Stack v Commissioner of Patents

[1999] FCA 1171

FEDERAL COURT OF AUSTRALIA

Stack v Commissioner of Patents [1999] FCA 1171

INTELLECTUAL PROPERTY – patents – Divisional Application for Standard Patent – renewal – continuation fees – lapse of application – extension application – opposition – request for summary dismissal of opposition by Commissioner – summary dismissal refused – judicial review of refusal to dismiss summary opposition – appeal against decision – whether appeal de novo available under s 154 Patents Act – whether question of lapse of patent can be put in issue in opposition proceedings and in judicial review thereof.

Patents Act 1990 ss 39, 142, 154, 160, 210,, 223, 224, 227
Administrative Decisions (Judicial Review) Act 1977 (Cth)

Patents Regulations regs 6.3, 13.3, 5.3, 5.5, 22.11

General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 followed
Kimberly-Clark Ltd v Commissioner of Patents (1988) 84 ALR 685 cited
Harris v Caladine (1990-91) 172 CLR 84 referred

GEORGE STACK and G.S. TECHNOLOGY PTY LTD v COMMISSIONER OF PATENTS, GSA INDUSTRIES (AUST) PTY LTD, THE ATTORNEY GENERAL FOR THE COMMONWEALTH

Q 46 OF 1999

FRENCH, WHITLAM AND LINDGREN JJ
24 AUGUST 1999
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 46 OF 1999

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT

BETWEEN:

GEORGE STACK AND G.S. TECHNOLOGY PTY LTD
Appellants

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY GENERAL FOR THE COMMONWEALTH
Intervener

JUDGES:

French, Whitlam and Lindgren JJ

DATE OF ORDER:

24 August 1999

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

1.The appeal is dismissed.

2.The Appellants are to pay the Second Respondent’s costs of the appeal.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 46 OF 1999

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT

BETWEEN:

GEORGE STACK AND G.S. TECHNOLOGY PTY LTD
Appellants

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY GENERAL FOR THE COMMONWEALTH
Intervener

JUDGES:

French, Whitlam and Lindgren JJ

DATE:

24 August 1999

PLACE:

BRISBANE

THE COURT:

REASONS FOR JUDGMENT

Factual Background

1. G.S. Technology Pty Ltd (GST) of which George Stack is a Director and Chief Executive Officer, manufactures and sells water meter assemblies.  On 30 August 1991 Mr Stack filed  Patent Application 85236/91 for an invention entitled “Water Meter Assemblies”.  That application derived priority from two provisional applications number PK2036 filed on 30 August 1990 and number PK 5286 filed on 31 March 1991.  GST is evidently an assignee of Mr Stack’s interest in the patent application.

2. On 21 September 1995 Application 32815/95, which is the subject of these proceedings, was filed as a Divisional Application for a Standard Patent based on Application 85236/91. On 10 March 1998 the Patent Office wrote to the appellant’s solicitor, Mr Abaza, informing him that, pursuant to s 227(1) of the Patents Act 1990 and regulations 22.2 and 13.3 of the Patents Regulations, the sixth year continuation fee for the application had been payable by 30 August 1997 or within six months thereafter, ie by 2 March 1998. There was no record at the Patent Office of the continuation fee having been paid. The letter advised that the application had therefore lapsed on 30 August 1997 pursuant to s 142(2)(d) and that the fact of its lapsing would be advertised in the Australian Official Journal of Patents of 9 April 1998. The letter went on:

   “It MAY be possible to reinstate the lapsed application under the provisions of section 223(2)(a) or section 223(2)(b) if relevant conditions exist.”

3. The letter from the Patent Office referred to a letter dated 28 February 1998 in relation to the application which had been received from Mr Abaza on 3 March 1998.  That letter was in response to the first examination of the application on 18 October 1996.  According to Mr Abaza it had not been possible for GST or himself to reply any earlier to the requisitions raised on that examination because of pending proceedings in the Federal Court involving the related Petty Patent 645740 which had been granted on 20 January 1994.

4. On 13 March 1998 Mr Abaza, on behalf of GST, lodged an application for an extension of time for paying the requisite continuation fee.  The grounds of the application were stated on the form lodged with the Patent Office to be:

   “An error or omission on the part of the applicant’s agent as to the date of payment required as set out in the attached Declaration.”

