Re Husky Injection Moulding Systems Limited v the Commissioner of Patents [1990] FCA 439; 98 ALR 133/19 IPR 193 26 FCR 45 22 ALD 20 (9 November 1990)

FEDERAL COURT OF AUSTRALIA

Re: HUSKY INJECTION MOULDING SYSTEMS LIMITED
And: THE COMMISSIONER OF PATENTS
No. V G163 of 1990
FED No. 630
Intellectual Property
(1990) AIPC para 90-723
[1990] FCA 439; 98 ALR 133/19 IPR 193
26 FCR 45
22 ALD 20

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Northrop J.(1)

CATCHWORDS

Intellectual Property - patent law - whether the Commissioner has power to extend the time in relation to a further application when the original application has proceeded to grant - meaning of "applicant" - policy - history of s.51(1).

Patents Act 1952 s.s.51(1), 160(2)

Administrative Decisions (Judicial Review) Act 1977

HEARING

MELBOURNE
9:11:1990

Counsel for Applicant: Mr B. Hess

Solicitor for the Applicant: Blake Dawson Waldron

Counsel for the Respondent: Mr R. Downing

Solicitor for the Respondent: Australian Government Solicitor

ORDER

1. The decision made by the Assistant Commissioner of Patents on 10 May 1990 to refuse to allow the extension of time applied for under s.160 of the Patents Act 1952 be set aside.

2. The application for the extension of time be remitted to the Commissioner to be determined according to law.

3. The respondent pay the applicants costs.

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

DECISION

The question raised by this application is whether the power conferred upon the Commissioner of Patents by paragraph 160(2)(a) of the Patents Act 1952 to extend the time for doing an act or taking a step in relation to a further application for a patent under sub-section 51(1) exists after the first-mentioned application has proceeded to grant. The parts of paragraph 160(2)(a) relevant to this review are:-

"(2) Where, by reason of-
(a) an error or omission on the part of the
person concerned or of his agent or attorney; or
(b) ...
an act or step in relation to an application for a
patent ... required to be done or taken within a
certain time has not been done or taken, the
Commissioner may, upon application by the person
concerned, but subject to this section, extend the time
for doing the act or taking the step."

2. By a decision made on 10 May 1990, an Assistant Commissioner of Patents held that he had no power under paragraph 160(2)(a) to extend the time within which a person could make a further application under sub-section 51(1) of the Patents Act. The parts of sub-section 51(1) relevant to this review are:-

"51(1) Subject to sub-sections (2) and (3), an
applicant for a standard patent (not being an applicant
in respect of an application that has lapsed or has
been refused or withdrawn) may, at any time before the
application has been accepted or at any time after the
application has been accepted and before the expiration
of the period of 3 months after acceptance of the
application has been advertised in the Official
Journal, make a further application for a standard
patent ... in respect of an invention ... disclosed in
the ... complete specifications lodged in resect of the
first-mentioned application."

3. In circumstances where a patent application had proceeded to grant in respect of an invention disclosed in the application (the first-mentioned application), the applicant sought an extension of time under paragraph 160(2)(a) within which to make a further application in respect of an invention disclosed in the complete specification lodged in respect of the first-mentioned application, the Assistant Commissioner held he had no power to grant the extension of time. He concluded as follows:-

"I have found that the expression "the applicant"
appearing in s.51(1) is concerned only with an
application which is still an application in the course
of being prosecuted. I have also found that once the
original application has matured to the status of a
patent, there is no "applicant" in terms of the sub-section,
and there is no time extendable under s.160.
Consequently, I refuse to allow the extension of time
applied for under s.160."

4. Husky Injunction Molding Systems Ltd. ("the applicant") was the applicant in the first-mentioned application, was the applicant for the extension of time and is the applicant in this proceeding. The applicant is seeking an order of review under the Administrative Decisions (Judicial Review) Act 1977 of the decision of the Assistant Commissioner. The ground relied upon is that contained in paragraph 5(1)(f) namely that the decision involved an error of law.

5. In sub-section 51(1) the crucial words are "an applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn)." Counsel for the applicant contended that this expression is used to denote the class of persons within which a person must be to be qualified to make a further application for a standard patent. On this basis, once a person enters that class it was contended that for ever thereafter that person can properly be described as "an applicant for a standard patent" and that description is as true both before and after the application for patent has proceeded to grant. Counsel for the Commissioner contended that the phrase had a more limited meaning in that it referred to the status of a person at any particular time. Thus the person was an applicant for only so long as the application had not proceeded to grant. Thereafter, the applicant became the patentee and ceased to be an applicant for a patent and it would be inaccurate to describe that person as an applicant for a standard patent.

