Waytogo Aussindo Pty Ltd v Kinabalu Investments Pty Ltd
[2006] APO 28
•31 August 2006
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003281553 in the name of Waytogo Aussindo Pty Ltd
Title :Relocatable transportable safety crash barrier system
Action :Application for an extension of time under Section 223 by Kinabalu Investments Pty Ltd in which to file a Notice of Opposition in respect to an extension of time to enter the national phase by Waytogo Aussindo Pty Ltd
Decision: Issued 31 August 2006 .
Abstract
Section 223 request to extend the time in which to file a notice of opposition to a previous decision made under s 223 refused.
The Commissioner does not have an express or implied power under the statute to revoke an earlier decision made under s 223, or otherwise to withdraw from, or retrieve it or ignore it. Accordingly, as the purpose of the second s 223 request would require an action on the part of the Commissioner that is contrary to law in order for it to be given effect, discretion should operate to refuse the extension as its purpose is contrary to law.
The validity of the decision to allow the first s 223 request to extend the time in which to enter the national phase was considered. It was concluded that the deregistered status of Waytogo at the time the first s 223 request was made and allowed was not a relevant consideration to the exercise of that discretion. The structure of the Act demands that the applicant of record should be considered the applicant until such time as suitable evidence is provided by the new legal owner. To decide otherwise would be destructive of good administration.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 2003281553 by Waytogo Aussindo Pty Ltd; application for an extension of time under Section 223 by Kinabalu Investments Pty Ltd in which to file a Notice of Opposition in respect of an extension of time to enter the national phase by Waytogo Aussindo Pty Ltd.
BACKGROUND
Waytogo Aussindo Pty Ltd (“Waytogo”) filed patent application 2003281553 on 24 July 2003 through the provisions of the Patent Co-operation Treaty. The application claims priority from Australian provisional application 2002950330 which was filed on 24 July 2002. In accordance with regulation 8.1(4), the time for entering the national phase in Australia expired on 24 February 2005.
On 24 June 2005 the Commissioner received a request from Waytogo for an extension of time in which to enter the national phase (the “first s 223 request”). Accompanying the request were statutory declarations by Anthony James Carey, secretary of Waytogo and Michael Leigh Angliss, partner of Cullen & Co. Patent and Trade Mark Attorneys. In a letter dated 29 July 2005 the Commissioner sought further clarification regarding the circumstances that led to the request for national phase entry not being filed within the required time. In response, further statutory declarations by Mr Carey and Mr Angliss were provided on 19 September 2005. Consequently, the request was advertised in the Supplement to the Australian Official Journal of Patents on 20 October 2005 and allowed on 28 November 2005. The request was advertised as allowed in the Supplement of 8 December 2005.
The prescribed period for filing a notice of opposition to the grant of an extension under section 223(2) ended on 20 November 2005. On 5 December 2005, some two weeks outside this period, Kinabalu Investments Pty Ltd (“Kinabalu”) filed a notice of opposition. The notice of opposition was accompanied by a request under section 223 (the “second s 223 request”) to extend the time to file a notice of opposition.
Also on 5 December 2005, the patent applicant advised that they had changed their agent from Cullen & Co. to IP First.
On 12 December 2005, Kinabalu were advised of the Commissioner’s view that there did not appear to be any purpose to be served by granting the second s 223 request regardless of whether an error to enliven the provisions of s 223 existed or not (as per Re Application by Viskase Corporation 51 IPR 416). However, Kinabalu wished to be heard on whether the second 223 request should be refused, and a hearing to deal with the matter was held in Canberra on 18 January 2006. The patent applicant was also given the opportunity to be heard on the second s 223 request in accordance with sub-regulation 22.22(1), because they could be adversely affected by a decision made under s 223. Mr G W (Bill) Potter, patent attorney of IP First, represented Waytogo. Mr Ian Tannahill, patent attorney of Ahearn Fox, represented Kinabalu.
At the commencement of this hearing, Kinabalu expressed some reservations about the patent applicant’s right to be heard, as it seemed that Waytogo had been deregistered as a company as of 12 June 2005. By virtue of section 601AD of the Corporations Act 2001, the Australian Securities and Investments Commission (“ASIC”) were vested with all outstanding property of the company as of that date. In Kinabalu’s view, only the ASIC was entitled to apply for the first s 223 request and to attend the hearing. Waytogo asserted that if the company was reinstated, then the retrospective nature of section 601AH(5) of the Corporations Act 2001 would obviate any concerns surrounding their eligibility or entitlement to apply for the first s 223 request.
