed in these terms:
"I have found that the specification does not comply with the requirements of s. 40 of the Act and that the invention claimed by claim 1 was, at the priority date, obvious. However, I believe that the specification can be amended to claim novel and non-obvious matter. Accordingly, I will allow the applicant sixty days from the date of this decision within which to lodge a request to amend the specification". (at p343)

3. Pursuant to the suggestion made in this paragraph Mobile made applications for amendments of the specification. The first application was lodged on 27 September 1977; the second application was lodged on 4 October 1977. The amendments related to claim 1. They were designed to eliminate the aspects of the claim which Mr. Kildea had relied upon to support his adverse findings. Mole lodged notice of opposition to the first amendment sought on the grounds set forth in sub-ss. (1) and (4) of s. 78 of the Patents Act 1952, as amended. (at p343)

4. On 13 March 1980 Messrs. Spruson &Ferguson, patent attorneys for Mobile, wrote to the Commissioner, seeking a rehearing of the grounds of opposition to the unamended application before it proceeded with the amendments. In support of the request the patent attorneys urged that Mr. Kildea, who had retired, would not be available to hear the proceedings consequent upon the amendments, that his decision on the issue of obviousness in relation to claim 1 was wrong and that there were precedents for the re-hearing sought. (at p343)

5. On 25 March 1980 Mr. J. L. Roveta, the principal supervising examiner of the Hearings Section, replied to the letter of 13 March 1980, enclosing his decision on the hearing into the opposition to the amendments which had been sought. His decision was in favour of Mobile. However, in his letter Mr. Roveta stated that after consultation with the Commissioner, the Commissioner had agreed that Mobile should withdraw the amendments immediately, notify the opponents of that withdrawal, whereupon the Commissioner would direct that the application was to be re-heard in view of the situation that the original hearing officer would not be available to finalize the s. 59 opposition. (at p343)

6. On 28 March 1980 Mobile withdrew its amendments and sought a re-hearing of the original s. 59 opposition. Mole then objected to the course which the Commissioner proposed to follow and obtained the order nisi. The grounds on which the order nisi was granted are: (1) that s. 60 of the Act does not permit the Commissioner to grant a re-hearing after reaching an interim decision on a notice of opposition given under s. 59 when leave to amend the specification has been granted; (2) that s. 83 of the Act does not give the Commissioner power, after determining that an amendment should be allowed, to permit it to be withdrawn and to reach a further decision after re-hearing in respect of the original specification. Mole sought to argue a third ground which was expressed in these terms: (3) that nothing in the Act permits the Commissioner to grant a rehearing or reach a further decision, after reaching a decision under s. 60 on a notice of opposition given under s. 59, whether that initial decision is styled "interim" or not. (at p344)

7. Section 59 sets out the grounds on which the Attorney-General or a person interested may, at any time within three months after the date of the advertisement of the acceptance of an application and complete specification, or within such further period, not exceeding three months, as the Commissioner allows by notice in writing lodged at the Patents Office, oppose the grant of a patent. Section 60 (1) provides that where notice of opposition is given, the opponent shall serve a copy of the notice on the applicant, "and the Commissioner shall, after hearing the applicant and the opponent, if desirous of being heard, decide the case". Section 60 (2) provides:
"In so deciding the case the Commissioner may take into account a ground of opposition specified in the last preceding section whether relied upon by the opponent or not."
The applicant and an opponent who in the opinion of the Appeal Tribunal is entitled to be heard in opposition to the grant, may appeal to that Tribunal from a decision of the Commissioner under the section (s. 60 (5)). (at p344)

8. These provisions need to be read with the provisions in Pt VIII relating to the amendment of specifications. An applicant or patentee may by request in writing lodged at the Patents Office seek leave to amend his complete specification (s. 77 (1)). Section 78 provides that certain amendments are not allowable. Section 79 provides that an examiner shall ascertain and report whether the request for leave to amend is as prescribed and whether the amendment is allowable. The Commissioner may refuse the request for leave to amend (s. 81 (1)). An appeal lies to the Appeal Tribunal from such a refusal (s. 81 (2)). If the request is not refused, the Commissioner shall, unless the complete specification has not become open to public inspection, advertise particulars of the request in the Official Journal (s. 81 (3)). The Attorney-General or a person interested may, at any time within three months after the date of the advertisement, or within such further period not exceeding three months as the Commissioner allows, give notice to the Commissioner of opposition to the granting of the request on the ground that the amendment is not allowable under s. 78 (s. 82). The Commissioner shall, after hearing the person making the request and a person who has given notice of opposition, determine whether, and subject to what conditions (if any), the amendment ought to be allowed (s. 83 (1)). The applicant or the patentee and an opponent who in the opinion of the Appeal Tribunal is entitled to be heard in opposition to the request, may appeal to the Tribunal from a decision of the Commissioner under s. 83 (s. 84). (at p345)

