Re Philips Electrical Industries Pty Ltd - [1962] HCA 25

HIGH COURT OF AUSTRALIA

Dixon C.J., McTiernan, Menzies, Windeyer and Owen JJ.

Ex parte PHILIPS ELECTRICAL INDUSTRIES PTY. LTD.

(1962) 106 CLR 623

22 May 1962

Patents

Patents—Date of patent—Convention patents—Registration of licences—Whether date of patent granted under earlier legislation changed by later legislation—Patents Act 1952-1960 (Cth), s. 67 (1).

Decisions

May 22.
The following written judgments were delivered: -
DIXON C.J. Notwithstanding the elaborate and resourceful argument of counsel for the applicant in this matter I have been unable from beginning to end to see how s. 67 (1) could be understood as applying to patents granted and sealed before the Patents Act 1952-1960 came into force. It is evident on its terms that it deals with patents to be sealed, not with patents long since sealed. The case for the applicant must depend upon giving to s. 67 (1) an operation, which I think is quite impossible, that is to say an operation whereby a patent sealed before the Act came into existence must in the future be taken to have been sealed as of a date other than that which it in fact bears and as of which it was originally sealed. It is necessary to add only that sub-s. (3) of s. 5 continues the application of the Acts repealed to an application pending at the commencement of the Act of 1952 and is expressed to do so up to and including the sealing of the patent and only after such a patent is sealed does the Act of 1952 apply to it. This excludes the application of s. 67 (1) to a patent granted upon an application under the old Act pending when the new Act commenced. How then could it apply to a patent granted before that time? It appears to me that the case for the applicant cannot be supported. (at p627)

2. I have had the advantage of reading the judgment of Menzies J. and I agree in it. (at p627)

3. The application should be refused, the applicant paying the costs of the Commissioner. (at p627)

McTIERNAN J. In my opinion this application should be refused. (at p627)

2. The question raised really depends in my view upon the construction of s. 5 of the Patents Act 1952-1960. The strength of the applicant's argument would appear to be that sub-s. (2) of this section provides that the Act applies to and in relation to patents granted under the repealed Acts. The patents in question answer this description. Section 64 (1) of the Patents Act 1903-1950 provided that the term of a patent was sixteen years from "its date"; s. 66 provided for the sealing of a patent when it is determined that it ought to be granted; s. 69 provided that, subject to the provisions of the Act, every patent shall be dated and sealed as of the date of the application. The result of those provisions was when the Patents Act 1952-1960 came into force, the date of the…

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 Philips Electrical Industries Pty Ltd 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: [1962] HCA 25
Decision Date: 22 May 1962

CaseChat Overview and Summary

The case of *Re Philips Electrical Industries Pty Ltd* concerned a dispute brought before the High Court of Australia. The central issue revolved around the interpretation and application of certain provisions within the *Patents Act 1952* (Cth) concerning the extension of patent terms. The applicants sought to extend the term of their patents, and the Commissioner of Patents opposed this application.

The High Court was required to determine whether the applicants had satisfied the statutory requirements for an extension of their patents, specifically in relation to the adequacy of remuneration received during the original term of the patents. This involved considering whether the patentees had been adequately remunerated for their invention, taking into account the commercial exploitation of the patent and any associated losses or expenses.

The Court's reasoning focused on the principles established for assessing "adequate remuneration" under the *Patents Act*. It was held that the assessment was not merely a matter of accounting for profits, but rather a broader consideration of whether the patentee had received a reward commensurate with the value of the invention and the efforts and expenditure involved in its development and commercialisation. The Court emphasised that the purpose of an extension was to compensate for insufficient remuneration, not to provide an additional profit-making opportunity.

Ultimately, the High Court dismissed the application for extension, finding that the evidence presented did not demonstrate that the patentees had suffered a lack of adequate remuneration during the original term of the patents.

Orders