Re Dunlop's Patent - [1922] HCA 43

IN RE DUNLOP'S PATENT. Patent-Extension of term-Extension of period for making application-Group

for extending term-Patents Act 1903-1921 (No. 21 of 1903-No. 24 of 1921),

Sec. 84 of the Patents Act 1903-1921 provides that "(1) A patentee

present a petition to the High Court his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent.

(7) Notwithstanding anything contained in this section the Court may, in its discretion, either before or after the expiration of the term of a patent extend the period within which proceedings may be taken for the extension of the term of the patent," &.

A petition to extend the period within which proceedings might be taken for the extension of the term of a patent was not presented until three years after the patent had expired and eight months after the Patents Act 1921 (by sec. 4 of which sub-sec. 7 of sec. 84 was enacted) was passed, and the only ground for extending the period was that the patentee overlooked the fact that it was necessary to apply for an extension six months before the date of the expiration of the patent.

Held, that the period should not be extended. Where the Court is not satisfied that the invention has conferred upon the public any special or peculiar advantage or is of that high degree of merit which, if everything else were satisfactory, would entitle the patentee to an extension of the term of the patent, the Court will not extend such term.

In re Saxby's Patent, (1870) L.R. 3 P.C., 292, followed.

PETITIONS under the Patents Act 1903-1921.

Two petitions were presented to the High Court by George Henry Dunlop, one praying that the period within which pro- ceedings might be taken for the extension of the terms of the letters

31 CLR 580

patent No. 3470 of 1905 might be extended, and the other praying

that the letters patent should be extended for a further period of ten years or such other term as the Court might think fit.

The other material facts are stated hereunder in the judgment of Starke J., before whom the petitions were heard.

Stanley Lewis, for the petitioner. Herring, for the Commissioner of Patents.

Cur. adv. vult.

STARKE J. delivered the following written judgment -George Henry Dunlop filed two petitions in this Court, one praying that the period within which proceedings might be taken for the exten- sion of the terms of the letters patent No. 3470 of 1905 be extended, the other praying that the letters patent be extended for a further period of ten years or such other term as the Court might think fit. An order in Chambers was made on 28th August 1922 giving leave to present a petition and take all proceedings for the extension of the letters patent, without prejudice to the objection that the pro- ceedings were out of…

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.

Keep reading for free

Create a free CaseChat account to read Re Dunlop's Patent and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1922] HCA 43
Decision Date: 23 October 1922

CaseChat Overview and Summary

George Henry Dunlop presented two petitions to the High Court. The first sought an extension of the period within which proceedings could be taken for the extension of letters patent No. 3470 of 1905. The second petition prayed for an extension of the term of these letters patent. The Commissioner of Patents was the respondent.

The court was required to determine whether to exercise its discretion to extend the time for presenting a petition for patent extension, particularly when the patent had expired and the application was made significantly out of time. Furthermore, the court had to consider the merits of the patent itself to decide whether an extension of the patent term was warranted.

Starke J. held that the period for taking proceedings should not be extended. While the Patents Act 1921 granted the court discretion to extend this period, even after a patent's expiry, the circumstances here did not justify its exercise. The application was made three years after the patent expired and eight months after the relevant amendment to the Act. The sole reason provided was that the patentee overlooked the requirement to apply for an extension at least six months before expiry. Starke J. found this to be a lack of ordinary care and diligence. Moreover, even if the procedural issue were overcome, the court would not extend the patent term because the invention had not conferred any special or peculiar advantage upon the public, nor was it of a high degree of merit, as evidenced by its minimal use over seventeen years.

Consequently, both petitions were dismissed, and George Henry Dunlop was ordered to pay the costs of the Commissioner of Patents.

Orders