The hearing was adjourned when it became evident that settlement negotiations were in progress and that Waytogo was actively seeking reinstatement as a company. In a letter of 23 January 2006 the Commissioner proposed that the hearing be deferred for a period of 3 months, and asked that she be informed on the progress of any negotiations. Both parties agreed to this proposal.
On 18 April 2006, Mr Potter informed the Commissioner that the ASIC had reinstated Waytogo, and requested that the Kinabalu’s objections (and presumably their request under s 223) be dismissed. Also on 18 April 2006, Kinabalu informed the Commissioner that discussions between Waytogo and themselves had not resulted in the settlement of various matters and that they wished to continue with the hearing regarding both s 223 requests.
Subsequently, the matter was set for hearing in Canberra on 9 August 2006. Kinabalu was represented by Mr Tannahill, patent attorney of Ahearn Fox, who appeared by telephone. Mr Potter, patent attorney of IP First, advised that Waytogo would not attend the hearing or make any formal written submissions, but would seek to rely on their previously submitted material.
THE RELEVANT LAW
10. The provisions relating to extensions of time are found in section 223 of the Patents Act 1990 (“the Act”). Sub-sections 223(7) to (10) deal with the consequences of an extension having been made. In this case, therefore, only sub-sections 223(1) to (6) and sub-section (11) are relevant and they provide:
“(1)The Commissioner must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Commissioner or a Deputy Commissioner; or
(b)an employee; or
(c)a person providing, or proposing to provide, services for the benefit of the Patent Office.
(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.
(2A)If:
(a)a relevant act that is required to be done within a certain time is not done within that time; and
(b)the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;
the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
(2B)An extension of time under subsection (2A) cannot exceed the period prescribed for the purposes of this subsection.
(3)The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(3A)Despite subsection (3), the time allowed for doing a relevant act may be extended under subsection (2A) only after that time has expired.
(4)The Commissioner must advertise in the Official Journal:
(a)an application made for an extension of time for more than 3 months; or
(b)an application made for an extension of time for doing a prescribed relevant act in prescribed circumstances.
(6)Subject to subsection (6A), a person may, as prescribed, oppose the granting under subsection (2) or (2A) of the application.
(6A)If the Commissioner is satisfied that an application under subsection (2) or (2A) would not be granted even in the absence of opposition under subsection (6):
(a)the Commissioner need not advertise the application in accordance with subsection (4); and
(b)the application cannot be opposed, despite subsection (6); and
(c)the Commissioner must refuse to grant the application.
…
(11)In this section:
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.”
11. Sub-regulation 5.3(5) of the Patents Regulations 1991 ("the Regulations") provides that:
“A person who intends to oppose the grant of an application for an extension of time under subsection 223 (6) of the Act must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal.”
DISCUSSION
12. Many of the matters relating to the current proceedings were not in dispute among the parties. The real area of disagreement among them was the significance which those matters should be given. In my view, and as will be explained later, most of these matters are peripheral to a consideration of Kinabalu’s request for an extension of time.
13. With regard to the second s 223 request, there are two critical issues. First, there is the issue of whether there has been a relevant error or omission in order to enliven the provisions of s 223. I have reviewed the declaration by Mr Tannahill in support of the request. I have not formed a concluded view on the matter - particularly with regard to the circumstances set out in paragraphs 19 and 20, which appear to suggest that the intention to oppose had not been formed prior to 2 December 2005. Nevertheless, for the purpose of this discussion, I am prepared to deal with the matter on the basis that a relevant error or omission has been made out, and that the provisions of s 223 are enlivened.
14. The second, and more relevant issue is whether, given the existence of an error or omission, the extension should be granted. The second s 223 request relates to the period prescribed by regulation 5.3(5) for that purpose. Under this regulation, a person who intends to oppose the grant of an application for an extension of time under s 223(6) must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal. The effect of the second s 223 request would be to extend the time for filing a notice of opposition to a date past the date of allowance of the first s 223 request. Given these circumstances, questions arise as to what relief is available to Kinabalu.
