Re Del-Mac Shoe Process Corporation's Patent

This matter came before Fullagar J. of the High Court of Australia concerning an application by Del-Mac Shoe Process Corporation for an extension of the term of its letters patent. The dispute arose because the application, made by originating summons under section 84(6) of the *Patents Act 1903-1946*, was arguably made prematurely, failing to comply with the advertisement requirements stipulated by regulation 134 of the Patents Regulations.

The primary legal issue before the Court was whether the advertisement requirements of regulation 134, which explicitly applied to applications by petition under section 84(1), also applied to applications made by originating summons under section 84(6), and if so, whether the Court had the power to dispense with strict compliance. A secondary issue concerned the scope and validity of regulation 151, which purports to grant the Commissioner of Patents power to dispense with regulatory requirements.

Fullagar J. determined that while advertisement in the prescribed manner is a condition precedent to an application for patent extension, this condition, as detailed in regulation 134, strictly applies only to applications by petition. Although a practice had developed requiring compliance with regulation 134 for originating summons applications under section 84(6), this was considered a matter of court practice, not a statutory condition precedent for such applications. Consequently, the Court possessed the power to relax this rule of practice in individual cases where special circumstances existed, as they did in this instance. The Court expressed grave doubts as to the validity and applicability of regulation 151 to proceedings before the Court, suggesting it likely applied only to proceedings before the Commissioner and might be *ultra vires* if applied to court proceedings.

The Court granted the applicant leave to proceed with its application notwithstanding the non-compliance with regulation 134. The two patent applications were consolidated, and an extension of the term of each patent for two years from 17 February 1950 was granted. The applicant was ordered to pay the Commissioner's costs.