   In the attached declaration Mr Abaza described himself as general Counsel to GST in respect of its applications for patents, including Patent Application No 32815/95, in conjunction with Messrs Pizzey & Company, Patent Attorneys of Brisbane.  He went on to say that he and GST had acted in accordance with written advice received from Pizzey & Company on 4 October 1995 to the effect that annual renewals were payable on the third anniversary of the filing date.

5. The letter from Pizzey & Company, which was exhibited to an affidavit sworn by Mr Stack and tendered before the learned primary judge, said:

   “Annual renewals are payable in respect of Australian Patents and applications, from the third anniversary of the filing date.”

   The letter bore an endorsement “filing date 21 September 1995”.  Notwithstanding his reliance upon that advice in the declaration in support of the application for extension, Mr Abaza went on to say in the same declaration:

   “In my belief were it not for the protracted proceedings concerning Patent 645740 the error or omission of the third anniversary continuation fee would not have been misinterpreted and would have been attended to by 2 March 1998.”

6. Following the receipt of the letter from the Patent Office Mr Abaza lodged $180 which he described as the “Schedule 7 item 8(a) fee for the third anniversary in the sum of $115 plus an extension fee one month $65…”.  On 27 March 1998 the Patent Office wrote to Mr Abaza advising that the delegate of the Commissioner was not in a position to grant the extension of time sought because the application was not for the correct period.  The extension applied for was from 2 March 1998 to 13 March 1998.  The extension required under the Act was for the period 30 August 1997 to 13 March 1998.  The original due date for the payment of the continuation fee was 30 August 1997 (six years from the time of the filing of the patent and complete specification in respect of which the Divisional Application had been made).  It was pointed out that the subsequent “grace period” of six months after the due date was itself not extendable under s 223 of the Act.  Reference was made to par 22.11(3)(b) of the Regulations.  Mr Abaza was advised that he would need to file a new application seeking an extension from 30 August 1997 to 13 March 1998 before the extension could be advertised for possible opposition.

7. A further application for extension of time dated 13 March was lodged on 2 April.  The circumstances in which and the grounds upon which the application were made were set out in the following terms:

   “As set out in Application dated 13/3/98 & Affidavit accompanying & letter dated 27/3/98 (copy attached) & telephone discussion 2/April/98.”

   The application for extension was advertised and attracted a notice of opposition from GSA Industries (Aust) Pty Ltd (GSA).  That notice of opposition was filed on 21 May 1998.

8. A statement of grounds and particulars of the notice of opposition was filed on 19 August 1998.  The statement contained six grounds in the following terms:

   “1.The applicant, G S Technology Pty Ltd, (GST), has not made a full and frank disclosure of all the surrounding circumstances which lead (sic) to the alleged error or omission, including a disclosure of the chain of causation.

   2.GST and/or its agent Andrew Peter Abaza (APA), failed to take reasonable steps to ensure that maintenance fee requirements concerning patent application 32815/95 were met in a timely fashion, and the reason for that failure has not been explained.

   3.GST and/or its agent APA failed to access or make use of available information which correctly indicated the maintenance fee requirements for patent application 32815/95, and the reason for that failure has not been explained.

   4.GST and/or its agent APA was in possession of correct information concerning the maintenance fee requirements for patent application 32815/95, but failed to act on or make use of that information, and the reason for that failure has not been explained.

   5.GST and/or its agent APA was aware of a source of information concerning maintenance fee requirements for patent application 32815/95, but deliberately chose not to access that source of information.

   6.GST and/or its agent APA made a deliberate decision to give priority attention to matters other than the matter of ensuring timely payment of the first continuation fee in respect of patent application 32815/95.”

   It is not necessary for present purposes to set out the particulars advanced against each ground.  Suffice it to say there was a number of factual issues raised in those particulars.

9. On 1 September 1998 GST filed an application for dismissal of the opposition.  The reason for making the request as set out in the formal application was as follows:

   “Such of the grounds as have been filed by the opponent support the application made under s 223.  I.E. an error or omission by G S Technology PTY LTD or its agent Mr Andrew Peter Abaza as to the time for payment of continuation fees.”

