Scaniainventor v Commissioner of Patents

[1981] FCA 91

Re: AB SCANIAINVENTOR
And: THE COMMISSIONER OF PATENTS (1981) 54 FLR 367
No. VG 51 of 1981
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIAN DISTRICT REGISTRY
GENERAL DIVISION
Fox A.C.J.(1), Franki(1) and Northrop(1) JJ.

CATCHWORDS

Patents - application for convention patent - refusal of request for extension of time - whether s.160(2) applicable to extension of time specified in s.141(1).

Patents Act 1952 (Cth.) ss.141(1), 160(2)

Patents - Convention application - Whether Commissioner of Patents has power to extend time specified for making convention application - Patents Act 1952 (Cth), ss. 141 (1), 160 (2). Statutes - Interpretation - Patent - "Required" - Whether Commissioner of Patents has power to extend time specified for making convention application - Patents Act 1952 (Cth), ss. 141 (1), 160 (2).

HEADNOTE

The question of law whether under s. 160 (2) of the Patents Act 1952 the Commissioner of Patents has power to extend the time specified in s. 141 (1) of that Act for making a convention application for a patent arose out of a special case stated for the Full Court of the Federal Court of Australia.

Held, per curiam, that power to extend time under s. 160 (2) of the Patents Act 1952 does apply to an application under s. 141 (1) of that Act and that the Commissioner of Patents has a discretion to exercise the power.

A.R.C. Engineering Co. Pty. Ltd. v. Rendan Holdings Ltd. (1943), 68 CLR 221; R. v. Judges of the Australian Industrial Court; Ex parte C.L.M. Holdings Pty. Ltd. (1977), 136 CLR 235; C.I.L. Inc. v. Australian Paper Manufacturers Ltd., unreported (Supreme Court of Victoria, King J., 18th May, 1981), referred to.

HEARING

Melbourne, 1981, May 13-15; June 26. #DATE 26:6:1981

APPLICATION.

Special case stated for the Full Bench of the Federal Court of Australia arising from an application for an order to review a decision by a delegate of the Commissioner of Patents. The facts of the case and ss. 141 (1) and 160 (2) of the Patents Act 1952 are set out in full in the judgment which follows.

J. F. Lyons Q.C. and J. McL. Emmerson, for the applicant.

J. D. Phillips Q.C. and G. Griffith, for the respondent.

Cur. adv. vult.

Solicitors for the applicant: Whiting & Byrne.

Solicitor for the respondent: B. J. O'Donovan, Commonwealth Crown Solicitor.

E. F. FROHLICH

ORDER

Question (a) read as follows:

"Whether the provisions of Section 160(2) of the Patents Act 1952 are applicable to an extension of the time specified in Section 141(1) of the said Act for making a Convention application for a patent"

and Question (b) read as follows:

"Whether the Respondent has power under Section 160(2) of the Patents Act 1952 to extend the time specified in Section 141(1) of the said Act for making a Convention application for a patent"

are answered "Yes".

Order accordingly.

JUDGE1

We are hearing a special case stated by a Judge of this Court in an application under the Administrative Decisions (Judicial Review) Act 1977. There was a decision by a delegate of the Commissioner of Patents made on 6 March 1981 in which, to put it shortly, he refused a request by the applicant for an extension of time under s.160(2) of the Patents Act 1952 ("the Act") within which to make an application for a convention patent. The decision referred to an earlier published decision of the delegate and by reference to that and to the form in which the decision sought to be reviewed is expressed, it is apparent that the view taken was that power did not exist in s.160(2) to comply with the request. The refusal of the request for the extension of time was not made on discretionary grounds but because of the view taken that the sub-section in question did not apply to s.141(1) which, with other sections, deals with convention applications.

The application for an order to review was made under s.5(1) of the Administrative Decisions (Judicial Review) Act and it seems that the particular paragraphs relied upon were (f) and (j), namely that the decision involved an error of law or was otherwise contrary to law.

The questions of law raised by the special case seem to comprehend the whole of the substantial questions before the learned Judge, and are expressed as follows:
"(a) Whether the provisions of Section 160(2) of the Patents Act 1952 are applicable to an extension of the times specified in Part XVI of the said Act for making a Convention application for a patent.

(b) Whether the respondent has power under Section 160(2) of the Patents Act 1952 to extend the times specified in Part XVI of the said Act for making a Convention application for a patent."

