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High Court of Australia |
RE N.V. PHILIPS GLOEILAMPENFABRIEKEN'S PATENT. (NO. 2) [1967] HCA 53; (1967) 121 CLR 83
Patents
High Court of Australia
Windeyer J.(1)
Kitto(2), Taylor(3) and Owen(4) JJ.
CATCHWORDS
Patents - Extension of term - Patentee inadequately remunerated - Possibility of exploitation of patent dependent upon government policy - No foreseeable possibility of exploitation when patent granted - No remuneration from patent in Australia - Relevance of evidence of overseas earnings - Refusal of extension - Appeal - Matters to be considered - Patents Act 1952-1962 (Cth), ss. 93*, 94(1)**.
HEARING
Sydney, 1966, August 22; September 5. 5:9:1966DECISION
1966, September 5.2. The invention in essence concerns the glass in glass-supported luminescent screens in cathode-ray tubes. It prevents or makes less rapid the discolouration of glass by its bombardment by electrons at high voltages. The claims in the specification are for a cathode-ray tube with a luminescent screen on a colourless glass support, the glass containing cerium and also certain specified chemical compounds in specified quantities. The special quality of the apparatus as thus claimed lies in the glass being of the specified composition. (at p84)
3. If the projection method for television viewing had not been superseded by
the direct viewing method, there would no doubt have
been a considerable
demand wherever television broadcasting existed for cathode-ray tubes made in
accordance with the specification.
But for domestic use direct viewing
apparatus has, speaking generally, taken the place of apparatus in which the
projection method
is used. The deponent F. C. Beunke said in his affidavit of
24th June 1964, speaking of the situation throughout the world:
"After the date of the invention projection tubes were sold
and continued to be sold in substantial quantities until 1956/
1957. However despite the strenuous effort of the petitioner,
the popularity of projection tubes was declining and the use
and popularity of direct viewing tubes increased. Since
1952/1953 there have been limited sales of projection tubes." (at p85)
4. By the time television broadcasting began in Australia the projection tube
type of receivers had already been abandoned elsewhere
in favour of direct
viewing receivers. It never came into ordinary use in Australia. Therefore,
except for some use of the invention
in some forms of radar equipment and in a
small number of what are called flying spot scanning tubes at transmitting
stations, there
has been virtually no market for the invention in Australia.
However, if colour television should be established in Australia it
is likely
that there would be a considerable demand for cathoderay tubes having glass
composed in accordance with the specification.
Beunke in other paragraphs of
the affidavit I have mentioned says:
"Colour television broadcasting experiments took place in the
United States of America in 1941 and in 1950 regular broadcasting
of colour television commenced there on a small scale. When regular
broadcasting commenced there were still a number of problems to be
overcome in relation to the quality of the picture received and the
expense of providing it. Most of these problems have been largely
overcome in recent years and colour television is now more economic
and is becoming more popular in the United States of America. As
far as I am aware substantially all colour television receivers
manufactured there incorporate the invention. Colour television has
also commenced in Japan. However, the tubes used there do not
incorporate the invention due to the fact that they are of smaller
dimensions than those in use in the United States of America and do
not require the use of such high voltages. It is most probable that
when colour television is introduced in Australia the tubes will be
of a similar size to those in use in the United States. Generally,
the tendency in America and Australia is for the size of tubes in
television receivers to be increased rather than otherwise and as a
rule as they increase higher voltages are necessary to obtain an
adequate picture.
Regular broadcasts of colour television have not yet commenced in
Australia but it is believed that there is a real possibility that
they will commence within the next ten years. The experience in
relation to colour television in the United States will assist
greatly in the introduction of it in Australia. Because the
invention is of great importance to cathode-ray tubes of a type
which might be expected to be used in colour television receivers
if colour television were introduced in Australia and because the
other uses to which the invention can be put are very limited the
Petitioner will not be able to properly exploit its invention here
until it is introduced." (at p86)
5. The extensive use of the invention in connexion with colour television in
the United States is the result of the Radio Corporation
there having, in 1950
or thereabouts, developed a direct viewing apparatus for the reception of
colour television. In this apparatus
high voltages are employed. The screen is
thus prone to discolouration. Therefore, as I understood the evidence and what
was put
to me, the petitioner's invention has an important place in such
apparatus. It is not an essential of it because glass that is not
of this
special composition discolours only over a period. But it is advantageous
because it makes the glass resistant to discolouration
which would otherwise
occur and thus increases the useful life of the cathode-ray tube in the
apparatus. (at p86)
6. In short, the invention was virtually out of date for monochrome television when that began in Australia - and the patent expired long before the time when colour television will begin in Australia if it is ever introduced and comes into vogue here. (at p86)
7. The petitioner says that, having had no remuneration in Australia during the life of the patent, an extension should be granted which will enable it to reap advantages that it expects will come if colour television begins in Australia. (at p86)
8. Section 93 of the Act commands me in considering this application to have
regard to-
"(a) the nature and merits of the invention in relation to
the public;
(b) the profits made by the patentee as such; and
(c) all the circumstances of the case." (at p86)
9. Section 94 (1) is as follows:
"If the High Court is of opinion that the patentee has been
inadequately remunerated by his patent, the Court may -
(a) order the extension of the term of the patent, subject
to such restrictions, conditions and provisions (if any)
as the Court thinks fit, for a further term not exceeding
five years, or, in exceptional cases, ten years; or
(b) order the grant of a new patent for such term, not
exceeding five years, or, in exceptional cases, ten
years, as the Court thinks fit, and containing such
restrictions, conditions and provisions (if any) as the
Court thinks fit." (at p86)