9. Mole's case is that the decision made by Mr Kildea in opposition proceedings, under Pt V, though styled an "Interim Decision", was in truth a final decision. It was interim only in the sense that the applicant was given an opportunity to amend. Accordingly, there was no provision in the Act authorizing a re-hearing. (at p345)

10. On the other hand, Mobile contends that the practice of the Commissioner, approved by the Court, is to the contrary and that it is permissible for the Commissioner to re-hear or to direct a rehearing of opposition proceedings. Mobile asserts that the practice is supported by two decisions - Ethyl Corp. v. California Research Corp. (1970) Official Journal of Patents, Trade Marks and Designs, vol. 40, p. 562 and Sly v. United Development Corporation Pty. Ltd. (No. 1) Official Journal of Patents, Trade Marks and Designs, (1963) vol. 33, p. 1454. In Ethyl the officer who heard the opposition proceedings under s. 59 died and was unable to give a decision. The proceedings were completed by another officer with the consent of the parties. In Sly the Deputy Commissioner of Patents gave an "Interim Decision" in opposition proceedings allowing the applicant an opportunity to request an amendment. The amendment was applied for and opposed. The Deputy Commissioner died. The Commissioner concluded that the opposition proceedings should be reheard. This was done with the consent of the parties. Although on appeal from the later decision Sly v. United Development Corporation Pty. Ltd. (1962) 106 CLR 633, at p 637 Menzies J. made no express comment on this procedure, he said:
"Before me, as before the Deputy Commissioner, it was urged in opposition that even if the amendment fell within s. 71 and was not prohibited by s. 78 and was not otherwise open to objection on its merit, the application should nevertheless be refused because in an earlier decision between the parties a similar application had been refused and an appeal to this Court had been allowed to lapse. I agree with the Deputy Commissioner in thinking that the earlier decision - which related to a number of amendments - does not preclude the allowing of the amendment now sought . . ." (at p346)

11. To appreciate the significance of this comment it is necessary to set out the relevant part of the decision of the Deputy Commissioner which is reported in the Official Journal, vol. 33, at p. 1461. There the Deputy Commissioner said:
"At the outset, Mr. Franki raised the point that the question as to whether the amendment was allowable or not had already been considered and decided against the applicant by Mr. Petersson as the then Deputy Commissioner in his decision dated 17th January 1958. Mr. Franki pointed out that the present proposal was to amend claim 3 so as to make it identical with what was proposed to be claim 1 in the situation before Mr. Petersson. However, there the similarity between the two situations ends, as Mr. Petersson was confronted with extensive amendments to the body of the specification including the insertion of an amended consistory statement, and the deletion of the first two claims altogether. Conclusions reached by him were made having regard to major amendments elsewhere in the specification and did not consitute a refusal to allow the form, per se, of claim 1."
In my opinion neither the Deputy Commissioner nor Menzies J. regarded the decision of Mr. Petersson as involving a rejection of the form of claim 1, per se. (at p346)

12. Accordingly, neither Ethyl (1970) Official Journal, vol. 40, p. 562 nor Sly (1963) Official Journal, vol. 33, p. 1454 provides support for the practice contended for by Mobile. Each case rests on a decision made by the Commissioner which commanded the assent of the parties. (at p346)

13. Mobile then submits that the Act on its true interpretation enables the Commissioner to re-hear opposition proceedings unless and until a final decision is made by way of refusing or granting the application. It seeks to support this interpretation by contending that as it is the duty of the Commissioner to decide the case under s. 60, he has the power to supervise a hearing undertaken by another officer, even to the extent of re-hearing a particular proceeding at any time before an application for a patent is refused or granted and substituting his decision for that of the officer. (at p346)