   The hearing of the dismissal application was set down for 7 October 1998.  In submissions on behalf of GST lodged with the Patent Office by Mr Abaza and dated 6 October 1998 it was said, inter alia:

   “3.It is not contested by GSA that there was an error or omission in the payment of continuation fees.  In that circumstance there can be no advantage in protracting the matter by way of an extensive hearing into assertions made by GSA.

   4.The dismissal process expedites the determination of the opposition as a whole which GSA has not supported otherwise than by repeated statements of “an error or omission by the Applicant and its solicitor”: s 223(2)(a).”

   It was also asserted that the notice of opposition was “invalid on its face”.

10. On 13 October 1998 Mr Philip Spann, a delegate of the Commissioner of Patents, found that GST had not made out a case for dismissal of the opposition and awarded costs against GST.  This was apparently the first case to the delegate’s knowledge of an application to dismiss an opposition made under s 223.  He adopted as principles applicable to the dismissal of an opposition those applicable to the summary dismissal of court proceedings set out in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125. It was his view that an opposition or ground of opposition could be dismissed only if it were clear that it could not possibly succeed. The onus fell on GST to show that the opposition was clearly untenable. On the face of GST’s submissions there were only two issues possibly relevant to the exercise of the discretion to dismiss, namely:

    1.        That the notice of opposition was invalid on its face; and

    2.That the grounds provided by GSA supported the contention that there had been an error or omission on the part of GST or its agent as specified in s 223.

    As to the first issue he observed that the notice conformed with standard Patent Office form P/00/047.  He concluded it was prima facie valid and sufficient for its purpose.  GST had not provided anything to suggest that it was clearly deficient or insufficient for its purpose.

11. As to the second issue, the delegate said that, while it was not appropriate for him to make any detailed assessment of the opponent’s case or its potential for success, he agreed that the Grounds and Particulars provided by GSA prima facie related to issues that were relevant to the exercise of the Commissioner’s discretion.  They appeared to relate generally to whether there had been “a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations upon which grant or refusal of an extension of time will depend”.  These considerations were drawn from the judgment of the Federal Court in Kimberly-Clark Ltd v Commissioner of Patents and Another (1988) 84 ALR 685 at 699. It had not been suggested that any one or more of the grounds was not sufficiently particularised. That being the case, the delegate was not in a position to say that the opposition was clearly untenable for that or any other reason that might be inferred from GST’s submissions.

    Statutory Framework

12. The Divisional Application 32815/95 was lodged under s 39 of Patents Act 1990 which provides:

    “39(1)  Where a complete patent application is made, but has not lapsed or been refused or withdrawn, the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention:

    (a)disclosed in the specification filed in respect of the first-mentioned application; and

    (b)where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal – falling within the scope of the claims of the accepted specification.”

    Subsections (2) and (3) are not relevant for present purposes.

13. Section 142 of the Act, which deals with the lapsing of applications, provides, inter alia, in subs (2):

    “142(2)  A complete application for a standard patent lapses if:
    .
    .
    .

    (d)the applicant does not pay a continuation fee for the application within the period prescribed for the purposes of this paragraph;”

    The prescribed period is set out in reg 13.3 of the Patents Regulations 1991 which, relevantly, provided, prior to amendments in 1998:

    “13.3(1)  Subject to this regulation, for the purposes of paragraph 142(2)(d) of the Act (“lapsing of application”), the period of 12 months ending at the end of an anniversary of the date (being an anniversary specified in column 2 of item 8 of Part 2 in Schedule 7) that would be the date of the patent if a patent were granted on the application is prescribed for the payment of a continuation fee.
    .
    .
    .
        (3)  If a continuation fee is not paid in the period referred to in subregulation (1), but is paid within 6 months after the anniversary concerned, the prescribed period is extended to the day on which the fee is paid.”

    It is to be read with reg 6.3(f) which is in the following terms:

    “6.3  For the purposes of paragraph 65(b) of the Act (“date of patent”), the date of a patent is as follows:
    .
    .
    .

    (f)in the case of a patent granted on a divisional application – the date of filing of the complete specification in which the invention that is the subject of the application was first disclosed.”

14. Extensions of time for acts required to be done under the Patents Act are provided for in s 223 which, in the relevant parts, is in the following terms:

    “223(2)  Where, because of:

    (a)an error or omission by the person concerned or by his or her agent or attorney; or

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

    a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.

    (3)  The time allowed for doing a relevant act may be extended, whether before or after that time has expired.