Although question (a) goes to the construction of the sections we have mentioned, question (b) is framed in terms of power. There is no doubt, however, and the contrary is not contended, that if s.160(2) applies to s.141, the necessary power to order an extension exists in the Commissioner. Although both questions refer to Part XVI, which is headed "International Arrangements", and there are several provisions in that Part which refer to time limitations, or to other provisions of the Act which contain time limitations, it is common ground that we should only decide the questions concerning s.141(1), which is the sub-section to which the facts of the case are related. It is not necessary to recite these facts except possibly to say that the convention country in question is Sweden, and that the facts make applicable amendments to the Act made up to and including those of Act No. 19 of 1979. The question of law is raised squarely and is of general application.

For the applicant it is contended that s.160(2) is of general application and comprehends an application under s.141(1). It is convenient to set out this sub-section in full as it was before it was amended in 1979 to embrace petty patents.
"141. (1) Where an application for protection in respect of an invention (in this Part referred to as 'the basic application') has been made in a Convention country and a person, being a person referred to in section thirty-four of this Act, who -

(a) is the applicant in the Convention country;

(b) is the assignee of the applicant in the Convention country;

(c) is the legal representative of the applicant in the Convention country or of his assignee; or

(d) has the consent of the applicant in the Convention country or of a person who is his assignee or legal representative,

makes an application, or two or more of such persons make a joint application, for a patent within twelve months after the date on which the basic application was made, the priority date of a claim of the complete specification, being a claim fairly based on matter disclosed in the basic application, is the date of making of the basic application."
Section 160 is in the following terms:
"160. (1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner shall extend the time for doing the act or taking the step.

(2) Where, by reason of -

(a) an error or omission on the part of the person concerned or of his agent or attorney; or

(b) circumstances beyond the control of the person concerned,

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.

(3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired.

(4) Where an application is made under sub-section (2) of this section for an extension of time for more than 3 months, the Commissioner shall advertise the application in the Official Journal.

(5) A person may, as prescribed, oppose the granting of the application.

(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for the protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed.

(7) . . .

(8) This section does not apply in relation to the doing of an act or the taking of a step under section 47, section 47A, section 47B, section 47C or sub-section (1) of section 52B of this Act."

Section 160(2) refers to an "act or step in relation to an application for a patent. . . ". There seems no sufficient ground for excluding from these words a convention application. It is an application for a patent; the essential difference is that it is based on a prior application in an overseas convention country. The procedure for the application is different in a few respects only from that of an ordinary application; in particular it is necessary (in the case of an application for a standard patent) that a complete specification be filed in the first instance (s.143(1)(a)(ii)). Section 141(1) in fact refers in terms to a person who ". . . makes an application . . . for a standard patent or a petty patent. . . ".

Section 160(2) goes on to refer to an act or step "required to be done or taken within a certain time". It has been argued on behalf of the respondent that s.141(1) does not require an act or step to be done or taken within a certain time. It is pointed out, quite correctly, that the sub-section is cast in the language of factual assertion: "Where. . . and . . . makes an application . . . the priority date . . . is . . . ". It is of course the purpose of this sub-section to give an earlier priority to a local application based on the overseas application. There is not in terms any "requirement". The word "required" has a wide range of meanings, as reference to the dictionaries and the many decided cases attests. In the Patents Act, applicants are taking steps towards acquiring a privilege; opponents seek for their own advantage to debar them. Sometimes the Act uses the mandatory form "shall" in conjunction with a time limit; often the permissive "if" is used in relation to a step predicated as being exercised within a nominated time. Having in mind its place in the Act, its generality of expression, and the lack of rationale in treating it as applicable to some situations and not to others, the sub-section (as with sub-section (1) of s.160) must be regarded as comprehending cases, such as those instanced, and as being of general application. It should be mentioned that in not a few places a specified time is followed by words to the effect "or such further time as the Commissioner allows", thus giving a broad discretion not limited by the considerations mentioned in s.160(1) and (2). It is a different discretion, regarded as applicable in certain specified cases.

It seems to us that, in its context, "required" in s.160(2) must mean "requisite" or "needed", in order to secure an advantage or avoid a disadvantage.

