Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Limited - [1994] HCATrans 285

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IN THE HIGH COURT OF AUSTRALIA
Office of the Registry

Sydney No Sl16 of 1993

B e t w e e n -

YAMAZAKI MAZAK CORPORATION

Applicant

and
INTERACT MACHINE TOOLS (NSW)
PTY LIMITED, I.M.T.
INTERNATIONAL MACHINE TOOLS PTY
LIMITED and NAKAMURA-TOME
PRECISION INDUSTRY CO LIMITED

Respondents

Application for special leave
to appeal
MASON CJ DAWSON J

TOOHEY J
TRANSCRIPT OF PROCEEDINGS
AT SYDNEY ON FRIDAY, 22 APRIL 1994, AT 2.35 PM
Copyright in the High Court of Australia

Yamazaki 1 22/4/94

MR D.K. CATTERNS, QC: May it please the Court, I appear for
the applicant. (instructed by Freehill Hollingdale
& Page)

MR A. CHERNOV, QC: If it please the Court, I appear with my
learned friend, MR B.N. CAINE, for the respondent.
(instructed by Davies Ryan De Boos).

MASON CJ: Mr Catterns.

MR CATTERNS: Your Honours, the question of fair basis is
vital to every patent under both the 1952 Act and the new 1990 Act. It arises in a number of ways:
one, in the case of every patent the claims,
according to section 40, must be fairly based on
the specification of which they are a part, and
that is part of the consideration for the monopoly
in the claims. Secondly, as here, the question of
fair basis is vital to the priority dates and,
Your Honours, the priority date is the date at
which one determines the validity of the patent for
novelty, for obviousness, for prior claiming, and
other grounds of revocation.
In the present case, if the patentee is not

entitled to the early priority date by being fairly
based on the Japanese specifications, then its own
acts would lead to its invalidity because it, in
patent jargon, prior published itself.
Your Honours, in both the 1952 and 1990 Patent Acts
one may lodge a provisional specification, and
within one year lodge a complete specification. It
has always been, I submit, permissible to develop
the invention in that year between the provisional
specification and the complete and if your claim in
the complete specification is fairly based on
matter disclosed in the provisional, you are given
the benefit of being able to have the priority date
of the provisional.

Similarly, Your Honours, the international

system, which is what applies here, is exactly to
the same effect. You may lodge an application in
one of the convention countries - here Japan - and
then lodge a document, a complete specification, in

Australia within the year. If your claims are
fairly based on the earlier convention documents,
the Japanese documents, then you may have that
earlier priority date, and the benefit is obvious
because a lot can happen in an art in a given year.
Your Honours, in the Hoffman-La Roche case,

His Honour Justice Gibbs, as His Honour then was, said, and I do not think there is any disagreement,
that the treatment of provisionals is the same as
treatment of convention applications, mutatis

Yamazaki 2 22/4/94

mutandis. Your Honours, so…

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.

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Details

AGLC: Yamazaki Mazak Corporation v Interact Machine Tools (NSW) Pty Limited [1994] HCATrans 285
Case: [1994] HCATrans 285
Decision Date

CaseChat Overview and Summary

Yamazaki Mazak Corporation sought special leave to appeal from a decision of the Full Federal Court concerning patent law. The dispute involved Interact Machine Tools (NSW) Pty Limited and International Machine Tools Pty Limited, and Nakamura-Tome Precision Industry Co Limited. The core issue revolved around the concept of "fair basis" in patent law, particularly in relation to priority dates.

The High Court was required to determine whether the claims made in a patent application were fairly based on the earlier provisional or convention (Japanese) specifications. This determination was crucial because the priority date of a patent dictates the point in time against which its validity, including novelty and obviousness, is assessed. If the claims were not fairly based on the earlier documents, the patentee might be deprived of the earlier priority date, potentially rendering their own subsequent publications as prior art against their own patent.

The applicant argued that the court below erred by identifying an essential feature of the invention from the body of the specification rather than from the claims themselves. The applicant contended that the court should have focused on whether the claims, as drafted, were fairly supported by the disclosures in the provisional or convention application. This principle, the applicant submitted, applies equally to provisional specifications and international convention applications, allowing for development of the invention within a specified period while retaining an earlier priority date, provided the claims remain fairly based on the initial disclosure.

Orders