6. The question must be considered having regard to a number of features of the Patent Act. The Act contains many provisions specifying times within which an applicant for a patent must do an act or take a step in respect of the application for the patent. If the person does not do that act or take that step within the time specified, the application for the patent could lapse or be refused. In this context, s.160 is a remedial provision. Under sub-section 160(1) where by reason of an error or omission on the part of an officer employed in the Patent Office, an act or step in relation to an application for a patent required to be done or taken within a certain time has not been done or taken, the Commissioner must extend the time for doing the act or taking the step. Under sub-section 160(2) where the conditions precedent are fulfilled, the Commissioner has a discretion to extend the time. The difference between a duty and a power does not affect the present case since the existence of the power to extend is in issue, not how that power is to be exercised. In any event, it is clear that the duty conferred by sub-section 160(1) and the power conferred by sub-section 160(2) are remedial and the exercise of the power must be construed accordingly; see for example Australian Paper Manufacturers Ltd. v. C.I.L. Inc. [1981] HCA 64; (1980) 148 CLR 551, AB Scaniaiventor v Commissioner of Patents [1981] FCA 84; (1981) 54 FLR 367 and Lehtovarra v Acting Deputy Commissioner of Patents [1981] FCA 218; (1981) 58 FLR 1. These principles, however, are not of real assistance in this case which concerns the proper construction of an expression in sub-section 51(1). Nevertheless, the policy behind s.160 must be kept in mind. It must be remembered however, this proceeding has nothing to do with how the power, if it exists, should be exercised.

7. The first mentioned application for a patent was made on 8 May 1987 in conformity with s.34 of the Patents Act, but, since the application arose from an application in a Convention country, under s.141 the priority date for the claim was 12 May 1986. The application included claims for two separate inventions and it is accepted that under the Patents Act each application for a patent must be limited to one invention. When the applicant's attention was drawn to this deficiency, instructions were given to proceed with respect to one invention, to withdraw the second invention and to make a second application for a patent in respect of the second invention. The application for a patent for the first invention was accepted on 8 December 1988 and thus the applicant, in order to protect the priority date in respect of the second invention, had until 8 March 1989 to make an application under s.34 and rely on the provisions of s.51. By error, no further application for a standard patent in respect of the second invention was made before 8 March 1989. The further application was not made until 6 October 1989 being well after the application for a patent in the first-mentioned application had proceeded to grant on 5 May 1989. Thus, unless the time within which the further application can be made is extended to 6 October 1989, the further application for a patent in respect of the second invention must fail, the relevant priority date not being affected by s.45 of the Patents Act and in particular sub-section 45(4).

8. The policy behind s.51 of the Patents Act appears clear. Section 51 is designed to protect the rights of an applicant for a patent who through inadvertence or a lack of understanding includes more than one invention in an application for a patent. When this defect becomes apparent, the section is designed to enable that applicant to make a second or divisional application in respect of the second invention without losing the benefit of the first priority date and without having the application rejected on the ground of prior publication. In the light of this policy, there is much to be said to support the contention of counsel for the applicant.

9. Support for this contention is gained by looking at amendments made to s.51 since it first appeared in Act No. 42 of 1952. At that time sub-section 51(1) provided:-

"51(1) A person who has made an application for a
patent may, at any time before publication of the
complete specification, make one or more further
applications in respect of an invention disclosed in
the provisional specification or complete specifications
lodged in respect of the first-mentioned application."

10. At that time, the provisions of s.160 were more limited than at present, and were as follows:-

"160(1) Where, by reason of-
(a) an error or action on the part of an officer
or person employed in the Patent Office; or
(b) circumstances beyond the control of the
person concerned,
an act or step in relation to an application for a
patent or in proceedings under this Act (not being
proceedings in a court) required to be done or taken
within a certain time has not been so done or taken,
the Commissioner may extend the time for doing the act
or taking the step and permit the act to be done or the
step to be taken.
(2) The time required for doing an act or taking
a step may be extended under this section although that
time has expired."