It is submitted that, even so, the need and the advantage are to be related to proceedings during the progress of an application, where failure to observe the time limited will (saving the application of s.160(2)) be visited by a penalty such as lapse of the application. Failure to make an application under s.141(1) is not attended by any such consequence - all that results is the absence of a convention application. The argument reaches for a qualitative difference between an initial application to be made within a time, and later steps. We do not think this approach is sound. An ordinary application for a patent may be made or not; there is no time limit. A convention application is different, it is based on the earlier overseas application, and can only be made by a person who is the applicant there or derives title from him. Section 141(1) is concerned with enabling the overseas applicant to secure in Australia, if he acts during the relevant period, the priority date of his overseas application, if his later application in Australia is "fairly based on matter disclosed in the basic application". This aspect was explained by Latham C.J. in A.R.C. Engineering Co. Pty. Ltd. v. Rendan Holdings Ltd. (1943) 68 C.L.R. 221 at p.225. We note that senior counsel for the applicant relied upon a sentence on p.223 of that report as direct authority for the proposition for which he now contends, but the relevant legislation concerning extension of time (s.9 of the Patents, Trade Marks, Designs and Copyright (War Powers) Act 1939) then under consideration, was in materially different terms from the present, and in our opinion that case is not authority which assists in the determination of the real issue in this case. It is however at least persuasive on the question of whether the period within which convention priority may be obtained may be extended under domestic legislation. At p.223 Latham C.J., when considering the extension of time to lodge an application for the convention patent there under consideration, which had been granted under the Patents, Trade Marks, Designs and Copyright (War Powers) Act 1939, said:
"Indeed, it appears to be quite plain from the terms of the section that the extension of time was quite effective to substitute the extended period for the period of twelve months under s.121(1)."

The making of an application under s.141(1) is not the first relevant step. The first relevant step is the making of the application in a convention country. The next relevant step is the making of an application in Australia under s.143. The application in the convention country is similar to the making of an application in Australia under s.35 of the Act when no convention provisions are involved. Such an application for a standard patent may be accompanied by a provisional application. If it is accompanied by a provisional and not by a complete specification then s.41(1) requires that a complete specification be lodged within 12 months after the date of the application. If this is not done the application lapses pursuant to s.41(2). As at present advised we see no reason why s.160 should not apply to extend the time for lodging a complete specification pursuant to s.41(1).

The use of s.160 in relation to s.41 in such a case would have the effect of preserving the priority date obtained by the filing of the provisional specification in the same way as the use of s.160 in relation to s.141 in relation to a convention application would have the effect of preserving the priority date of the application in the convention country.

Notwithstanding the declaratory form of s.141(1) it clearly requires the taking of a step (albeit the first in Australia) within a specified time.

There is nothing in their history which suggests that s.160(2) should not apply to s.141(1). They were introduced together in 1952 in terms not materially different from those operative in 1979. With this in mind, it is relevant to observe that while certain provisions are expressly excluded from the operation of s.160(2) by sub-section (8) (including s.52B, which relates to convention applications), s.141(1) is not one of them. Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary. This view is supported by the provisions of s.160(8).

We are therefore of the opinion that the power to extend time under s.160(2) does apply to an application under s.141(1). The Commissioner has a discretion to exercise, but its exercise is not a matter before this Court. Doubtless a matter to be taken into account, with others, is whether by reason of any extension there will be prejudice, or may be prejudice, to any person by reason of the lengthened period.

Reference was made on both sides to the Treaty position, which plainly underlies the provisions made in Part XVI of the Act. We were handed copies of a number of proclamations and treaties, and were taken through their history. Senior counsel for the applicant referred to them because it was in reliance upon what is commonly called the Paris Convention that the delegate of the Commissioner reached his conclusion that the time of 12 months provided for in s.141(1) could not be extended. He had decided that as a matter of ordinary construction (unaffected by the Treaty) s.160(2) would apply to s.141. His concern was with what was taken to be a plain requirement in the Convention that the priority period be twelve months, and no more.

Senior counsel have not sought in this hearing to rely upon any Treaty to affect the construction of the material sections. Senior counsel for the respondent has mildly qualified this, by saying that the history or background may assist us as part of the context in which s.141 is to be understood. For ourselves, we do not think that we can derive any assistance from this material, but we will briefly refer to it.

