Re Northey Rotary Engines Ltd's Patent - [1950] HCA 26

81 CLR 332

IN RE NORTHEY ROTARY ENGINES LIMITED'S Patent-Extension of term-Petition-Rotary air or gas compressors-Modified

form--Disconformity with invention for which letters patent applied for in United Kingdom-Invention-Merits-Sufficiency of remunerationLoss due SYDNEY,

to hostilities-Exploitation of patented invention-Duty of patentee-Patents June 2. 7.

Act 1903-1946 (No. 21 of 1903-No. 38 of 1946), SS. 84, 121.

The Court will not grant an extension under S. 84 of the Patents Act 1903- 1946 of a patent issued on an application under S. 121 based on a foreign prior application where it is manifest that there is disconformity between the claims of the Australian patent and the basic foreign application.

To justify an extension of Letters Patent it must be shown that the inven- tion is one of more than ordinary merit or utility; that the patentee has been inadequately remunerated; that that inadequacy has not been due to his own default, and that he has made all proper efforts to exploit the inven- tion to his own profit.

In an application under S. 84 (6) of the Patents Act 1903-1946 the onus is upon the applicant to prove (i) loss, and (ii) that such loss was due to circum- stances arising from hostilities. PETITION.

A petition, based on merit and inadequacy of remuneration, was presented to the High Court by Northey Rotary Engines Ltd., Sturt Street, Townsville, Queensland, for an extension of the term of Letters Patent No. 19032/34, dated 25th August 1933, granted to Arthur John Northey, then of Parkstone, Dorset, England, whence he had proceeded from Australia in 1929. The letters patent were assigned by him, by deed dated 14th September 1936, to the petitioner, an Australian company. The invention, the subject of the letters patent, related to rotary air compressors or vacuum

81 CLR 333

pumps or liquid pumps of the type comprising a pair of synchronized rotors each having a blade-like member which intermeshed with a pocket in the other rotor and consisted in arranging the inlet and outlet ports of the working chamber of the compressor SO that they were controlled as to opening and closing by the rotation of the rotors.

Further relevant facts are set out in the judgment of Williams J. hereunder.

R. L. Taylor, for the applicant. G. B. Thomas, for the Commissioner of Patents.

Cur. adv. vult. The following written judgment was delivered by :-

WILLIAMS J. This is a petition by Northey Rotary Engines Ltd. under S. 84 of the Patents Act 1903-1946 to extend the term of Letters Patent 19032/34 for improvements in and relating to rotary air or gas compressors, vacuum or liquid pumps or the like. The inventor was Arthur John Northey, but he assigned all his right, title and interest in the Letters Patent to the petitioner on 14th Sep- tember 1936. Protection for the invention was first applied for in the United Kingdom on 25th August 1933, the application being provisional specification No. 23705 A D 1933, and the Australian Letters Patent, though not applied for until…

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 Re Northey Rotary Engines Ltd's Patent

Details

AGLC: Re Northey Rotary Engines Ltd's Patent [1950] HCA 26
Case: [1950] HCA 26
Decision Date: 7 July 1950

CaseChat Overview and Summary

The High Court considered a petition by Northey Rotary Engines Ltd. for an extension of the term of Letters Patent No. 19032/34, granted for improvements in rotary air or gas compressors. The patent, originally held by Arthur John Northey, had been assigned to the petitioner, an Australian company. The application for extension was based on the invention's merit, inadequacy of remuneration, and loss due to hostilities. The Commissioner of Patents opposed the application.

The court was required to determine whether an extension of the patent term was warranted under section 84 of the Patents Act 1903-1946. Specifically, the court had to consider whether there was disconformity between the Australian patent claims and the basic foreign application, whether the invention possessed more than ordinary merit or utility, whether the patentee had been inadequately remunerated, and whether such inadequacy was not due to the patentee's own default. Additionally, the court had to assess whether any loss suffered was demonstrably caused by hostilities, as required by section 84(6).

Williams J. found that the modified form of the compressor, which was the subject of exploitation, was not the same invention as that applied for in the United Kingdom, leading to a manifest disconformity and an insuperable objection to extending that part of the patent. Even if disconformity were not an issue, the court held that an extension would not be granted. While acknowledging the invention's merit and the patentee's inadequate remuneration, the court was not satisfied that this inadequacy was not due to the patentee's own fault, noting a lack of genuine effort to exploit the invention in Australia prior to 1948. Furthermore, the court found that the petitioner had failed to prove loss or damage directly attributable to hostilities, deeming the claim under section 84(6) to be unsubstantiated.

Consequently, the application for an extension of the patent term was refused. The petitioner was ordered to pay the costs of the Commissioner of Patents.

Orders