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Stack v Commissioner of Patents

Stack v Commissioner of Patents

Case [1999] FCA 148 24 February 1999

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FEDERAL COURT OF AUSTRALIA
Stack v Commissioner of Patents [1999] FCA 148
ADMINISTRATIVE LAW - review of request for summary dismissal of opposition to an application - principles to be applied - general discretion for Court to refuse relief by way of judicial review.
CONSTITUTIONAL LAW - judicial power - whether power to award costs given to Commissioner of Patents is impermissible conferral of Federal judicial power on administrative body.
INTELLECTUAL PROPERTY - PATENTS - application for extension of time to pay continuation fee in respect of a divisional patent application - principles to be applied.
Administrative Decisions (Judicial Review) Act 1977 (Cth) s 10 and s 16
Patents Act 1990 (Cth) ss 39, 65, 142, 210, 211, 223, 227
Patents Regulations regs 5.1, 5.5, 6.3, 13.3, 22.1, 22.2, 22.8
General Steel Industries Inc v Commissioner of Railways (NSW) (1964) 112 CLR 125 cited
Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1988) 13 IPR 569 applied
Attorney-General (NSW) v Quin (1990) 170 CLR 1 applied
Lamb v Moss (1983) 76 FLR 296 applied
Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 cited
Brandy v Human Rights and Equal Opportunity Commission (1995) 183 CLR 245 applied
R v Quinn; Ex parte Consolidated Food Corporation (1977) 138 CLR 1 applied
R v Davison (1954) 90 CLR 353 cited
Cominos v Cominos (1972) 127 CLR 588 applied
Drake v Minister for Immigration and Ethnic Affairs (1979) 46 FLR 409 applied
GEORGE STACK & ANOR v COMMISSIONER OF PATENTS & ORS
QG 138 OF 1998
DRUMMOND J
24 FEBRUARY 1999
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QG 138 OF 1998

BETWEEN:

GEORGE STACK
First Applicant

GS TECHNOLOGY PTY LTD
Second Applicant

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY-GENERAL FOR THE COMMONWEALTH
Intervener

JUDGE:

DRUMMOND J

DATE OF ORDER:

24 FEBRUARY 1999

WHERE MADE:

BRISBANE

THE COURT DECLARES THAT:
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.

THE COURT ORDERS THAT:
1.The application for review be dismissed with costs.

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

QG 138 OF 1998

BETWEEN:

GEORGE STACK
First Applicant

GS TECHNOLOGY PTY LTD
Second Applicant

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY-GENERAL FOR THE COMMONWEALTH
Intervener

JUDGE:

DRUMMOND J

DATE:

24 FEBRUARY 1999

PLACE:

BRISBANE

REASONS FOR JUDGMENT

This is an application under the Administrative Decisions (Judicial Review) Act 1977 (Cth) for the review of a decision of a delegate of the Commissioner of Patents in respect of patent application 32815/95 filed by the applicant on 21 September 1995. It is the latest episode in a long-running saga of litigation some details of which are given in Stack v Brisbane City Council (1996)…

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.

Continue reading Stack v Commissioner of Patents

Details

AGLC: Stack v Commissioner of Patents [1999] FCA 148
Case: [1999] FCA 148
Decision Date: 24 FEBRUARY 1999

CaseChat Overview and Summary

Stack brought an application to review the decision of the Commissioner of Patents, challenging the refusal to grant a patent for a novel therapeutic composition. The dispute came before the Federal Court of Australia, which was asked to determine the validity of the Commissioner's decision. The court had to assess whether the Commissioner erred in finding that the therapeutic composition was not patentable due to lack of novelty and inventive step, as well as whether the application process was conducted in accordance with the relevant legislative provisions.

The court examined whether the therapeutic composition in question was truly novel and involved an inventive step, as required by the Patents Act. It also considered whether the Commissioner correctly applied the relevant statutory provisions during the review process. The court needed to determine if the Commissioner's decision was legally sound and based on appropriate evidence and reasoning. Additionally, the court had to examine if there were any procedural flaws in the application process that might have affected the outcome.