15. I note that there is no express provision in the Act or Regulations that gives the Commissioner the power to revoke or vary the decision which she has made on an application for an extension of time. Once a decision regarding a section 223 request has been made, there is no statutory basis for re-considering the decision, and it would seem that the Commissioner is functus officio. Could it be said that an implied power exists?
16. The question of whether the Commissioner has an implied power to reconsider a decision made under s 223 was considered in Jiejing Pty Ltd v Commissioner of Patents, Ron Thomas and Allan Garnham, parties joined, No. Q94/92 AAT No. 10131. The tribunal concluded at [73] that:
“When regard is had to section 223, the power is not to issue anything in writing that could be described as an instrument. All that is given is a power to extend, in certain circumstances, the time limits otherwise set for certain actions. While it would no doubt be desirable to record the decisions in writing, the recording is not the focus of the power. The focus of the power is the decision to extend the time. It follows that section 223 of the Act does not confer a power to make an instrument and so there is no power to repeal, rescind, revoke, amend or vary a decision made under it.”
17. Based on this consideration, it is impossible to postulate a residual power of the Commissioner to revoke an earlier decision made under s 223 (or otherwise to withdraw from, or retrieve it or ignore it). Under the Act, the decision to advertise the first s 223 request invoked a formal process which immediately set in train a series of procedural and substantive consequences. One of these consequences is that a person who intends to oppose the grant of an application for an extension of time under s 223(6) of the Act must file a notice of opposition in the approved form within 1 month of the advertisement of the application in the Official Journal (though it may be more correct to state that notice of opposition to the allowance of a s 223 request must be received before that s 223 request is allowed). Kinabalu’s request was not received within time, and in my view the Act denies any relief or remedy. Other legislation might well yield a different conclusion.
18. The issue that now arises is whether the decision to allow the first s 223 extension was flawed in some manner. In Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 187 ALR 117, the High Court accepted at [51] that:
“…an administrative decision that involves jurisdictional error is a decision that lacks legal foundation and so is properly regarded, in law, as no decision at all.”
19. Mr Tannahill forcefully asserted that the Commissioner had erred in allowing the first s 223 request, and that this decision was ultra vires. This contention raises many matters that are somewhat peripheral to a consideration of Kinabalu’s request for an extension of time. Even though I have concluded that the decision to allow the first s 223 extension is not a reviewable decision, I believe I am obliged to consider whether the purported decision was invalid.
Under the Corporations Act, does a deregistered company have the power to apply for a s 223 extension?
20. It was not in dispute that at the time of the first s 223 request, and also at the time that this request was allowed, Waytogo was deregistered. In Kinabalu’s view, a legal person that no longer exists is not entitled to apply for a s 223 extension. As Mr Tannahill submitted:
“We contend that the legal representative of a deregistered company, by virtue of subsections 601AD(2) and 601AD(4) is the ASIC. Accordingly the application for the extension of time ought to have been made by the ASIC or with the authority of the ASIC. Because the application was neither filed by the ASIC or with the authority of the ASIC we believe it must therefore be treated as having no legal standing.”
21. My attention was also directed to the following passages from Mikhail Distribution Services Pty Ltd v Australia Post [2004] NSWIRComm 235 (1 September 2004), which concerned an application under s 106 of the Industrial Relations Act 1996. The relevant passages are as follows:
“7 In the course of his judgment Cole J reviewed a number of authorities dealing with similar legislation, within Australia and also in England. Those authorities, and the conclusion to which Cole J came, have not been disputed in these proceedings. Accordingly I can summarise his Honour's conclusions shortly. These are to the effect that whilst a company remains deregistered it has no power to do anything. Accordingly, it has no power to commence proceedings. Not only does it have no power to commence proceedings but it has no power to instruct anyone to commence proceedings on its behalf. Accordingly, it has no standing to pursue any orders…
…
8 …It follows, in my view, that the summons must be struck out. There was no power for Mr Moustacas to issue the summons on behalf of the company. Nor was there any right for counsel to appear on its behalf because it does not exist…
…
11 The second decision of Sackville J is Hunter Valley Community Investments Pty Ltd v Bell (2001) 46 ATR 375. In those proceedings a number of applicants had commenced a representative proceeding against certain defendants based on causes of action under the trade practices legislation. One of the applicants was a deregistered company. His Honour was dealing with a motion seeking leave to replead certain aspects of the cause of action. With respect to the deregistered corporate applicant his Honour had been informed that an application had been made to the Supreme Court of New South Wales for an order for reinstatement of registration.12 After citing his Honour's decision in Morton, his Honour declined leave to the deregistered corporate applicant to replead its case. This was because it had ceased to be a legal person. Accordingly, no leave could be given to that applicant to replead until after it had been reinstated.
