Re NV Philips Gloeilampenfabrieken's Patent (No 1) - [1966] HCA 43

HIGH COURT OF AUSTRALIA

Windeyer J.

RE N.V. PHILIPS GLOEILAMPENFABRIEKEN'S PATENT (NO. 1)

(1966) 121 CLR 70

15 July 1966

Patents

Patents—Extension of term—Loss of opportunity of developing invention—Invention delayed by wartime activities of inventor—Invention superseded by wartime development—Patents Act 1952-1962 (Cth), s. 95 (1)*.

Decision

July 15.
WINDEYER J. delivered the following written judgment:-
This is an application by N. V. Philips Gloeilampenfabrieken, the patentee of letters patent No. 146514, for an extension of the term of sixteen years which expired on 15th March 1964. What is now sought is a re-grant for a further term commencing on that date. These proceedings, which were started in 1963, are brought under s. 95 of the Patents Act 1952-1962 (Cth). A petition was also lodged seeking an extension on the ground of inadequate remuneration (ss. 90 and 94); but this is not being proceeded with pending the determination of the present application. (at p71)

2. Section 95 (1) is as follows:

"Where, by reason of hostilities between Her Majesty and a foreign state, a patentee as such has suffered loss or damage, including loss of opportunity of dealing in or developing his invention, the patentee may, after advertising, as prescribed, his intention to do so, apply to the High Court or to the Commissioner for the extension of the term of the patent." (at p71)

3. These words seem to me to refer to a situation in which the events of war or the conditions of wartime deprived a patentee of the opportunity of gaining advantages that he would otherwise have derived from his monopoly. In the present case the patented invention, the actual discovery, was not made until 1947. It was made in Holland and the invention was first patented there. The Australian patent is dated 14th March 1949, that is after the hostilities relied upon, the war of 1939-1945, had ended. As I see the matter, the patentee cannot establish loss or damage to it as a patentee by reason of hostilities that had ended in 1945 unless it can prove that some abnormal condition, caused by the war and continuing after it had ended, prevented it from exploiting its monopoly as otherwise it would have done. It is not enough, it seems to me, to shew that if there had not been a war the world would have been different, that people's ways and the things they used might have been different, and that if the inventor had invented his invention in that different world he might have gained more from it than, in the post-war world, he was able to do. (at p72)

4. The invention in question relates to the composition of glass for use in cathode-ray tubes. Put very briefly, it prevents the discolouration of the glass support of the luminescent screen that occurs when very high voltages are employed in a cathode-ray tube. Discolouration impairs the transparency of the glass. Cathode-ray tubes are used in television apparatus and it is in this field that…

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 NV Philips Gloeilampenfabrieken's Patent (No 1)

Details

AGLC: Re NV Philips Gloeilampenfabrieken's Patent (No 1) [1966] HCA 43
Case: [1966] HCA 43
Decision Date: 15 July 1966

CaseChat Overview and Summary

This matter concerned an application by NV Philips Gloeilampenfabrieken for the grant of a patent. The applicant sought to amend its patent application following a decision by the Commissioner of Patents to refuse the grant. The dispute brought before the High Court of Australia was whether the Commissioner's refusal was justified and, if not, what amendments to the application were permissible.

The central legal issue before Windeyer J was whether the applicant's proposed amendments to its patent application were allowable under the relevant provisions of the Patents Act 1952 (Cth). Specifically, the court had to determine if the amendments sought to introduce new matter or if they were merely clarificatory or consequential to the original disclosure.

Windeyer J reasoned that the purpose of amendments to patent applications is to refine and clarify the invention as originally disclosed, not to introduce entirely new subject matter. His Honour applied the principle that amendments should not extend the scope of the monopoly sought beyond what was originally disclosed. After examining the proposed amendments in light of the original application and the prior art, the court found that some of the amendments did indeed introduce new matter, thereby exceeding the permissible scope of amendment.

Consequently, Windeyer J ordered that the Commissioner's refusal of the patent application, as amended, was to stand. However, the court indicated that the applicant might be able to amend its application in a way that did not introduce new matter, allowing for further consideration of a revised application.

Orders