14. The argument is based on s. 10 (1) and (2) of the Act. They provide:
"(1) There shall be a Commissioner of Patents, who shall, under the Attorney-General, have the chief control of the Patent Office.
(2) There shall be a Deputy Commissioner of Patents, who shall, subject to the control of the Commissioner of Patents, have all the powers and functions of the Commissioner of Patents under this Act, other than the powers of the Commissioner under the next succeeding section." (at p347)

15. The argument proceeds on the footing that sub-s. (2) enables the Commissioner to control the Deputy in the exercise by the Deputy of the powers and functions of the Commissioner. I do not agree. The expression "subject to the control of the Commissioner" relates to the Deputy Commissioner "having", as distinct from "exercising" the powers in question. It enables the Commissioner to exclude certain powers and functions from those generally conferred by the subsection on the Deputy. (at p347)

16. Another relevant provision is the definition of "the Commissioner" in s. 6. Subject to any contrary intention this expression means "the Commissioner of Patents or the Deputy Commissioner of Patents holding office under this Act and includes an Assistant Commissioner of Patents, or a Supervising Examiner of Patents, exercising powers or functions delegated to him under this Act". (at p347)

17. This definition needs to be read together with the power of delegation conferred on the Commissioner by s. 11. This section provides:
"(1) The Commissioner of Patents may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Commissioner of Patents, or to a Supervising Examiner of Patents, so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.
(2) A delegation under this section is revocable at will and no delegation prevents the exercise of a power or function by the Commissioner of Patents or by the Deputy Commissioner of Patents." (at p347)

18. The significance of the definition is that when it is read in conjunction with s. 60, it is for the Deputy Commissioner or an Assistant Deputy Commissioner or Supervising Examiner to whom the function has been delegated under s. 11 (1) to "decide the case". This responsibility is quite inconsistent with the notion that the Commissioner could give directions to the Deputy or to the delegate as to how the case should be decided. The Commissioner can, notwithstanding a delegation, hear and decide a case under s. 60 (s. 11 (2)). But clearly once a decision has been made under s. 60 the Commissioner cannot re-hear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail. (at p348)

19. Section 60 speaks of the Commissioner having to "decide" and of a "decision". It contemplates that there will be a hearing and a decision, a decision that is subject to appeal under s. 60 (5). It certainly does not contemplate that there will be two or more conflicting decisions. Under sub-s. (5) an appeal lies to the Appeal Tribunal from a decision given under s. 60 (1). It would make little sense, if notwithstanding this right of appeal, the Commissioner could re-hear an application and give a decision different from that which was the subject of the appeal. Considerations of expedition and finality tell very heavily against the interpretation that Mobile seeks to place on the section. (at p348)

20. It will be noted that s. 60 (5) enables an appeal to be brought from "a decision", rather than "the decision", of the Commissioner. The sub-section is quite consistent with the view that an appeal lies from a decision of the king givey by Mr. Kildea in the present case, one which upholds grounds of opposition but does not refuse the application because the objections may be overcome by amendment. The peculiarity of the statutory procedure is that Pt VIII provides for the consideration of amendments after the initial opposition proceedings have been heard and decided. What is more, Pt VIII provides for the lodging of notice of opposition to amendments and for a hearing of that opposition and a decision upon it with a consequent right of appeal. The Act therefore contemplates that there may be two decisions, one under Pt V and another under Pt VIII, each finally deciding an issue arising from a notice of opposition and that there will be a right of appeal from each decision. (at p348)

21. It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr. Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application - there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination. (at p349)

22. This view is supported by the judgment of Fullagar J. in Broken Hill Proprietary Co. Ltd. v. American Can Co. (1980) VR 143 . There two companies lodged notice of opposition to a patent application by the respondent. The grounds of opposition included obviousness, want of novelty and failure to comply with s. 40. The opposition was heard by an Assistant Commissioner of Patents. The Commissioner delivered an "Interim Decision" holding that the complete specification did not comply with s. 40 in that the claims failed to sufficiently define the invention. However, he held that this defect could be overcome by relatively simple amendments which he identified with some particularity. He stated that the amendments, if applied for and allowed, would overcome all the grounds of objection. Fullagar J. held that, despite the description "Interim Decision" the Commissioner had actually decided as much of the opposition proceedings as was susceptible of decision at the time and had decided it once and for all. The effect of the decision was that the Commissioner had decided that the application would be refused unless the amendments were applied for and ultimately accepted. (at p349)