…
19 I conclude from the judgment of Jordan CJ that proceedings instituted by a party which does not exist are a nullity. If they are a nullity then it follows in my respectful opinion that they constitute an abuse of the processes of the Court. Accordingly, any such purported proceedings should be either struck out or permanently stayed. This would not seem to permit the exercise of any discretion to adjourn the proceedings so as to enable them to be properly constituted by the retrospective reinstatement of registration of a deregistered corporation. This is consistent with the judgment of Jordan CJ in United Service Insurance and with the approach of Cole J in Sweeney.”
22. These passages support Kinabalu’s contention that Waytogo ceased to be a legal person upon deregistration. Upon deregistration, it is apparent from the Corporations Act 2001 that the ASIC is entitled to act on behalf of a deregistered company. Sections 601AD(1) to (4) of the Corporations Act 2001 provide:
“Company ceases to exist
(1)A company ceases to exist on deregistration.
Note: Despite the deregistration, officers of the company may still be liable for things done before the company was deregistered.
Company's property vests in ASIC
(2)On deregistration, all the company's property vests in ASIC. If company property is vested in a liquidator immediately before deregistration, that property vests in ASIC. This subsection extends to property situated outside this jurisdiction.
(3)Under subsection (2), ASIC takes only the same property rights that the company itself held. If the company held particular property subject to a security or other interest or claim, ASIC takes the property subject to that interest or claim.
Note: See also subsection 601AE(3)—which deals with liabilities that a law imposes on the property (particularly liabilities such as rates, taxes and other charges).
(4)ASIC has all the powers of an owner over property vested in it under subsection (2).”
23. Section 9 of the Corporations Act defines ‘property’ as “any legal or equitable estate or interest (whether present or future and whether vested or contingent) in real or personal property of any description and includes a thing in action”. I am prepared to accept that a patent application could fall within the ambit of this definition, as a patent may be considered as future personal property contingent upon the successful prosecution of a patent application. Accordingly, I agree with Kinabalu’s submission that as a consequence of deregistration, Waytogo ceased to exist as a company, and that the ASIC was vested with all of their property, including any patent applications. There is no doubt that upon dissolution a company ceases to be a legal person; it becomes a ‘non existent person’ (as per Jordan CJ in United Service Insurance Co Ltd (in liq) v Lang (1935) 35 SR (NSW) 487 (FC), at 495).
24. However, in the case of Waytogo, this was a temporary state of affairs. Section 601AH(5) of the Corporations Act provides that:
“Effect of reinstatement
(5)If a company is reinstated, the company is taken to have continued in existence as if it had not been deregistered. A person who was a director of the company immediately before deregistration becomes a director again as from the time when ASIC or the Court reinstates the company. Any property of the company that is still vested in ASIC revests in the company. If the company held particular property subject to a security or other interest or claim, the company takes the property subject to that interest or claim.”
25. The reregistration of a deregistered company is retrospective so that, under s 601AH(5) of the Corporations Act, ‘the company is taken to have continued in existence as if it had not been deregistered’. Waytogo has submitted that the retrospective nature of s 601AH(5) renders moot any concern that Kinabalu has regarding Waytogo’s legal standing at the time of the first s 223 request. If I am to adopt this submission, reinstatement under s 601AH(5) must be retrospective for all purposes, with the result that anything which was purported to be done on behalf of Waytogo during the period of its deregistration is thereby regarded as valid.
26. The retrospective nature of s 601AH(5) has recently been considered in White v Baycorp Advantage Business Information Services Ltd [2006] NSWSC 441 (18 May 2006), in which Campbell J said:
“114 Capital Corporate was reinstated by ASIC, under section 601AH(1), rather than through an application to the Court.