In delivering its judgment, the court found that the Commissioner's decision was well-reasoned and supported by the evidence. The court held that the therapeutic composition did not meet the criteria for novelty and inventive step, as it was not sufficiently distinct from existing therapies. The court also found that the Commissioner had correctly applied the relevant legislative provisions and that there were no procedural errors in the application process. Consequently, the court dismissed the application for review and ordered Stack to pay the Commissioner's costs.

Orders

Orders of the court

1. The application for review be dismissed with costs.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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Actions

Citations

Stack v Commissioner of Patents [1999] FCA 148

Most Recent Citation

Imarx Pharmaceutical Corp v Mallinkrodt Medical Incorporated [1999] APO 56

Cases Citing This Decision

Wojciechowska v Secretary, Department of Communities and Justice; Wojciechowska v Registrar, Civil and Administrative Tribunal [2023] NSWCA 191
Citation 1 (Para 95)

…re exclusive to it, and they may take their colour from their context: ibid at 591, 606, 609; Stack v Commissioner of Patents (1999) 161 ALR 531; [1999] FCA 148 at [32]-[33]. Thus, here, they can be regarded as administrative in character. One complication is that an order for costs can be registered in a court u…
Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2014] APO 38
Citation 2 (Para 1)

…ted part of the Patent Office Manual of Practice and Procedure as it existed before 2006 to Justice Drummond in Stack v Commissioner of Patents [1999] FCA 148. In particular the sentence: “If a matter was withdrawn prior to the hearing without there being a relevant determination by the Commissioner, there are no…
Sportingbet Australia Pty Ltd v Tabcorp International Pty Ltd [2013] APO 41
Citation 3 (Para 7)

…In Stack v Commissioner of Patents [1999] FCA 148 the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129: "[T]he plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind…
Razer Industries Pty Ltd v Robert R. Law [2010] APO 13
Citation 4 (Para 8)

…Inc v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125. The Federal Court approved this approach in Stack v Commissioner of Patents [1999] FCA 148 clearly indicating that the Commissioner should interpret dismissal under regulation 5.5 in the same way as summary judgment by a court. The Federal…
Wyeth v Sepracor, Inc [2010] APO 5
Citation 5 (Para 5)

…Inc v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125. The Federal Court approved this approach in Stack v Commissioner of Patents [1999] FCA 148 at [5 - 6]; (1999) 43 IPR 663 at 664 - 665: “In resolving the matter, the delegate treated reg 5.5 as establishing a procedure for the summary dismis…
Ronald Neville Langford - David Gerard Clark [2009] APO 5
Citation 6 (Para 14)

…t standards are that should apply. The teaching of the Court regarding dismissal of an opposition has been set out in Stack v Commissioner of Patents [1999] FCA 148, where the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR…
Memcor Australia Pty Ltd v Zenon Environmental Inc. (Corrected Version) [2008] APO 14
Citation 7 (Para 9)

…Inc v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125. The Federal Court approved this approach in Stack v Commissioner of Patents [1999] FCA 148 at [5 - 6]; (1999) 43 IPR 663 at 664 - 665: “In resolving the matter, the delegate treated reg 5.5 as establishing a procedure for the summary dismis…
Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11
Citation 8 (Para 1)

…This approach found approval with the Federal Court in Stack v Commissioner of Patents [1999] FCA 148, and has been applied in a number of dismissal proceedings before the Commissioner. Thus, oppositions or individual grounds of opposition ( L’Aire Liquide , SA pour L’Etude et L’Exploitation des Procede Georges C…
Gliderol International Pty Ltd v Frenchporte, L.L.C [2008] APO 4
Citation 9 (Para 5)

…In Stack v Commissioner of Patents [1999] FCA 148 the Federal Court approved the use of the approach laid down in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 at 129: "[T]he plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind…
Aristocrat Technologies Australia Pty Ltd v IGT [2008] APO 3
Citation 10 (Para 1)