23. Fullagar J. said (1980) VR, at p 147 :
"First I notice that the right of appeal is given from 'a decision of the Commissioner under this section'. In the result I find that I do not need to decide whether one should construe this expression in sub-s. (5) of s. 60 as referring only to a decision of the Commissioner whereby he does 'decide the case' within the meaning of sub-s. (1). For the purposes of this case I shall simply assume that this is correct and that the expression in sub-s. (5) refers only to some act whereby the Commissioner does 'decide the case'. It is in my opinion quite clear that the case which the Commissioner is bound by statute ultimately to decide is the opposition proceeding, but I see no reason why the opposition proceeding should not be decided by several decisions provided that each of them can be said in a real sense to decide 'the case' as presently constituted so far as that case is at the time susceptible of present decision." (at p349)

24. On four occasions Lloyd-Jacob J. has held that decisions styled "interim decisions" upholding objections made in a notice of opposition made in opposition proceedings under s. 14 of the Patents Act 1949 (U.K.) (which is not relevantly distinguishable from ss. 59 and 60 of our Act) are final decisions in the sense that they cannot be re-heard - see L. Oertling Ltd.'s Application (1959) RPC 148 ; Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) (1960) RPC 247 ; Klangfilm A.G.'s Application (1958) RPC 237 ; E. I. Du Ponte de Nemours Inc.'s Application (1962) RPC 228 . In Oertling (1959) RPC, at p 148 , Lloyd-Jacob J. said:

"An interim decision, no less than a final decision, conclusively determines the position of the ComptrollerGeneral in relation to such matters as the decision may specify. It is the means whereby the Comptroller notifies the parties of his decision in relation to so much of the dispute as is susceptible of present determination and his decision also as to the manner in which the remaining matters in dispute may be dealt with. If, in relation to any matter so decided, a party is not satisfied with the Comptroller-General's ruling, his dissatisfiaction cannot become effective in expression unless and until the ruling is reversed or modified on appeal." (at p350)

25. Mobile relied on cases such as In the Matter of Robertson's Application (1929) 47 RPC 215 and In re Davidson's Patents (1921) 1 Ch 69 which indicate that under provisions such as s. 60 (5) an appeal would lie from an interlocutory decision or a decision which does not finally dispose of the application. Assuming this to be so, it does not throw light on the question now under consideration. (at p350)

26. In the result I would make the order nisi for prohibition absolute. (at p350)

MURPHY J. I agree with Mason and Wilson JJ. Prohibition should issue. (at p350)

AICKIN J. I have had the advantage of reading the reasons for judgment prepared by my brother Mason and those prepared by my brother Wilson. I agree with their reasons and their conclusion and there is nothing I can usefully add. (at p350)