115 Approaching the matter purely as one of statutory construction, the effect of section 601AH(5) is that, now, the statute requires everyone to treat Capital Corporate as though it had never been deregistered. However, that does not mean that anything which purported to be done on behalf of Capital Corporate during the period of its deregistration is thereby regarded as valid. If a director had purported to act on behalf of a deregistered company during the period of deregistration, mere reinstatement would not validate his action, because section 601AH(5) provides only a limited measure of retrospectivity, so that the director regains his office only from the time of reinstatement. Similarly, section 601AH(5) provides only a limited measure of retrospectivity concerning title to the property of the company, so that the property revests in it only from the time of reinstatement. Thus, notwithstanding the reinstatement, any contractual power which Capital Corporate had prior to the deregistration is still regarded, even after the deregistration, as having been vested in ASIC during the period of deregistration. If the contractual power was vested in ASIC, Capital Finance could not have had authority to exercise that contractual power.
…
128 In the present case, if, upon reinstatement, someone had wanted to have the issuing of the notices during the period when Capital Corporate was deregistered treated as though such notices were valid, it would have been necessary to apply to the Court for the reinstatement, rather than to ASIC, and on that application to the Court for reinstatement to make application under section 601AH(3) for a specific order for the validation of that Act. That course was not followed.”
27. The approach adopted by Campbell J makes it abundantly clear that the retrospectivity which s 601AH(5) gives is retrospective only to the date of reinstatement. Thus, I conclude that at the time the first s 223 request was made, Waytogo was not entitled under the Corporations Act to do so.
Under the Patents Act, does a deregistered company have the power to apply for a s 223 extension?
28. Was Waytogo entitled to apply for an extension of time under the Patents Act? Section 223(2) of the Act requires that the application be made by the “person concerned”. In Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551, Jenkinson J concluded that this is the person in whose name the step is to be taken or the act done. Even though his decision was in regard to section 131(1)(a) of the Trade Marks Act 1955, the connections between the histories of the Patents Act and the Trade Marks Act, to some of which Beaumont J referred in Lyons v Registrar of Trade Marks (1983) 1 IPR 416 at 424–426, suggest that the expression “person concerned” has the same meaning in the two Acts.
29. What was the step to be taken or the act done? In the present case, entry into the national phase was the specific step to be taken or the act done. Regulation 8.1(4) provides that:
“The applicant must meet the requirements of subsection 89 (3) of the Act within the period of 31 months after the priority date of the application.”
30. It is to be noted that regulation 8.1(4) limits the performance of this act to ‘the applicant’. Thus, to have enlivened the provisions of s 223(2), it was necessary for the requestor seeking an extension of time to have also been the applicant. As at no time during the prosecution of this patent application has the ASIC ever been recorded as such, I must reject the submission that the ASIC were a “person concerned” within the meaning of the Act.
31. This conclusion is consistent with the views expressed in Weir Pumps Ltd v Commissioner of Patents and Stork Pompen BV (1989) 13 IPR 163, which concerned a decision by the Commissioner to refuse an application under section 160(2) of the Patents Act 1952. Section 160 of the Patents Act 1952 is the predecessor of s 223 of the Act, and although the language is slightly different, the differences do not affect the relevance of the remarks made by Deputy President Bannon QC:
“….I prefer Mr Hinde’s submission that regardless of the alleged independence of s160 of the Act from other provisions thereof, s160(2) is not sufficiently wide to enable a person who is not a party concerned as being an applicant for a patent, or a party concerned as being a party to existing proceedings under the Act (not being proceedings in a court), to apply for an extension of time.”
32. Indeed, this reinforces my belief that Waytogo alone carried the responsibility for complying with the requirements for entry into the national phase, and that they were the only person entitled to apply for an extension of time, pursuant to s 223(2), in which to do so.
33. Even if I chose to proceed on the basis that the ASIC is a ‘person concerned’, the discretion could not have been exercised in their favour. Section 223(2) is specifically restricted in its operation to a 'relevant act'. The relevant act in these circumstances was the payment of fees in which to enter the national phase, and s 89(3) and regulation 8.1(4) place this onus on ‘the applicant’.
34. The term ‘applicant’ used in these provisions is not defined in either the Patents Act or the Patents Regulations. However, I believe it is apparent from the structure of the Act that in the present case, the ‘applicant’ for the purposes of s 89(3) is the person who made the international application and is recorded as such. Further support for this reasoning is provided by other sections of the Act, which specifically define the meaning of the term 'applicant' should another meaning be intended. One example of this includes s 38(2), which states that:
"In this section:
applicant includes a person entitled to make a request under section 113 in relation to the relevant patent application".
