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Eimco Corporation v Commissioner of Patents [1960] HCA 1; (1960) 103 CLR 521 (19 January 1960)

CATCHWORDS

HEARING

DECISION

2. There are two appellants, each a corporation. Only the firstnamed has a locus standi in the appeal, and I shall refer to it as the appellant. The other has joined in the appeal because of a beneficial interest which it claims in the subject matter of the application out of which the appeal arises. (at p522)

3. The direction appealed against related only to the proper priority date for the several claims of a complete specification lodged by the appellant in connexion with an application for a patent. In accordance with s. 47 (2), the Examiner's report dealt with the priority dates which the appellant, in compliance with s. 44 (2), indicated as the dates which it considered to be the proper dates under the Act. The report was adverse. The appellant declined to amend the dates, and in the situation so arising the Commissioner (and therefore a Deputy Commissioner: s. 6) had power under s. 49 (2) to direct an amendment. The Deputy Commissioner considered that the Examiner's view was correct and directed an amendment to give effect to it. The appeal is from that direction. (at p522)

4. The relevant facts are admitted. On 17th August 1953 the appellant lodged an application for a patent under the legislation then in force, which was the Patents Act 1903-1950 (Cth). The application was for a convention patent under s. 121 of the Act, a basic patent having been applied for in the United Kingdom on 15th June 1953. On 1st May 1954 the Patents Act 1952-1955 (Cth) commenced. It repealed the earlier legislation, but it provided in s. 5 (subject to immaterial qualifications) that while its own provisions should apply to all applications lodged thereafter and to all patents granted either on those applications or under the repealed Acts, the repealed Acts should apply, notwithstanding their repeal, to all applications already lodged and to the sealing of patents on those applications. Accordingly the appellant's application was dealt with under the repealed Acts. An objection having been raised in the Patents Office (under s. 65 of the Act of 1903) that the complete specifications included more than one invention, the Commissioner exercised his power under reg. 11 (2) of the Patents Regulations 1912 to require or allow the appellant to amend the application, specification and drawings, so as to apply to one invention only. The amendment was made, and a patent on the application as amended was sealed on 25th September 1956. On 15th October 1956 the appellant made an application for a separate patent in respect of the invention which the amendment had excluded. (at p523)

5. 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. (at p523)

6. But the appellant's application for a patent for the excluded invention was not made until after the commencement of the new Act. 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 first 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. (at p524)

7. 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". (at p524)

8. That priority date is fixed by s. 5 (4). The appellant's contention is that not only is there an absence of any express words in s. 45 (5) to confine the benefit of the provision to cases where the application for a patent for an excluded invention is made while the original application is still proceeding, but there is nothing in the provision or its context from which an intention so to confine it should be inferred. In particular, the argument proceeds, the expression "the applicant" where first occurring merely identifies the person who, having applied for a patent under the repealed Acts, has made such an amendment as is described; and the same expression where secondly occurring is simply a second reference to the same person, and carries no implication that the person still has the character of applicant in respect of his original application. (at p524)

9. If this is correct, the appeal must succeed; but its consequences are startling. Not only a person who, like the appellant, lodged his original application shortly before the new Act came into force, but every person who applied for a patent at any time between the passing of the first Patents Act in 1903 and the repeal of that Act, and who excluded an invention from his application in order to restrict it to one invention, upon applying for a patent for the excluded invention at any time in the future, would be entitled to take as the priority date of his claims the date of his original application. A more unlikely intention it is difficult to imagine. In order to give the provision a more sensible operation, by confining its operation to dealing with the situation to which the former reg. 11 (3) was directed, even some straining of language would seem justified, if it were necessary. But in fact all that is necessary is to adhere to the natural meaning of the words used. The expression "the applicant", in the two places in which it occurs and especially in the second, suffices, if only one credits the draftsman with a precise use of words, to give a clear indication that the sub-section, in speaking, both at the beginning and at the end, of an application for a patent lodged under the repealed Acts, is referring only to an application which is still an application in course of being prosecuted. More explicit language, might, no doubt, have been employed in order to put the point beyond argument; but the intention seems to me to be clear enough. (at p525)

10. In my opinion the Deputy Commissioner correctly interpreted s. 45 (5). The appeal from his direction therefore fails. (at p525)

ORDER