11. Thereafter, s.51 has been varied substantially. By s.7 of Act No. 84 of 1962, a new s.51 was inserted as follows:-

"51(1) A person who has made an application for a
patent (not being an application that has lapsed or has
been refused or withdrawn) may, at any time before the
application has been accepted, make one or more further
applications in respect of an invention disclosed in
the provisional specification or complete specification
lodged in respect of the first-mentioned application.
"(2) A further application may not be made by
virtue of the last preceding sub-section-
(a) in respect of an invention disclosed in a
provisional specification lodged more than twelve
months before the date of that application and being an
invention that is not disclosed in the complete
specification; or
(b) in respect of an invention disclosed in a
complete specification - after the expiration of twelve
months after the complete specification became open to
public inspection.
"(3) An application made by virtue of sub-section (1) of
this section shall be accompanied by a complete specification."

12. The insertion of the words in parenthesis in sub-section (1), namely "(not being an application that has lapsed or has been refused or withdrawn)" are of interest. They are used to qualify the words "an application for a patent" and the draftsman seems to have thought it necessary to insert them since, as a matter of fact, once an application for a patent had been made, it remained such an application. Hence it was necessary to restrict the meaning of those words to cases where the application had not been brought to an end by lapse, refusal or withdrawal. Nothing was said about the application being granted. This supports the view that the granting of a patent does not prevent the person who had made the application for a patent, from coming within the class of persons eligible to make an application under s.51.

13. Section 13 of Act No. 34 of 1969 inserted a new sub-section 51(1). This new sub-section introduced words which, for practicable purposes, are those presently in operation. In this respect, the relevant part of sub-section 51(1) were:-

"51.(1) An applicant for a patent (not being an
applicant in respect of an application that has lapsed
or has been refused or withdrawn) may ...".

14. Further amendments to s.51 were made by s.19 of Act No. 9 of 1979 and s.178 of Act No. 26 of 1982 but the crucial words remained the same.

15. During the course of submissions it was suggested that the reason for the change of words from "A person who has made an application for a patent" to "an applicant for a patent" is explained by another amendment introduced by s.6 of Act No. 34 of 1969. That section added sub-section 34(4) which enabled a person who had made an application for a patent to assign, in effect, the rights in the application and the assignee could pursue the application as if the assignee was the applicant for the patent. In these circumstances, the new wording of sub-section 51(1) would enable the assignee to make application under sub-section 51(1). There is much force in that suggestion but this explanation does not assist the construction to be given to the sub-section. What is of importance is that if the Parliament intended to exclude the right conferred by the sub-section after the first mentioned application proceeded to grant, it would have been easy to have inserted words such as "or proceeded to grant" when the other words in parenthesis namely "not being an application that has lapsed or has been refused or withdrawn" were inserted into sub-section 51(1). This would have made the meaning very clear.

16. In support of his contentions, counsel for the Commissioner relied upon views expressed by Kitto J. in The Eimco Corporation v. Commissioner of Patents [1960] HCA 1; (1960) 103 CLR 521. In that case Kitto J. was sitting as the Appeal Tribunal for the purposes of the Patents Act 1952-1955; Act No. 42 of 1952 having come into operation in 1954. The decision appealed from was a decision made by the Commissioner under sub-section 49(2) directing Eimco to amend the priority date for the claims of a complete specification lodged in connection with an application for a patent. On 17 August 1953, Eimco lodged the application for a patent under the legislation then in force namely the Patents Act 1903-1950. It was an application for a convention patent and the priority date claimed was 15 June 1953. The 1952 Act came into operation on 1 May 1954. It repealed the earlier legislation but provided in s.5 that while its provisions applied to applications lodged after 1 May 1954 and to all patents granted either on those applications or under the repealed legislation, the repealed Acts should apply to all applications already lodged and to the sealing of patents on those applications. An objection was raised that the application under the repealed Act included more than one invention and the Commissioner exercised his power under reg.11(2) of the Patents Regulations 1912 to require or allow Eimco to amend the application so as to apply to one invention only. The amendment was made and a patent on the application as amended was sealed on 25 September 1956, that is after the 1952 Act had come into operation. Thereafter, on 15 October 1956, Eimco made an application for a separate patent in respect of the invention which the amendment had excluded.

17. The issue before the Tribunal related to the application of the 1952 Act, but by way of obiter, Kitto J. said at p 523:-

"It seems clear that if the new Act had not yet been
in force the application for the separate patent would
have been too late for the appellant to have had any
claim to an antedating of that patent. The relevant
provisions would have been those contained in the
concluding words of sub-reg. (2) and in sub-reg. (3) of
reg. 11. Sub-regulation (2) enabled an applicant who
had been required or allowed to amend his application
so as to apply to one invention only to make
application for a separate patent for the invention
excluded by the amendment; and sub-reg. (3) empowered
the Commissioner to direct that the second application
should bear the date of the original application or any
date between the date of the original application and
the date of the second application. But these
provisions on their terms applied in favour only of a
person who, in respect of his original application, was
"a person making application for a patent"; and it
seems clear that they could not have availed the
appellant once his original application had been
determined by the sealing of a patent for the invention
comprised in it."

