Reid v Commissioner of Patents

Alexander Walker Reid applied for a patent in Australia under intercolonial arrangements, claiming priority based on an earlier application in New Zealand. The Commissioner of Patents refused to accept the application, stating that a copy of the provisional specification lodged in New Zealand had not been provided within the prescribed time, rendering the application irregular. Reid then sought to amend his application to convert it into an ordinary patent application, but this was also refused. Reid appealed to the High Court, seeking both an appeal against the refusal to amend and an order for mandamus to compel the Commissioner to hear his original application.

The legal issues before the High Court were whether the Commissioner's refusal to accept the application was a decision from which an appeal lay to the High Court, whether the subsequent refusal to allow an amendment was appealable, and whether a writ of mandamus should issue directing the Commissioner to proceed with the hearing of the patent application. The Court was also required to interpret the scope of "any other lawful ground of objection" under section 46 of the Patents Act 1903-1909 and the effect of non-compliance with Patent Regulations regarding the lodging of specifications.

Griffith C.J. and Gavan Duffy J. held that the Commissioner's refusal was not a decision appealable under sections 46 and 47 of the Act, as it related to an irregularity in the form of the application rather than an objection to the specification itself. They also found that the refusal to allow the amendment was not appealable. However, they determined that a writ of mandamus should issue, as the Commissioner had failed to consider the merits of the application and had instead declined to proceed based on preliminary, and in their view, irrelevant grounds. Isaacs J., dissenting, concluded that the Commissioner's refusal was a final decision under section 46, making it appealable, and that the applicant had not established grounds for mandamus.

The majority ordered that the order nisi for mandamus be made absolute, directing the Commissioner to proceed with the hearing of the application.