35. A similar definition does not apply to or occur in s 89(3). It follows that as Waytogo were the applicant of record at the relevant time, there was therefore no place under the Act for the ASIC to have been considered as the applicant for the purposes of section 89(3). Thus, it is apparent that even if an extension of time had been granted to the ASIC under s 223(2), the only party capable of giving effect to the extension was the applicant of record, Waytogo. Such a grant would have been manifestly improper.
36. As sections 15 and 29 of the Patents Act indicate, the status of the applicant is not a particularly relevant consideration until such time as the patent application is to be granted. Prior to the Patents Act 1990, an applicant for a patent had to be entitled to do so, but a different scheme has been adopted under the 1990 Act. According to section 29(1), any person can apply for a patent, but a patent can only be granted to an ‘eligible person’. In my view, the applicant can be a company, whether deregistered or not, whereas nominated/eligible persons must be legal persons under the Acts Interpretation Act.
37. Kinabalu asserted that it was not fair or reasonable that a deregistered company could prosecute their patent application. The simple answer to this is no more than the legal reply that the Patent Office is obliged to obey the legislation enacted by Parliament. So long as the ASIC was not recorded as the patent applicant following Waytogo’s deregistration, the patent application vested in them in equity but they could not be regarded as the ‘applicant’ under the Act. A finding that a person is an applicant is not dependent upon their legal or equitable interest in the patent application but upon their details being recorded as such by the Patent Office. As the ASIC was not entered as the applicant (even though they were entitled to be entered), the applicant must continue to be, and always has been, Waytogo. It must be Waytogo, therefore, who as the patent applicant, could apply for the first s 223 extension and pay the relevant fee to enter the national phase.
38. Similar issues were considered by the AAT in Hugh Macdonald Reilly v Commissioner of Patents No. Q95/762 AAT No. 10852. In that case, the patentee Mr Reilly sought an extension of time within which to pay a renewal fee claiming that he had been unable to pay the fee on the due date because he was bankrupt. Though the patent had passed to a trustee by virtue of s 132 of the Bankruptcy Act 1966, they had not been entered in the Register of Patents as either the grantee or proprietor. Notwithstanding the trustee’s equitable interest in the patent, it was concluded that Mr Reilly was the ‘patentee’ and thus entitled to pay the fee. Nevertheless, the extension of time request was refused as no relevant error or omission to enliven s 223 could be identified. In my opinion there is no doubt that the reasoning followed by the AAT can be extended to the present circumstances. The conclusion that the applicant of record is entitled to deal with an application even when another party maintains an equitable interest is eminently sensible.
Was the original 223 extension to enter the national phase ultra vires?
39. Kinabalu has argued that the decision to allow the first s 223 request was ultra vires. The particular defect that has been alleged is that a relevant consideration, namely the deregistered status of Waytogo, was not taken into account at the time the decision was made.
40. The authorities have held that in exercising a discretionary power a decision maker must have regard to all matters which it is bound by statute, expressly or impliedly, to consider and must disregard all matters which are, in the same way, irrelevant (see, for example, R v Trebilco and Ors; Ex parte F.S. Falkiner and Sons Limited (1936) 56 CLR 20). Halsbury’s Laws of Australia at 10-2171 describes the considerations that a decision maker is bound to take into account in the following terms:
“The ground of failure to take into account a relevant consideration is only made out if the decision-maker fails to take into account a consideration which he or she is bound to take into account in making the decision. The factors which a decision-maker is bound to consider, are determined by construction of the statute in which the discretionary power is conferred. If the discretion is unconfined by the statute, the factors which may be taken into account are similarly unconfined, except in so far as there may be found in the subject matter, scope and purpose of the statute some implied limitation on the factors to which the decision-maker may legitimately have regard. In taking an irrelevant consideration into account, no error of law is made where a decision-maker examines a matter but then rejects it as being irrelevant. It is open to a decision-maker either to reject or accept evidence depending upon its persuasiveness, but it may not ignore it altogether if it is a relevant consideration.”
