Re Duckham's Patent

This matter concerned an application by originating summons for the extension of the term of a patent under section 84(6) of the *Patents Act 1903-1950*. The applicant sought to establish a uniform practice for such applications, as different justices had previously adopted varying approaches regarding the timing and extent of required advertisements. The Commissioner of Patents was represented in the proceedings.

The central legal issue before the court was to determine the appropriate procedural practice for applications for patent term extensions made by originating summons, specifically concerning the requirements for public advertisement of such applications. This involved considering the interplay between section 84 of the *Patents Act* and Regulation 134 of the Patent Regulations, which prescribed advertising requirements for petitions but not explicitly for originating summonses.

Dixon J., after consulting with other justices, established a uniform practice for applications made by originating summons under section 84(6). The court held that applications should generally be advertised after the issue of the originating summons, though prior advertisements by the patentee could be taken into account. Following the issue of the summons, a summons for directions should be taken out to obtain directions on matters including advertising, the time of hearing, and the nature of evidence. Typically, two advertisements in the Official Journal and one in a newspaper in each State capital would be ordered, though this could be varied based on the circumstances. The court also clarified that for petitions under section 84(1), a summons for directions should similarly be issued, with an advertisement in the Official Journal generally required.

In the specific case, the court ordered that the application be advertised twice in the Official Journal and once in a daily newspaper circulating in Melbourne and Sydney, with the advertisements to appear before 15th January 1952. These advertisements were to state that the application would be heard at the February 1952 sittings in Melbourne and that any person wishing to oppose the application must lodge a caveat by 14th February 1952.