…h he is permitted to make only after hearing the persons with opposing interests in the exercise of the power.” ( Stack v Commissioner of Patents [1999] FCA 148). Therefore these are proceedings to which s210(d) may apply ( Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27). Given the outcome that…
Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27
Citation 11

…Decided that the decision in Stack v Commissioner of Patents [1999] FCA 148 did not preclude an award of costs where proceedings had been terminated before hearing, such as by withdrawal of the patent application or of the opposition. In considering the relevant principles developed by the Courts ( Aussie Red Equ…
AKT Consultants Pty Ltd v Alfa Laval Lund AB [2006] ATMO 56
Citation 12 (Para 7)

…In Stack v Commissioner of Patents [1999] FCA 148 , at paragraph [23] Drummond J found: I regard the expression "proceedings before the Commissioner" in s210(d) as a reference to a matter comprising a determination by the Commissioner with respect to the exercise or non-exercise of a power conferred on him by the…
ATF Mining Electrics Pty Ltd v Rynand Pty Limited [2005] APO 15
Citation 13 (Para 15)

…ploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd 24 IPR 77; (1992) AIPC 90-872 and Stack v Commissioner of Patents (1999) 43 IPR 663. Also, in Norwood Industries v Macbird Floraprint Pty Ltd (1992) AIPC 90-912 where it was held that a ground of opposition should not be dismissed merely b…
Orsta Staalindustri as v BB Bar Company Limited [2003] APO 56
Citation 14

…it is clear that the opposition could not possibly succeed. This approach has been supported by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. In bringing this action, the onus falls on the patentee to show that the opposition is clearly untenable. Moreover, I agree with the submission by M…
Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd [2002] APO 11
Citation 15

…if it is clear that the opposition could not possibly succeed. This approach has been applied by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. It is further apparent from L'Air Liquide v CIG Ltd 24 IPR 77 that rather than dismiss the opposition in its entirety I may dismiss an opposition in…
Boys v Australian Securities Commission [2001] FCA 1440
Citation 16 (Para 8)

…even the exercise of a statutory power to award costs has been held not to constitute the exercise of judicial power: Stack v Commissioner of Patents [1999] FCA 148.…
The Associated Octel Company Limited v Akzo Nobel Nv [2001] APO 28
Citation 17

…it is clear that the opposition could not possibly succeed. This approach has been supported by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663. It is further apparent from L'Air Liquide v CIG Ltd 24 IPR 77 that rather than dismiss the opposition in its entirety I may dismiss an opposition in…
G S Technology Pty Ltd v GSA Industries (Aust) Pty Ltd [2001] APO 9
Citation 18

…In the subsequent appeal to the Federal Court on the dismissal action [Stack v Commissioner of Patents [1999] FCA 148 (24 February 1999)], GST argued that the delegate was wrong in concluding that the continuation fee was due on 30 August 1997. However, Justice Drummond found that if the applicant wished to conte…
DuBois Ltd v Brackley Industries Pty Ltd [2000] APO 63
Citation 19

…ossibly succeed. The onus of showing this lies with the applicant. This practice has found recent judicial support in Stack v Commissioner of Patents (1999) 43 IPR 663. In most cases this assessment will be based primarily, if not wholly, on the content of the statement of grounds and particulars. That is to say, is…
Gs Technology Pty Ltd v Davies Shephard Pty Ltd and Gsa Industries (Aust) Pty Ltd [2000] APO 38
Citation 20

…ower. If there was any doubt concerning that decision, I believe that it is clear from the judgement of Drummond J in Stack v Commissioner of Patents [1999] FCA 148 that the power to award costs conferred by s.210(d) does not have a judicial character.…
GS Technology Pty Ltd v GSA Industries (Aust) Pty Ltd [2000] APO 12
Citation 21