    (4)  Where an application is made for an extension of time for more than 3 months, the Commissioner must advertise the application in the Official Journal. 

    .

    .

    .

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

    (7)  Where:

    (a)a patent application lapses, or a patent ceases, because of a failure to do one or more relevant acts within the time allowed; and

    (b)the time for doing that act or those acts is extended;

    the application or patent must be treated as having been restored.”

15. In subs (11) of s 223 the term “relevant act” is defined thus:

    ““relevant act” means an action (other than a prescribed action) in relation to a patent, a patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.”

    By s 224 application may be made to the Administrative  Appeals Tribunal for review of a range of decisions of the Commissioner including decisions under s 223.

16. Regulation 5.3 provides for the filing of oppositions and, in particular, reg 5.3(5) provides:

    “A person who intends to oppose the grant of an application for an extension of time under subsection 223(6) of the Act (“extensions of time”) must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.”

    Regulation 5.3(7) requires that as soon as practicable after a notice of opposition is filed, the opponent must serve a copy of the notice on the applicant. Regulation 5.4 requires an opponent, within three months of filing a notice of opposition, to serve on the applicant a copy of a statement setting out the grounds of opposition and the particulars relating to each ground.  The statement must be filed as soon as practicable after service on the applicant.

17. Regulation 5.5 then provides for dismissal of opposition proceedings:

    “5.5(1)  An applicant may:

    (a)within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4(1) (“filing of statement”);

    .

    .

    .

    request the Commissioner in the approved form to dismiss the opposition.

    (2)  As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.

    (3)  The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.”

18. Regulation 22.11 provides for applications for extensions of time in the following terms:

    “22.11(1)  For the purposes of subsection 223(2) of the Act (“extensions of time”), an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.

    (2)  Notice of the grant of an extension of time must be published in the Official Journal.

    (3)  For the purposes of the definition of “relevant act” in subsection 223(11) of the Act, each of the following actions is prescribed:

    (a)an action or step prescribed in Chapter 5 (“opposition”), not being an action or step taken under regulation 5.3 (“filing of opposition”) or paragraph 5.4(1)(a) (“filing statement”);

    (b)paying a fee in the 6 month period stated in subregulation 13.3(1A) or subregulation 13.6(2);

    (c)filing, during the term of a standard patent as required by subsection 71(2) of the Act, an application under subsection 70(1) of the Act for an extension of the term of the patent.”

19. The power of the Commissioner to award costs and the consequence of such an award are set out in ss 210 and 211 of the Act:

    “210.  The Commissioner may, for the purposes of this Act:

    (a)summon witnesses; and

    (b)receive written or oral evidence on oath or affirmation; and

    (c)require the production of documents or articles; and

    (d)award costs against a party to proceedings before the Commissioner.

    211.  Costs awarded by the Commissioner against a party are recoverable as a debt.”       

1. Section 227 deals with the payment of prescribed fees and in subs (4) provides:

   “227(4)  Subject to subsection (5), where a fee is payable in respect of the doing of an act by a person other than the Commissioner, or a fee is payable in respect of the filing of a document, the act is to be taken to have been done, or the document is to be taken to have been filed, in spite of the failure to pay the fee.”

   Subsection (5)  deals with fees other than renewal or continuation fees.

2. Jurisdiction is conferred on the Federal Court by s 154 of the Act in the following terms:

   “154(1)  The Federal Court has jurisdiction with respect to matters arising under this Act.
   (2) The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.
        (3)  A prosecution for an offence against this Act must not be started in the Federal  Court.”

   Section 160, also referred to in argument, provides that on hearing an appeal against a decision or direction of the Commissioner, the Federal Court may do various things including admit oral evidence, permit examination and cross examination of witnesses, order issues of fact to be tried as it directs, affirm, reverse or vary the Commissioner’s decision or direction, give any judgment or make any order that it thinks fit and order a party to pay costs to another party.

   The Judicial Review Application

3. On 21 October 1998 George Stack and GST filed an application in this Court for an order of review of the delegate’s decision not to dismiss the opposition to GST’s application for an extension of time.  The application referred to Orders 54 and 54B of the Federal Court Rules and was plainly made pursuant to the Administrative Decisions (Judicial Review) Act 1977 (Cth). 