WILSON J. The prosecutor is the opponent to Australian Patent Application No. 451,718 made by the respondent Mobile Drilling Co. Inc. ("Mobile Drilling"). Following the filing of a notice of opposition on 17 February 1975 a hearing was conducted by Mr. Kildea, the then Acting Deputy Commissioner of Patents, on 28 March 1977. On 3 August 1977, Mr. Kildea issued to the parties a document styled "Interim Decision of the Acting Deputy Commissioner of Patents". The decision was to the effect that one of the claims failed for obviousness. In accordance with usual Patent Office practice Mr. Kildea indicated that if the claim and specification was amended in certain respects which he enumerated, the Patent Office would be likely to give favourable consideration to a grant in the form as amended. Thereafter the respondent lodged the suggested amendments with the Patent Office. Again the prosecutor opposed the grant of a patent. A hearing of the opposition was conducted by Mr. J. L. Roveta, Principal Supervising Examiner, Hearing Section, of the Patents Office on 17 October 1979. Before Mr. Roveta's decision was published, the patent attorneys for Mobile Drilling wrote to the Commissioner of Patents on 13 March 1980 seeking a reconsideration of the original application without the amendments. A reason for seeking a re-hearing of the original claim appears to have been the fact that Mr. Kildea was no longer with the Patents Office and would not be the officer responsible for considering the s. 77 amendment application. The following extract from the letter of the patent attorneys, however, makes it clear that it was the merits of Mr. Kildea's interim decision which it was sought to challenge.
"The gist of the original decision of Mr. Kildea's was to the effect that claim 1 was obvious but that the remainder of the claims of the application were not obvious. The applicant desires to have a reconsideration effected by the hearing officer now responsible for this case of that decision of Mr. Kildea's. The applicant is of the view that on the question of obviousness of claim 1 of the application there was a balance of evidence and that on the basis of decided cases . . . Mr. Kildea's decision that claim 1 was obvious is insupportable."
On 25 March 1980, Mr. Roveta wrote to the patent attorneys for Mobile Drilling enclosing his decision. That decision itself allowed the amended patent specification in respect of the claim. Mr. Roveta's letter further advised that with respect to the request made for a re-hearing,
". . . the Commissioner has been consulted and has agreed on the following procedure:
(i) The decision is to be issued as is usual;
(ii) The amendments will not be allowed for a period of 28 days following the date of issuance of the decision - this is the period in which the opponent could appeal;
(iii) You should withdraw the amendments officially immediately, before any appeal is lodged, and obviously before the end of the 28 day period to which I have referred above. You should send a copy of your notice of withdrawal to the opponents;
(iv) Upon receipt of your notice of withdrawal, the Commissioner will officially notify the opponents thereof, and direct that this application is to be reheard in view of the situation that the original hearing officer will not be available to finalise the section 59 opposition; (v) A suitable time and place for the rehearing will then be determined."
On 28 March 1980 by letter Mobile Drilling's attorneys formally withdrew the s. 77 amendments in respect of claim one and requested that the re-hearing of the original s. 59 opposition be set down as soon as possible. On 5 August 1980 the prosecutor advised the Commissioner of Patents of its objection to the proposed rehearing. (at p352)

2. Before considering the prosecutor's submissions it is convenient to set out the relevant provisions of the Patents Act 1952 as amended.
"6. In this Act, unless contrary intention appears -
. . .
'the Commissioner' means the Commissioner of Patents or the Deputy Commissioner of Patents holding office under this Act and includes an Assistant Commissioner of Patents, or a Supervising Examiner of Patents, exercising powers or functions delegated to him under this Act;
10. (1) There shall be a Commissioner of Patents, who shall, under the Attorney-General, have the chief control of the Patent Office.
(2) There shall be a Deputy Commissioner of Patents, who shall, subject to the control of the Commissioner of Patents, have all the powers and functions of the Commissioner of Patents under this Act, other than the powers of the Commissioner under the next succeeding section.
(3) Where, under this Act, the exercise of a power or function by the Commissioner, or the operation of a provision of this Act, is dependent upon the opinion, belief or state of mind of the Commissioner in relation to a matter, that power or function may be exercised by the Deputy Commissioner of Patents, or that provision may operate, as the case may be, upon the opinion, belief or state of mind of the Deputy Commissioner of Patents in relation to that matter. (4) There shall be one or more Assistant Commissioners of Patents.
(5) There shall be so many Supervising Examiners of Patents and Examiners of Patents as are necessary.
(6) The persons holding office as Commissioner of Patents and Examiners of Patents (including Supervising Examiners of Patents) at the commencement of this Act shall continue to hold those offices respectively.
11. (1) The Commissioner of Patents may, in relation to a particular matter or class of matters, by writing under his hand, delegate all or any of his powers or functions under this Act (except this power of delegation) to an Assistant Commissioner of Patents, or to a Supervising Examiner of Patents, so that the delegated powers and functions may be exercised by the delegate with respect to the matter or class of matters specified in the instrument of delegation.
(2) A delegation under this section is revocable at will and no delegation prevents the exercise of the power or function by the Commissioner of Patents or by the Deputy Commissioner of Patents.
59. (1) The Attorney-General or a person interested may, at any time within three months after the date of the advertisement of the acceptance of an application and complete specification, or within such further period, not exceeding three months, as the Commissioner, on an application made to him within the first-mentioned period, allows, by notice in writing lodged at the Patents Office, oppose the grant of the patent on one or more of the following grounds, but on no other ground: - . . .
(g) that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim;
(h) that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in Australia; and
(i) that the complete specification does not comply with the requirements of section forty of this Act. . . .
(3) For the purposes of this section, no account shall be taken of any secret use.
(4) This section is subject to sections one hundred and fiftyeight and one hundred and fifty-nine of this Act.
60. (1) Where notice of opposition is given under the last preceding section, the opponent shall serve a copy of the notice on the applicant, and the Commissioner shall, after hearing the applicant and the opponent, if desirous of being heard, decide the case.
(2) In so deciding the case the Commissioner may take into account a ground of opposition specified in the last preceding section whether relied upon by the opponent or not.
(3) Where the Commissioner finds that the invention, so far as claimed in any claim of the complete specification, was obtained from the opponent, he may, on application made in accordance with the provisions of this Act, grant to the applicant a patent for the invention, so far as so claimed, and the claims of the complete specification of that patent shall have the same priority date as the priority date of the firstmentioned claim. . . .
(5) The applicant, and an opponent who, in the opinion of the Appeal Tribunal is entitled to be heard in opposition to the grant, may appeal to the Appeal Tribunal from a decision of the Commissioner under this section.
77. (1) An applicant or patentee may, by a request in writing lodged at the Patent Office, seek leave to amend his complete specification.
(2) The request shall specify the nature of, and the reasons for, the proposed amendment. . . .
(5) An appeal lies to the Appeal Tribunal from a decision of the Commissioner under the last preceding sub-section.
78. (1) An amendment under this Part is not allowable at any time, if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as lodged.
(2) An amendment under this Part is not allowable after the complete specification has become open to public inspection if, as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment.
(3) The last two preceding sub-sections do not apply in respect of an amendment for the purpose of correcting a clerical error or an obvious mistake.
. . ." (at p354)