18. The crucial words there were "a person making an application for a patent" and are to be contrasted with the crucial words presently applicable, namely "an applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn)".

19. The issue in Eimco was the proper construction and application of s.45 of the Patents Act 1952-1955, not s.160 which empowered the Commissioner, in appropriate cases, to extend the time for the doing of an act or the taking of a step.

20. The application for a patent in respect of the excluded invention had been made under the 1952 Act. As Kitto J. said at pp 523-4:-

"That Act, as has been mentioned, applies to and in
relation to all applications lodged after its
commencement. Under its provisions, each claim of a
complete specification has a priority date (s.44), and
that is the critical date for questions of invalidity
depending upon prior publication or use in Australia or
prior grant (s.46). In general, it is the date of
lodgment of the complete specification (s.45(1)).
Where the claim is fairly based upon matter disclosed
in a provisional application, it is the date of
lodgment of that application (s.45(2) and (3)).
Special provision as to the priority date is made,
however, for certain special classes of cases by two
provisions which were inserted by an amendment of s.45
made in 1955, namely, the provisions contained in
sub-ss.(4) and (5). The former of these sub-sections
relates to the case where a person who has applied for
a patent avails himself of a liberty given him by s.51
to make one or more "further" applications in respect
of an invention or inventions disclosed in his first
provisional or complete specification: that is to say,
to divide his fist application into several
applications. But s.51 allows this to be done only
before publication of the complete specification. Where
it is done, and the complete specification lodged in
respect of a "further" application contains a claim
fairly based on matter disclosed in the provisional or
complete specification lodged in respect of the
original application, the priority date of that claim
is the date which would have been its priority date if
it were a claim of the complete specification lodged in
respect of the original application.
The question for decision in this appeal depends upon
the construction of the next sub-section. It is in
these terms: "(5). Where, in respect of an
application for a patent lodged under the repealed
Acts, the Commissioner has required or allowed the
applicant to amend the application and specification
and drawings or any of them so as to apply to one
invention only and the applicant has made an
application under this Act for an invention excluded by
the amendment, the priority date of a claim of the
complete specification lodged under this Act, being a
claim fairly based on matter disclosed in the
provisional specification or complete specification
lodged under the repealed Acts, is the date which would
have been the priority date of that claim if that claim
were a claim of the complete specification lodged in
respect of the application under the repealed Acts".

21. His Honour rejected the submission made on behalf of Eimco that the expression "the applicant" where first occurring in sub-section 45(5) merely identified a person "who, having applied for a patent under the repealed Acts, has made such an amendment or is described, and that the same expression where secondly occurring is simply a second reference to the same person, and carries no implications that the person has the character of applicant in respect of the first application". In rejecting this contention Kitto J. expressed the view that this could not have been the intention of the Parliament because of the surprising results that would have resulted therefrom.

22. In my opinion the relevant expression used in sub-section 51(1) of the Patents Act are so different from the word "applicant" used in s.45(5) and the context of the two expressions are so different, that the reasoning of Kitto J. has no application to the facts of this case. The present case relates to an application being made for an extension of time within which to do an act or take a step specified in sub-section 51(1). The time may be extended even though that time has expired; see sub-section 160(3). Further, in this case since the application for the extension of time is for a period of more than three months, the application must be advertised in the Official Journal; see sub-section 160(4), and the application may be opposed; see sub-section 160(5). These are all matters relevant to the exercise of the discretion but they illustrate that the power is not absolute.

23. Having regard to the relevant expression used in sub-section 51(1) of the Patents Act and the amendments made thereto since first enacted in 1952, in my opinion the contentions made on behalf of the applicant are correct. An applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) remains within that class of persons even after the application has proceeded to grant. The right to make an application conferred on persons coming within that class by sub-section 51(1) continues to exist after the application proceeds to grant. The Commissioner has power to determine any application so made and thus is required to hear and determine the application for an extension of time under s.160 within which to make the application under sub-section 51(1).

24. Accordingly, the decision made by the Assistant Commissioner of Patents should be set aside and the application for the extension of time should be remitted to him to be determined according to law. The Commissioner should pay the costs of this application.