4. The grounds of the application disclosed a rapidly inflating universe of discourse.  It is difficult to encapsulate them in any meaningful way.  However they included the following propositions:

   1.The Commissioner’s delegate was obliged to stop, by means of Regulation 5.5(1)(a) the “irrelevant and oppressive inquiry” which GSA wanted to launch by way of the opposition proceedings.

   2.Section 223 is a remedial provision concerned with an objective and practical inquiry as to the existence of error.  It does not authorise inquiries into moral claims, the conduct of the applicant or the nature of communications between an applicant and its patent attorney and its legal advisors.

   3.The considerations referred to in Kimberly-Clark Ltd v Commissioner of Patents (1988) 84 ALR 685 did not apply to s 223.

   4.There were various matters which the Commissioner’s delegate was required to consider under s 223 which had not been considered. 

   5.The Commissioner’s delegate had formulated an incorrect test for the striking out of an opposition and an onus not authorised by Regulation 5.5.

   6.The delegate had failed to have regard to factual matters concerning payments by the applicant.

   7.The delegate had erred in awarding costs against the applicant when there was no provision in Regulation 5.5 for such an award or for any method of assessment of alleged costs. 

   8.The Commissioner failed to consider that none of GSA’s grounds related to the merits of the patent and that the opposition was simply concerned with delay.

   The relief sought was an order that the Commissioner’s decision be set aside and the matter be remitted to the Commissioner for reconsideration.  Alternatively, an order was sought that the Commissioner be directed to dismiss the opposition of GSA.

5. On 18 December 1998 Drummond J made directions fixing a hearing date and directing, inter alia, that:

   ”1.Mr Abaza file and serve a statement containing reviewable errors of law alleged to have been made by the Delegate of the Commissioner of Patents.”

   In addition he directed that the applicants file and serve a statement of contentions of fact and law upon which they proposed to rely, not exceeding five pages in length.

6. The reviewable errors of law filed on behalf of the applicants before his Honour bore only passing resemblance to the grounds in the application for review.  Nor did they seem to reflect the submissions that had been put to the delegate on behalf of Stack and GST.  In par 2.4 of the statement of reviewable errors it was asserted that the Commissioner could not make “a purported adjudication of a claim of right [s 223] by the exercise of any discretion under Reg 5.5(1)(a) resulting in an ongoing pecuniary penalty [s 223(10)] (and “costs”) where no appeal was provided”.  Reference was made to Harris v Caladine (1990-91) 172 CLR 84 at 165. This was evidently a contention that the grant of power to the Commissioner under s 223 constituted an impermissible conferral of judicial power. At the end of the statement of reviewable errors the following appeared:

   “Alternatively, to the matter at 2.4 above and to “save” Regulation 5.5(1)(a) as an otherwise impermissible conferment of judicial power: treat the Application as the first judicial determination in the matter [s 154 construed as a substantive and not merely procedural provision] – an appeal in name only and apply s 160.

   (1)      Set aside the decision of the Commissioner;

   (2)      Declare that application 32815/95 has not lapsed;

   (3)      Dismiss the opposition of GSA.”

   The Primary Judge’s Decision

7. Drummond J heard the application on 15 February 1999 and gave judgment dismissing the application on 24 February 1999.  In addition his Honour made a declaration in the following terms:

   “1.Section 210(d) the Patents Act 1990 (Cth) does not confer judicial power on the Commissioner of Patents and is a valid exercise of the legislative power of the Commonwealth.”

8. In his reasons for judgment his Honour noted that Mr Stack and GST had made no criticism of the delegate’s assertion that there were only two issues raised for his determination.  Nor was there any criticism of the delegate’s conclusion adverse to them on the first of those issues, namely that the notice of opposition was invalid on its face.  The second issue, as his Honour characterised it:

   “…was confined to the assertion made on behalf of the applicants that the matters raised in the second respondent’s notice of opposition did nothing more than confirm that the failure of the applicants to pay the continuation fee on time was due to an error or omission within s 223(2)(a), ie, an error or omission sufficient to justify the grant of the extension of time sought.”