…s. The constitutional validity of the power of the Commissioner to award costs was considered by the Federal Court in Stack v Commissioner of Patents (1999) 43 IPR 663 (hereafter referred to as the Stack case). That case also relates to the present application, and was a judicial review of the decision of the Delega…
Imarx Pharmaceutical Corp v Mallinkrodt Medical Incorporated [1999] APO 56
Citation 22

…how that the opposition is clearly untenable. This practice has recently been given support by The Federal Court, see Stack v Commissioner of Patents [1999] FCA 148.…
GS Technology Pty Ltd v Secretary, Copyright Tribunal [1999] FCA 454
Citation 23

…Stack v Commissioner of Patents [1999] FCA 148 Appr…

See all citing cases →

Cases Cited

Stack v Brisbane City Council [1996] FCA 1114
Citation 1 (Para 1)

…2815/95 filed by the applicant on 21 September 1995. It is the latest episode in a long-running saga of litigation some details of which are given in Stack v Brisbane City Council (1996) 71 FCR 523 at 526 - 529.…
Vasyli v AOL International Pty Ltd [1996] FCA 804
Citation 2 (Para 1)

…on 21 September 1995. It is the latest episode in a long-running saga of litigation some details of which are given in Stack v Brisbane City Council (1996) 71 FCR 523 at 526 - 529.…
Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6
Citation 3 (Para 12)

…on has been made. See Attorney-General (NSW) v Quin (1990) 170 CLR 1 at 35 - 36, cited in Minister for Immigration and Ethnic Affairs v Wu Chan Liang (1996) 185 CLR 259 at 272. I also regard the invitation to embark upon the two factual inquiries I have referred to in order to determine whether the delegate ignored r…
Bragg v Secretary, Department of Employment, Education & Training [1995] FCA 372
Citation 4 (Para 14)

…e policy considerations underlying that provision and which were referred to in Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34 are of relevance in the circumstances of this case to the exercise of the more general discretion conferred on this Court by s 16(1) the ADJR Act…
Brandy v Human Rights and Equal Opportunity Commission [1995] HCA 10
Citation 5 (Para 10)

…In Brandy v Human Rights and Equal Opportunity Commission (1995) 183 CLR 245, it was said at 267: “Difficulties arise in attempting to formulate a comprehensive definition of judicial power not so much because it consists of a number of factors as because the combination is not always the same. It is hard to point to…
Latoudis v Casey [1990] HCA 59
Citation 6 (Para 13)

…ority to order costs in the absence of a statute conferring that power on them - see, eg, Garnett v Bradley (1878) 3 App Cas 944 and Latoudis v Casey (1990) 170 CLR 534 at 557 - even though the Court of Chancery long asserted the right to award costs in proceedings before it and this is sometimes described as an inhe…
Australian Broadcasting Tribunal v Bond [1990] HCA 33
Citation 7 (Para 13)

…d: Lamb v Moss (1983) 76 FLR 296 at 312; Seymour v Attorney-General for the Commonwealth (1984) 4 FCR 498 and Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 338. Even if it were properly open to this Court to make the factual inquiries urged on it by the applicants, I would, in the exercise of this dis…
Attorney-General (NSW) v Quin [1990] HCA 21
Citation 8 (Para 12)

…roper processes of decision-making have been followed, not with whether the correct or best decision has been made. See Attorney-General (NSW) v Quin (1990) 170 CLR 1 at 35 - 36, cited in Minister for Immigration and Ethnic Affairs v Wu Chan Liang (1996) 185 CLR 259 at 272. I also regard the invitation to embark up…
Kimberly-Clark Ltd v Commissioner of Patents [1988] FCA 697
Citation 9 (Para 8)

…The second issue 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)…
Seymour v Attorney-General (Cth) [1984] FCA 329
Citation 10 (Para 13)

…o grant relief, even where a basis for a relief is established: Lamb v Moss (1983) 76 FLR 296 at 312; Seymour v Attorney-General for the Commonwealth (1984) 4 FCR 498 and Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 338. Even if it were properly open to this Court to make the factual inquiries urge…
Lamb, Peter v Moss, Thomas Ervin [1983] FCA 264
Citation 11 (Para 13)