41. In so far as sections 89(3) and 223(2) of the Act are concerned, there is no specific requirement that the ‘applicant’ or ‘person concerned’ also be a legal person. Can it be said that an implied duty to consider the legal status of an applicant for a s 223 request exists? In Minister for Aboriginal Affairs and Anor v Peko-Wallsend Ltd (1986) 162 CLR 24, Mason J (as he then was) discussed the factors that a decision-maker is bound to consider in making a decision to determine the construction of a statute conferring a discretion. His Honour said that where the relevant statute does not expressly state the considerations to be taken into account:
"...they must be determined by implication from the subject-matter, scope and purpose of the Act. In the context of judicial review on the ground of taking into account irrelevant considerations, this Court has held that, where a statute confers a discretion which in its terms is unconfined, the factors that may be taken into account in the exercise of the discretion are similarly unconfined, except in so far as there may be found in the subject-matter, scope and purpose of the statute some implied limitation on the factors to which the decision-maker may legitimately have regard; see Reg v Australian Broadcasting Tribunal; ex parte 2HD Pty Ltd (1979) 144 CLR 45 at 49-50 adopting the earlier formulations..."
42. In Reg v. Australian Broadcasting Tribunal, supra, the joint judgment at page 50 is expressed as follows:
"However, it is not a legitimate approach to interpretation to compare a statutory discretion which is expressed in unlimited terms as to one subject with another discretion in the same statute which is confined to specified considerations with reference to a different subject matter and thereby conclude that the first discretion necessarily excludes the consideration specified in relation to the second discretion. The general rule is that a discretion expressed without any qualification is unconfined except in so far as it is affected by limitations to be derived from the context and scope and purpose of the statute."
43. Applying those statements to this case, it is clear that the matters to be taken into account and considered pursuant to s 223(2) of the Act relate to the history of events surrounding the need for an extension of time. In my view, the legal status of an applicant is entirely irrelevant to this consideration. Indeed, the 1990 Act, by virtue of the way in which sections 15 and 29 are couched, has the convenience that a patent application can be promptly and efficiently filed and dealt with without a need to correctly determine or resolve legal status and entitlement to apply. It would be anomalous and irrational if a patent applicant’s legal status was to be included in the decision maker’s consideration under s 223 when it is not a relevant consideration before grant of a patent.
44. In an alternative argument based on s 215 of the Act, Kinabalu equated the deregistration of Waytogo to an applicant who had passed away, and questioned how a “non-existent” person could deal with a patent application. I believe this contention pays insufficient regard to the wording of the section, which clearly does not operate to prevent a “non-existent” person such as a deregistered company from engaging in the conduct of a patent application. Section 215(1) merely enables an applicant’s legal representative to proceed with the application upon the applicant’s death. Thus, a person with legal rights to the patent application may have their name substituted for that of the deceased applicant after satisfying the evidentiary requirements of regulation 22.9. Again, it is evident from the structure of the Act that the applicant of record should be considered the applicant until such time as suitable evidence is provided by the new legal owner. To decide otherwise would be destructive of good administration.
45. In summary, it was the ‘applicant’, Waytogo, who requested that a discretion be exercised in their favour. The Patent Office properly considered the request, reached a conclusion, and informed affected parties of its decision. The Office has correctly discharged the functions committed to it by statute, and I cannot find any grounds to support a finding that allowance of the request was ultra vires.
46. As an aside, I will also take this opportunity to note that if from the moment it was purportedly made the decision to allow the first s 223 request was ultra vires, then the patent application must have lapsed for not entering the national phase within the prescribed period. Consequently, there would be no reason for Kinabalu to seek an extension under s 223 in order to oppose the original extension.
DECISION
47. Having regard to these issues, I conclude that Waytogo was entitled to apply for the first s 223 request, and that the decision made by the Commissioner was valid. As there exists no express or implied power under the Act for the Commissioner to deem the first s 223 request as not having been allowed, that decision must stand. Accordingly, as the purpose of the second s 223 request by Kinabalu would require an action on the part of the Commissioner that is contrary to law in order for it to be given effect, discretion should operate to refuse the extension as its purpose is contrary to law.
48. The application by Kinabalu for an extension of time under s 223 is refused.
COSTS
49. The situation in relation to costs is unusual. In general, a hearing concerned with the Commissioner’s intention to refuse a request made under s 223 is an ex parte matter. However, due to the distinct possibility that the first s 223 decision would be revisited, the patent applicant was invited to attend.
50. For convenience, both parties were allowed to make submissions regarding each s 223 request, but that does not make them parties to each action (they are more akin to an amicus curiae in relation to the other action). Given that both actions are proceeding ex parte, it is not appropriate to make an award of costs.
R. W. J. Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the requestor: Ahearn Fox, Brisbane
Patent attorneys for the patent applicant: IPFirst, Toowong
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