9. His Honour referred to grounds of opposition 1 to 4 relied upon by GSA and characterised them as asserting inadequate explanation by Stack and GST of the matters said by them to constitute errors or omissions within s 223(2)(a) which had led to the failure to pay the continuation fee within time.  Drummond J agreed with the comments of Jenkinson J on the cognate provision in the 1952 Act in the Kimberly-Clark case that the statutory power to extend time could only properly be exercised where the person seeking the extension had made a full disclosure of all the circumstances relevant to the exercise of that discretionary power.  He went on:

   “As the delegate correctly observed, it was not appropriate, in the context of considering whether to dismiss summarily the second respondent’s notice of opposition, to embark on a detailed factual enquiry as to whether there had been a material non-disclosure by the applicant in any of the respects the subject of these first four grounds of opposition.”

   His Honour held, and, in our view, correctly, that the delegate was entitled to treat GSA’s allegations of non-disclosure as raising for investigation matters relevant to the exercise of the discretion conferred by s 223(2)(a) and to reject the limited argument put to him by the applicants on this part of the case.  Accordingly his Honour held that the delegate had not committed any reviewable error in refusing to dismiss summarily the notice of opposition in relation to grounds of opposition 1 to 4.

10. As to grounds 5 and 6 of the opposition which suggested that the applicants were aware of a source of information concerning maintenance fee requirements for their Patent Application and chose not to access it and had made a deliberate decision to give priority attention to other matters, his Honour said:

    “[T]he applicant did not, either in its brief written submissions to the delegate or in its extensive submissions to this Court, attempt to explain why the matters raised in ground 5 and 6 compelled the conclusion that the respondents were here relying on errors or omissions within s 223(2)(a), ie, on matters that could only require summary dismissal at least of these two grounds in the notice of opposition.  There is thus no justification for finding that the delegate’s decision so far as it covered these two grounds of opposition was infected with error.”

    Again, we agree with his Honour’s conclusion in that regard.  Other matters had been raised before his Honour which would have required the Court to undertake a factual inquiry of its own to matters which were not the subject of any argument or investigation before the delegate.  The delegate, as his Honour said, was under no obligation to make an unsolicited inquiry into factual matters which the applicants had raised for the first time on judicial review proceedings before his Honour. 

11. His Honour then went on to discuss the limitations of judicial review and why he regarded the submissions that he should embark upon factual inquiries as infringing the prohibition against reconsideration of the merits of the decision under the guise of judicial review.  Apart from that there were discretionary considerations against embarking upon the kind of inquiry which it was suggested he should undertake.  As his Honour pointed out, the decision sought to be reviewed  was a decision refusing summary dismissal of an opposition.  The applicants would still have a full opportunity in the final opposition hearing to pursue all arguments they wished to raise against the sustainability of the notice of opposition including those they had raised for the first time in the Court.  We agree with his Honour and add that the utility of the proceedings undertaken before him when a right existed to contest the opposition on its merits was highly questionable.

12. His Honour dealt with other legal points raised by Mr Stack and GST, including the submission that under the Patents Act and Regulations in force prior to the 1998 amendments the delegate was bound in law to dismiss the opposition because of the operation of s 227(4). That provision, his Honour held, was not applicable to continuation fees. We agree.

13. A question was raised before his Honour whether there was an error of law on the face of the decision in so far as the delegate had dealt with the case on the basis that the continuation fee was due on the anniversary of the filing of the parent Application when the Regulations operated to make the continuation fee payable from the date of the filing of the complete specification in which the invention that is the subject of the Divisional Application was first disclosed.  But his Honour pointed out that the invention the subject of the Divisional Patent Application was first disclosed when the complete specification accompanying the parent Application was filed on 30 August 1991.  This issue was revisited in argument before us and is referred to further in these reasons.

14. His Honour dealt with a challenge to the order for costs which raised issues of construction of the Act and Regulations in relation to the Commissioner’s power to award costs. It was contended that the power to award costs under s 210(d) was beyond the legislative power of the Commonwealth as an impermissible conferral of judicial power. All these contentions were rejected. The power to extend time for payment of continuation fees was administrative in character; so also, his Honour held, was the power to award costs when exercised in connection with the power to extend time. The application for review was dismissed.

    The Appeal

15. A notice of appeal against his Honour’s decision was filed on 18 March 1999.  The grounds were uninformative asserting that:

    1.The decision was wrong in and contrary to law.

    2.The decision was against the evidence and the weight of the evidence.