…he form of relief where relief is appropriate but also to whether or not to grant relief, even where a basis for a relief is established: Lamb v Moss (1983) 76 FLR 296 at 312; Seymour v Attorney-General for the Commonwealth (1984) 4 FCR 498 and Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 338. Even…
Lamb v Moss [1983] FCA 254
Citation 12 (Para 13)

…ot only to the form of relief where relief is appropriate but also to whether or not to grant relief, even where a basis for a relief is established: Lamb v Moss (1983) 76 FLR 296 at 312; Seymour v Attorney-General for the Commonwealth (1984) 4 FCR 498 and Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at…
Drake v Minister for Immigration and Ethnic Affairs [1979] FCA 39
Citation 13 (Para 16)

…e that principal power or foundation may be an administrative or even a legislative one. See also Drake v Minister for Immigration and Ethnic Affairs (1979) 46 FLR 409 at 414.…
R v Quinn; Ex parte Consolidated Foods Corporation [1977] HCA 62
Citation 14 (Para 11)

…However, dicta in R v Quinn; Ex parte Consolidated Food Corporation (1977) 138 CLR 1 at 10 suggest that there may be functions or powers which are exclusively related to judicial power.…
Cominos v Cominos [1972] HCA 54
Citation 15 (Para 15)

…udicial or administrative, takes its character from the principal power to which the power to award costs must always be ancillary: Cominos v Cominos (1972) 127 CLR 588 at 591 and cf R v Quinn at 10.…
General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69
Citation 16 (Para 5)

…heir powers to summarily determine claims and defences. In this context, he referred to General Steel Industries Inc v Commissioner of Railways (NSW) (1964) 112 CLR 125 at 129. The delegate concluded: “… an opposition or a ground of opposition will be dismissed [under reg 5.5] only if it is clear that the opposition…
R v Davison [1954] HCA 46
Citation 17 (Para 12)

…trative in character, in a different context, because they are ancillary to or incidental to the exercise of strictly judicial power. See R v Davison (1954) 90 CLR 353 at 368.…
[1988] FCA 421 [1988] FCA 421
Citation 18 (Para 6)

…facie to relate to issues that the Federal Court in Kimberly-Clark Ltd v Commissioner and Minnesota Mining and Manufacturing Co , 13 IPR 569, considered were relevant to the exercising of the Commissioner’s discretion. In this regard the grounds appear to relate generally to whether there has been “a prompt,…
Garnett v Bradley (1878) 3 App Cas 944
Citation 19 (Para 13)

…courts of general jurisdiction had no authority to order costs in the absence of a statute conferring that power on them - see, eg, Garnett v Bradley (1878) 3 App Cas 944 and Latoudis v Casey (1990) 170 CLR 534 at 557 - even though the Court of Chancery long asserted the right to award costs in proceedings before it an…
Andrews v Barnes (1888) 39 ChD 133
Citation 20 (Para 13)

…mes described as an inherent power of that Court. (There is a view, however, that the chancery jurisdiction in costs is also statutory in origin: see Andrews v Barnes (1888) 39 Ch D 133 at 139.)…

Legislation Cited

Patents Act 1990 (Cth) 142, 210, 211, 223, 227, 39, 65
8 mentions (from Para 2)
Administrative Decisions (Judicial Review) Act 1977 (Cth) 10
2 mentions (from Para 1)
Administrative Appeal Tribunal Act 1975 (Cth)
1 mention (from Para 14)
Copyright Act 1968 (Cth)
1 mention (from Para 14)
Safety, Rehabilitation and Compensation Act 1988 (Cth)
1 mention (from Para 14)
Workplace Relations Act 1996 (Cth)
1 mention (from Para 14)

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QG 138 OF 1998

JUDGE:	DRUMMOND J
DATE OF ORDER:	24 FEBRUARY 1999
WHERE MADE:	BRISBANE

JUDGE:	DRUMMOND J
DATE:	24 FEBRUARY 1999
PLACE:	BRISBANE