We do not have any difficulty in concluding that the Treaty currently dealing with convention applications is the Paris Convention. We recognise of course that municipal law may not always be in step with the latest Treaty commitments of Australia. The original Convention was agreed in Paris in 1883. It has been revised under provisions made in the original Treaty (Article 14) in Brussels in 1900, in Washington in 1911, at the Hague in 1925, in London in 1934, in Lisbon in 1958, and in Stockholm in 1967. These treaties deal with industrial property, but with much more than convention applications for patents (The Queen v. Australian Industrial Court; Ex parte C.L.M. Holdings Pty. Ltd. (1977) 136 C.L.R. 235 at 242). Much of the Paris Convention is expressed in general or policy terms. The more directly relevant part is Article 4, clause A(1) of which is as follows:
"A. - (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the period hereinafter fixed."

The period stated (vide clause C(1)) is twelve months, but there is provision for an extension of a day or two if the last day is an official holiday or the office is closed.

It seems to us plain that what Article 4 provides for has to be understood in the light of the fact that each country has to provide by legislation for the circumstances dealt with. The Treaty arrangements have to be accommodated to the local scene. Moreover, it is open to the municipal law of a country to enact provisions which give effect to those of the treaty in its own way. If the municipal law does not accord with the treaty (and this can only be decided by an application of ordinary principles), the provisions of the municipal law prevail. The construction of the Treaty itself will be decided, as between nations, according to rules wider than those by which we construe our own legislation.

In the present case, we think it was proper and necessary that we became aware of the Treaty background to s.141(1). We have found it illuminating in a general way, but unhelpful in construing the sub-section. It is submitted by counsel for the applicant, that the twelve months period specified in Article 4 is "a minimum". If this means that it should be read, in effect, as twelve months or longer, we would disagree. We do, however, agree that there is no express provision against it being longer, and certainly no stipulation against the use of a discretionary power to extend, such as that in s.160(2). It is also the fact that the adoption by one country of a longer period than twelve months is more likely to operate in favour of, rather than against, people who first apply in convention countries. As we have already said, the exercise of the discretion should permit of due account being taken of the interests of anyone likely to be adversely affected by an extension sought.

Since this case was argued before us we have had the benefit of reading the judgment of King J. in C.I.L. Inc. v. Australian Paper Manufactures Ltd. delivered on 18 May 1981 in the Supreme Court of Victoria. We mention this so that it will not be thought that we were unaware of the conclusions which that learned Judge reached.

We would treat both questions as amended so that instead of the words "the times specified in Part XVI" there appeared the words "the time specified in s.141(1)" and we would answer the questions as amended:
(a) yes.
(b) yes.

We pass to consider the question of costs.

The applicant argued that the respondent should pay the applicant's costs of the stated case. This argument was based on the following contentions:

1. Until recently the Commissioner of Patents has applied s.160(2) to applications to extend the period of time referred to in s.141.

2. Senior counsel for the respondent did not rely to any significant extent upon reasons expressed in the decision under consideration.

3. The judgment of Aickin J. in Pioneer Kabushiki Kaisha v. Registrar of Trade Marks (1977) 137 C.L.R. 670 where the question of costs was considered and it was held to be relevant that the arguments advanced on behalf of the Registrar of Trade Marks, who is in a similar position to the Commissioner of Patents, were in the main outside the ambit of the reasons of the Registrar in the decision there under appeal.

4. This was a proper case for awarding costs against the respondent although it was conceded that something more than success by the applicant was necessary to justify the respondent being ordered to pay the applicant's costs.

The respondent did not present argument in relation to costs in great detail but submitted that:

1. The costs of the stated case should be left to the Judge who stated the case without guidance by the Full Court.

2. The applicant in making its request to the Commissioner was seeking an indulgence.

3. The case was in the nature of a test case.

4. The application was under the Administrative Decisions (Judicial Review) Act.

The awarding of costs is in the discretion of the Court under s.43 of the Federal Court of Australia Act 1976. We think that it is appropriate that we should decide the question of the costs of this stated case.

We have considered the judgment of Aickin J., (supra), and the cases to which reference was made in that judgment. We have taken into account a number of factors including:

1. The proceedings before us are under the Administrative Decisions (Judicial Review) Act.

2. The application has succeeded.

3. The applicant in making its request to the Commissioner was seeking an indulgence.

4. No substantial argument of the respondent rested on the reasons of the Commissioner.

We do not wish to be taken as laying down any general principle, but, in this case we consider that it is appropriate to leave each side to pay its or his own costs of the stated case.