    Particulars were filed pursuant to a direction from the Court.  They were turgid and lengthy, occupying some seventeen typed pages.  In the event, and despite written submissions put to the Court which incorporated by reference the grounds of appeal, the matters advanced by Mr Abaza on behalf of Mr Stack and GSA lay within a narrow compass. 

16. The validity of s 210(d) which confers upon the Commissioner a power to award costs was raised in a rather oblique way in ground K of the Grounds of Appeal. It attracted the intervention of the Attorney-General pursuant to the provisions of the Judiciary Act 1903 but was abandoned at the hearing of the appeal.

17. The availability of s 154 of the Act as a vehicle for a general review or appeal de novo of the Commissioner’s decisions under the Act was raised. It was submitted that his Honour could have relied upon that provision and ranged more widely than he did in reviewing the Commissioner’s decision. Section 154 and s 160, it was said, conferred upon the Federal Court, “the exclusive jurisdiction… in respect of decisions or directions of the Commissioner which are said, as here, to be simply wrong in fact and in law”.

18. The Solicitor-General for the Commonwealth made submissions to the Court about the limitations of s 154(1). These may be academic in the sense that the jurisdiction may have been subsumed by the general jurisdiction in matters arising under federal laws which have been invested in the Court since the enactment of the Patent Acts 1990 by s 39B(1A) of the Judiciary Act 1903. Be that as it may, the circumstances of this case do not make it an appropriate vehicle in which to expound upon the operation of s 154. The appellants instituted their proceedings before Drummond J under the Administrative Decisions (Judicial Review) Act 1977 (Cth) and the proceedings retained that character at all times, as was apparent from his Honour’s reasons. There is no basis for the suggestion now advanced that his Honour should have ventured into some wider field of review in the exercise of a jurisdiction which had not been invoked and in respect of which no intelligible argument had been put to him.

19. It was also faintly raised as a public interest issue, that a provision of the regulation making power, namely s 227A(2)(n) may be invalid as purporting to authorise the executive regulation of judicial processes.  It was conceded, however, that the submission had nothing to do with any issue or relief claimed in the case.  Neither the respondents nor the Solicitor-General was called  upon in relation to that matter.

20. Notwithstanding the length and complexity of the various grounds and the written submissions, the only other matter advanced for the appellants in argument before the Court, was that the Commissioner had wrongly construed the Act and Regulations in forming the view that the continuation fee had not been paid within the requisite time or six month period of grace thereafter.  It was submitted that on a proper construction of the Act and Regulations the continuation fees were due by 21 March 1998 and were paid by that date.  This represents a period of three years from the filing of the Divisional Application.

21. But whatever the position under the Act and Regulations, this is not an argument which can be advanced on this appeal.  The stated basis of the application for an extension of time for the payment of the continuation fee was that it was due and not paid because of error on the part of the appellants and their advisors.  The application for judicial review was based upon the allegedly erroneous failure of the Commissioner’s delegate to dismiss summarily an opposition to that application for extension of time.  The proceedings do not provide a general opportunity for exploration of the issue of construction which defines the date by which the fees were to be paid. 

22. Having regard to the matters put before it, the Court did not call upon the respondents to address it.  The Court is of the view that this appeal should be dismissed.  It has been a waste of time and money for all concerned.  The appellants’ contentions about the actual continuation date appear never to have been put to the Commissioner.  The time and cost of the attempt to summarily dismiss the opposition and the judicial review process that followed as well as this appeal appear to have exceeded substantially the time and cost of simply going to contested opposition proceedings. 

23. The appeal will be dismissed with costs, save that the First Respondent seeks no order as to costs, having agreed to abide the outcome of the appeal.

I certify that the preceding forty-two (42) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices French, Whitlam and Lindgren.

Associate:

Dated:            24 August 1999

Counsel for the Applicant:

Mr A.P. Abaza

Solicitor for the Applicant:

A.P. Abaza

Counsel for the First Respondent:

Mr P. Hack

Solicitor for the First Respondent:

Australian Government Solicitor

Counsel for the Second Respondent:

Solicitor for the Second Respondent:

Counsel for the Intervener:

Solicitor for the Intervener:

Mr G. Thompson SC

Minter Ellison

Mr D.M.J.  Bennett QC S-G and Mr R. Orr

Australian Government Solicitor

Date of Hearing:

23 August 1999

Date of Judgment:

24 August 1999