R v Westralian Powell Wood Process Limited - [1919] HCA 76

27 CLR 236

THE CROWN

RESPONDENT,

THE WESTRALIAN POWELL WOOD PRO-

CESS LIMITED Patent-Application of Commonwealth Act to State patents-Licence to use patented

invention-Right acquired before commencement of Commonwealth Act-Licence granted after commencement" In the Commonwealth"-Right of licensee to MELBOURNE,

determine contract-Time for giving notice of intention to determine-Patents Oct. 16, 17,

Act 1903-1909 (No. 21 of 1903-No. 17 of 1909), secs. 4, 6, 87B (2). 24, 28, 29.

Practice-Costs-Payment into Court with denial of liability-Costs of issues on

which parties successful.

By sec. 4 of the Patents Act 1903-1909 the term patent " is defined to mean, except where otherwise clearly intended, "letters patent for an inven- tion granted in the Commonwealth."

27 CLR 237

Held, that the words "in the Commonwealth" in that definition are H. C. OF geographical, and, therefore, that the definition includes patents granted under a State Act as well as those granted under the Commonwealth Act.

Sec. 6 of the Act provides (inter alia) that the Act shall not affect any right acquired before the commencement of the Act. Sec. 87B provides (2) Any contract relating to the lease of or licence to use or work any patented article or patented process, whether made before or after the commencement of this section, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything in the same or in any other contract to the contrary, be determined by either party on giving three months' notice in writing to the other party."

The petitioner, who was the registered proprietor of a patent granted under the law of Western Australia before the Patents Act 1903 came into operation, by a contract made after that event had happened granted to the respondent (the Government of Western Australia) a licence to use the patented process, and the respondent agreed to treat yearly a minimum quantity of timber by that process until July 1923 and to pay a specified royalty.

Held, that the right of the petitioner against the respondent to have the contract performed was a right under the contract, and was not a right acquired before the commencement of the Act within the meaning of sec. 6.

Held, therefore, that the respondent might determine the contract in accordance with the terms of sec. 87B (2).

Held, also, that the notice specified in sec. 87B (2) must be given after the expiration of the patent or patents therein referred to.

The petitioner having brought a petition to recover damages for breach of the contract by non-payment of royalties payable thereunder, the respondent by its defence contended that the contract was determined on one or other of two dates and paid into Court a sum of money in respect of royalties up to the earlier of the two dates and, with a denial of liability, another sum in respect of royalties for…

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.

Continue reading R v Westralian Powell Wood Process Limited

Details

AGLC: R v Westralian Powell Wood Process Limited [1919] HCA 76
Case: [1919] HCA 76
Decision Date: 29 October 1919

CaseChat Overview and Summary

The High Court of Australia considered an appeal from the Supreme Court of Western Australia concerning the interpretation of the Commonwealth Patents Act 1903-1909. The dispute arose from a contract where the respondent company granted the Government of Western Australia a licence to use a timber treatment process patented under Western Australian law. The Government sought to terminate this licence agreement, relying on section 87B(2) of the Commonwealth Act, while the company argued that the contract was not subject to this provision due to rights acquired before the Act's commencement.

The central legal issues before the High Court were whether the definition of "patent" in section 4 of the Commonwealth Patents Act 1903-1909 included patents granted under State legislation, and if so, whether section 87B(2) of the Act permitted the termination of a licence agreement for a State patent, notwithstanding section 6 which preserved rights acquired before the Act's commencement. The Court also had to determine the timing of the notice required for termination under section 87B(2) and address the allocation of costs in light of the parties' partial success on different issues.

The High Court reasoned that the phrase "in the Commonwealth" in the definition of "patent" in section 4 was geographical, thus encompassing State patents. It held that the contractual right to have the licence agreement performed was not a "right acquired before the commencement of the Act" within the meaning of section 6, as the contract itself was made after the Act commenced. Consequently, section 87B(2) was applicable, allowing the respondent Government to determine the contract, provided the notice was given after the patent expired. The Court allowed the appeal, reversing the decision of the Supreme Court of Western Australia, and varied the orders regarding the account of royalties and the allocation of costs, with each party bearing their own costs of the appeal.

Orders