Re Robinson's Patent - [1918] HCA 35

25 CLR 116

IN RE ROBINSON'S PATENT. Patent-Extension for further term-Application-Practice-Inadequacy of remunera-

tion-Public interest-Merits of invention-Accounts of profits-Extension of time for application-Application made after expiry of patent-Provisions, MELBOURNE,

restrictions and conditions of extension-Patents Act 1903-1909 (No. 21 of 1903 June 25, 26,

No. 17 of 1909), sec. 84-Patents, Trade Marks and Designs Act 1914 (No. 15 of 27, 28; July 1, 8, 9.

1914), sec. 3-Patents, Trade Marks and Designs Act (No. 2) 1914 (No. 16 of 1914), sec. 3-Solicitor-General Act 1916 (No. 28 of 1916), sec. 3-Patents (Temporary) Regulations 1914 (Statutory Rules 1914, No. 174), reg. 8.

On an application for the extension of a patent under sec. 84 of the Patents Act 1903-1909, the rules and practice of the Privy Council as to the extension of patents should, whenever they are applicable and are not contrary to statutory provisions, be followed.

The granting of an extension of a patent is subject to the paramount con- sideration of the public interest.

On an application for an extension of a patent the applicant must prove the inadequacy of his remuneration during the term of the patent, and must disclose fully all circumstances within his own knowledge which are material

He must also satisfy the Court that the invention as it stands has in fact considerable practical merit for the public deserving of some substantial

In order that he may show that he has been 'inadequately remunerated by his patent" he must show that his profits have been disproportionately small in comparison with the merits of his invention in relation to the public.

The applicant should exhibit in the affidavit in support of his application a balance-sheet showing what he presents as being the receipts and expenditure year by year in respect of the patent.

He must further show that he has made reasonable endeavours to make his invention lucrative.

25 CLR 117

Among the circumstances which the Court will take into consideration are the personal ingenuity involved, and the efforts and expense which the inventor has incurred, in arriving at the invention.

By virtue of sec. 3 of the Patents, Trade Marks and Designs Act 1914, as ROBINSON'S amended by sec. 3 of the Patents, Trade Marks and Designs Act (No. 2) 1914, the time within which under sec. 84 of the Patents Act 1903-1909 an application for the extension of a patent may be made may, before the expiration of the patent, be extended to a time subsequent to such expiration.

Provisions, restrictions and conditions of an extension of a patent con- PETITION.

James Robinson, the holder of letters patent granted by the Commonwealth for "Improvements in and relating to shares for scarifiers, cultivators and like implements," applied by petition to the High Court for an order for an extension of his patent for a further term of fourteen years or for such other term as might seem fit. A caveat against the extension was entered by Friedrich Wilhelm Arthur Anders. The material facts are stated in 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.

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Details

AGLC: Re Robinson's Patent [1918] HCA 35
Case: [1918] HCA 35
Decision Date: 9 July 1918

CaseChat Overview and Summary

James Robinson, the holder of Commonwealth letters patent for "Improvements in and relating to shares for scarifiers, cultivators and like implements," applied to the High Court for an extension of his patent. A caveat against the extension was lodged by Friedrich Wilhelm Arthur Anders. The patent, granted in 1904, was due to expire in February 1918, and the application for extension was filed in April 1918.

The court was required to determine whether it had jurisdiction to hear the application, given that it was filed after the patent's expiry, and to consider the merits of the invention, the adequacy of the patentee's remuneration, and the public interest. The court also had to assess the applicant's compliance with the statutory requirements for disclosure and accounting.

The court applied principles established in English patent law, particularly those developed by the Privy Council, which are to be followed in Australia where applicable and not contrary to statutory provisions. A fundamental principle is that the public interest is paramount. The applicant bears the onus of proving inadequate remuneration, which requires demonstrating that profits were disproportionately small compared to the invention's merits. Candour and full disclosure of material circumstances are also mandatory. The court noted that while the invention had practical merit and was valuable to agriculture, the applicant's accounts were unsatisfactory, being incomplete and inaccurate. Despite these deficiencies, the court, in this instance, allowed some latitude due to the absence of a settled practice regarding account presentation, but warned that this would not be the case for future applicants.

The court found that the applicant had not adequately proven the inadequacy of his remuneration due to the unsatisfactory state of his accounts. While the invention possessed merit, the financial evidence presented did not sufficiently demonstrate a disproportionately small return relative to its public benefit. Consequently, the application for an extension of the patent was dismissed.

Orders