3. Mr. Heydon, who appeared on behalf of the prosecutor, submitted that s. 60 (5) grants a right of appeal to either the applicant or opponent but that it did not contain any power for a re-hearing by the Commissioner himself. It was his submission that both in Australia and the United Kingdom the practice was for certain decisions of the Commissioner to be styled "interim decisions", meaning that they were "interim" in the sense that an opportunity would be given to amend. In all other respects they were final. They decided completely the issues so far as the rejection of part of an application or a specification was concerned. Mr. Heydon's second submission was that even if the decision of Mr. Kildea was "interim" in the sense that it was not a final decision which pre-empted a re-hearing of the matter, that nonetheless Mr. Roveta's letter of 25 March 1980 enclosing his decision allowing the amendment was a final decision from which no re-hearing could be allowed. (at p354)

4. On the other hand, Mr. Campbell, for Mobile Drilling, submitted that Mr. Kildea's decision was an "interim" decision in the sense that it had no stamp of finality about it and given the fact that it had been made by the Acting Deputy Commissioner of Patents it was quite within the powers of the Commissioner (see s. 10 (2)) to exert his control over the decision of the Acting Deputy Commissioner and order a re-hearing of the initial opposition. (at p354)

5. Mr. Heydon relied on a series of decisions of the Patents Appeal Tribunal in the United Kingdom, touching the status of an interim decision. In L. Oertling Ltd.'s Application (1959) RPC 148 there was a finding by the Superintending Examiner, expressed as an interim decision, that although opposition to a certain patent succeeded on the grounds of prior user and insufficient and unfair description, sealing of the patent on the application would nonetheless be considered if certain amendments were offered. The opponent appealed. Lloyd-Jacob J. said (1959) RPC, at pp 148-149 :
"In the course of the argument, it emerged that some practitioners feel doubt and uncertainty when deciding how best to proceed after an interim decision is given. This should not continue. An interim decision, no less than a final decision, conclusively determines the position of the Comptroller-General in relation to such matters as the decision may specify. It is the means whereby the Comptroller notifies the parties of his decision in relation to so much of the dispute as is susceptible of present determination and his decision also as to the manner in which the remaining matters in dispute may be dealt with. If, in relation to any matter so decided, a party is not satisfied with the Comptroller-General's ruling, his dissatisfaction cannot become effective in expression unless and until the ruling is reversed or modified on appeal. Such party must therefore enter notice of appeal in due ime if he desires to question the propriety of a ruling. The decision may contain a number of rulings, and the objector may desire to adopt some and repudiate others or possibly repudiate only one." See also Klangfilm A.G.'s Application (1958) RPC 237, at p 245 . (at p355)

