Re Johnson's Patent

This case concerned an application by Laucks Laboratories Ltd. and I. F. Laucks Inc. to extend the term of an Australian patent granted to Otis Johnson for an adhesive preparation derived from soya beans. The patent had been in force for sixteen years, and the applicants sought an extension under section 84 of the *Patents Act 1903-1935*. The Commissioner of Patents was represented but did not oppose the petition, offering assistance to the court.

The court was required to determine whether the patentee had been inadequately remunerated by the patent, considering the nature and merits of the invention, the profits made, and all other circumstances of the case, as stipulated by section 84(4) and (5) of the Act. A key issue was the adequacy of the information provided regarding remuneration from corresponding foreign patents, particularly the significantly successful United States patent, and whether all reasonable efforts had been made to "make, use, exercise and vend" the invention within Australia.

The court reasoned that a patentee seeking an extension must demonstrate inadequate remuneration, which necessitates a comprehensive understanding of profits derived from both Australian and corresponding foreign patents. Despite the Australian patent yielding minimal profit, the applicants failed to provide any accounts or evidence of profits from the highly successful United States patent, excusing this absence by claiming it was impossible to apportion profits due to the use of multiple improvement patents. The court found this explanation insufficient, particularly as there was no general statement of accounts for the joint working of the US patents, and substantial profits were likely made. Furthermore, the court found that insufficient efforts had been made to exploit the patent in Australia throughout its term, with significant attempts to establish a market only commencing shortly before its expiry.

Consequently, the petition for an extension of the patent term was dismissed. The court held that the failure to provide full information on foreign remuneration and the lack of demonstrated reasonable efforts to work the invention in Australia were fatal to the application. The petitioners were ordered to pay the Commissioner's costs.