6. In Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) (1960) RPC 247 , Lloyd-Jacob J. returned to the subject. He referred to some earlier cases, and continued (1960) RPC, at p 253 :
"In each specific attention had been directed to what I imagine is thoroughly well known to all practitioners in this branch of the law, that a decision issued by an officer of the Comptroller-General, whatever the heading of it, is what it expresses itself to be, namely, a decision, and that, to the extent that any findings are therein set out, those represent the view of the Comptroller-General upon which both parties to the proceedings must thereafter proceed."
See also E. I. Du Pont de Nemours Inc.'s Application (1962) RPC 228 . (at p355)

7. The position in England as expounded by Lloyd-Jacob J. in this series of cases is that, although a negative decision may be capable of salvation by amendment, that decision is final with respect to the issues which it determines. If a party wishes to challenge the merits of an interim decision he must do so by appeal. If he wishes to abide by the interim decision and nonetheless save the specification by complying with the amendments suggested in the interim decision then he must proceed to draft amendments which are consistent with the decision and submit the same. Having filed such amendments a decision will thereafter follow which itself is capable of appeal. But on such an appeal it will be too late to challenge the matters canvassed and decided in the interim decision. (at p356)

8. In Broken Hill Proprietary Co. Ltd. v. American Can Co. (1980) VR 143 Fullagar J. in the Supreme Court of Victoria had occasion to consider the specific question whether an appeal under s. 60 (5) of the Act lay from an interim decision. In the course of his judgment his Honour said (1980) VR, at p 147 :
"It is in my opinion quite clear that the case which the Commissioner is bound by statute ultimately to decide is the opposition proceeding, but I see no reason why the opposition proceeding should not be decided by several decisions provided that each of them can be said in a real sense to decide 'the case' as presently constituted so far as that case is at the time susceptible of present decision.
If the Commissioner decides so much of the opposition proceeding as is susceptible of decision at the time, and at the same time decides what things may be done in the future conduct of the opposition proceedings, I am of opinion that this constitutes 'a decision of the Commissioner under this section' within the meaning of sub-s. (5) on any view, because I think it is indeed a deciding of 'the case' as it presently subsists as a matter or proceeding capable of present resolution. It does in my view decide the case so far as the case is at that time fully constituted." (at p356)

9. Fullagar J. declined to confine s. 60 (5) to a "final" decision. He referred to the decision of Lloyd-Jacob J. in L. Oertling Ltd.'s Application (1959) RPC 148 , saying (1980) VR, at p 149 :
"I respectfully agree with it and with the reasoning which I apprehend underlies it, and I do not think that any differences in language between s. 40 (sic) of the Patents Act 1949 (UK) on the one hand and s. 60 of the Patents Act 1952 (Cth) on the other hand, are differences of any significance for any present purposes." (at p356)

10. Mr. Campbell submitted that the English decisions could be distinguished because s. 14 of the Patents Act 1949 (U.K.) was different from s. 60 (5) of the Act. However, like Fullagar J., I do not think that there is any material distinction between the provisions. In my view it should be regarded as well established that an appeal lies from an interim decision. (at p356)

11. But the real question for determination in this case is whether, notwithstanding that there has been such a decision, there remains a power in the Commissioner to order that the application be re-heard. Mr. Campbell relied principally upon the power of the Commissioner pursuant to s. 10 (2) of the Act to control a Deputy Commissioner in the exercise of the powers and functions of the Commissioner. He referred to a number of authorities to support his contention that in ordering a re-hearing the Commissioner was doing no more than to exert his control under the Act. It was argued that in Sly v. United Development Corporation Pty. Ltd. (1962) 106 CLR 633 Menzies J. approved the re-hearing of an interim decision. Menzies J. said (1962) 106 CLR, at p 637 :
"Before me, as before the Deputy Commissioner, it was urged in opposition that even if the amendment fell within s. 71 and was not prohibited by s. 78 and was not otherwise open to objection on its merit, the application should nevertheless be refused because in an earlier decision between the parties a similar application had been refused and an appeal to this Court had been allowed to lapse. I agree with the Deputy Commissioner in thinking that the earlier decision - which related to a number of amendments - does not preclude the allowing of the amendment now sought and I need say no more about this aspect of the case." (at p357)

12. At first glance these words may appear to provide some ground of support for Mr. Campbell's proposition. However, they need to be seen in the context of the somewhat complicated history of the case. The original application for a patent had been opposed. By an interim decision the Deputy Commissioner gave the applicant leave to amend the specification under s. 71. A request to amend was subsequently lodged and once again a notice of opposition filed. At that point the Deputy Commissioner who had made the interim decision died and the Deputy Commissioner succeeding him directed that the opposition to grant be re-heard. The applicant proceeded with the application to amend before the opposition to grant was re-heard but the application was refused. An appeal to the High Court from that refusal was instituted but allowed to lapse. The re-hearing of the original opposition then took place and by an interim decision dated 23rd January 1959 the Deputy Commissioner gave the applicant sixty days in which to amend his application. Thereafter an amendment was submitted and once again opposed and on 23 August 1961 the Deputy Commissioner refused to permit the amendment, resulting in the appeal heard by Menzies J. The amendment which was the subject of the appeal had been one of a large group of amendments which had been refused in the earlier proceedings. In the result, Menzies J. embarked on the hearing of an appeal, and ultimately allowed the amendment following a consideration of its merits, notwithstanding that it had formed part of a large group of amendments which had been rejected in the earlier proceedings. The fact that there had been a re-hearing of the original application appears to have been accepted as a step in the history of the matter, with no attention being given to the question of the propriety of such a step. On this view of the case, it offers no support for the proposition advanced by the respondent. (at p358)

13. A re-hearing was also granted by the Commissioner following the death of the hearing officer in the case Ethyl Corp. v. California Research Corp. (1970) Official Journal of Patents, Trade Marks and Designs, vol. 40, p. 562. However, such a course was only adopted after the advice of each party had been sought as to how the matter was to proceed and after each had expressed no objection to the matter being determined in this way. (at p358)

14. In my opinion the Commissioner has no authority, in the exercise of his powers under s. 10 (2), to order a re-hearing of an opposition to the grant of a patent following an interim decision. The control referred to therein is of an administrative nature, touching the over-all direction of the work of the Office, and in particular the allocation of work. It does not contemplate a right to interfere in the exercise by a Deputy Commissioner of the power, pursuant to s. 60, to "decide the case". In my opinion, specific words would be required to found a power to order a re-hearing. It would be a large and important power, the exercise of which would necessarily have the effect of removing, otherwise than by appeal, an effective and operative decision. The exercise of such a power would also be inexpendient in denying finality and causing added complexity in the administration of the Act. I can understand that there may be some administrative inconvenience if a Deputy Commissioner who has conducted opposition proceedings and published an interim decision dies or is otherwise unavailable to handle any subsequent developments, but the inherent finality of the decision ensures that, subject to appeal, it provides a firm base on which another officer can proceed in the exercise of the powers and functions of the Commissioner. (at p358)

15. In the present case, it is clear from the letter seeking a re-hearing that Mobile Drilling wished to contest the merits of the interim decision. But by choosing to proceed with the amendments which were proposed in that decision instead of launching an appeal Mobile Drilling affirmed it. (at p359)

16. Reference was made by Mr. Campbell to the case of Hargans v. Commissioner of Patents (1932) 48 CLR 609 , but in that case the Court was dealing with very different circumstances and different statutory provisions, and the decision does not assist the respondent. (at p359)

17. Having reached this decision it is not necessary for me to consider the secondary argument advanced by the prosecutor to the effect that the delivery of reasons by Mr. Roveta on 25 March 1980 allowing the amendments sought by Mobile Drilling constituted a final decision, thereby providing a further obstacle to the grant of a re-hearing of the original application. (at p359)

18. I would make absolute the order nisi for prohibition. (at p359)

Orders

Order nisi for a writ of prohibition made absolute.

Order that the respondent Mobile Drilling Co. Inc. pay the prosecutor's costs of the application, including reserved costs.