10. As the term has already expired, what the petitioner seeks is a re-grant.
As I read s. 94, its effect is that whether the further
term sought is by way
of an order for an extension of the existing term or by way of a new grant,
the allowable limits of five years,
or, in exceptional cases, ten years,
operate in either case as from the date of expiry of the term - in this case
15th March 1964.
The section does not expressly say that is so; but it appears
to be implied: see Ex parte Celotex Corporation; In re Shaw's Patents
[1937] HCA 31; (1937)
57 CLR 19, at p 25 . (at p87)
11. I gather that at one stage a then intending opponent proposed to contend that the present invention lacked merit. The opponent has withdrawn. The affidavit of Professor Douglas of 11th February 1965, read with the other affidavits, satisfies me, in the absence of any evidence to the contrary, that the invention was novel and that it did not lack subject matter. But to justify an extension it is not enough that the invention should have merely such merit as is necessary to sustain a valid patent. (at p87)
12. The petitioner contends that the case is an exceptional one and that therefore I could, and it was urged I should, order a re-grant of the patent for the full term of ten years, that is until March 1974, to enable the petitioner to profit by the institution of colour television in Australia which some deponents ventured to predict on oath would come about before that date. In one sense no doubt this is an exceptional case, because it is an unusual case. Counsel were not able to refer me to any reported case having the same features. Here we have an invention made in Holland for which during the whole life of the patent there has been no significant need in Australia. Since the invention was made, an uncontemplated use for it has arisen in the United States in connexion with a later invention, an instrument for the reception of colour television. It is not enough, however, that the case is of an unusual kind. An exceptional case in the relevant sense is one in which an extension on the ground of inadequate remuneration should be granted and which has exceptional features justifying prolongation beyond the normal limit of five years. When a case for an extension on the ground of inadequate remuneration is made out the extension is granted to enable the patentee to obtain remuneration from his patent, he having been inadequately remunerated. For this reason the period of prolongation depends "not only upon the want of remuneration in the past, but upon the probability of remuneration in the future, and how soon that remuneration is likely to be attained": Stoney's Patent (1888) 5 RPC 518, at p 523 . Mr. Ellicott's argument was that the present case is exceptional because of the unexpected field of use for it in connexion with colour television, a use from which the patentee could only derive any remuneration in Australia if colour television should be established there and that it was likely that it would be established within ten years. I appreciate the force of the argument, but it seems to me to have somewhat shaky foundations. (at p88)
13. I respectfully agree in the observations of Lloyd-Jacob J. in Parker's
Patent (1963) RPC 140 , which echo what Luxmoore J. said
in Perry and Brown's
Patents (1930) 48 RPC 200, at p 214 , that the result of the authorities is
that exceptional cases fall into
three main classes. Some might I think be put
into more than one class for the considerations are cumulative in their
consequences.
These classes are: First, where there is exceptional inventive
ingenuity in the invention itself. Secondly, where the invention is
one of
exceptional benefit to the public. Of this Lloyd-Jacob J. said, correctly I
venture to say, "the authorities show that the
benefit to the public must be
judged in relation to the needs of the time during which the monopoly exists"
(1963) RPC, at p 143
; and I would add of the public in the country of the
patent. The third class was expressed by his Lordship as follows:
"The third is where the invention must necessarily take longer
than usual to be put into operation . . . that is in that type of
case where the surrounding circumstances impose particular
difficulties upon the exploitation of the invention. So far as the
third category is concerned, it is frequently said that a typical
case is that of an invention said to be before its time." (1963)
R.P.C., at p. 143. (at p88)
14. Taking these categories in order in relation to the present case. The
evidence shews that the discovery was the result of patient
and skilful
experimentation with a view to effecting an improvement on the results that it
was already known could be obtained from
the addition of cerium in the
manufacture of glass. But I am not persuaded that there was such exceptional
and inventive ingenuity
in the invention itself as would, without more,
warrant the case being called exceptional. I say this fully recognizing that I
lack
scientific and technical knowledge to evaluate the invention with much
confidence: and moreover the question posed must be always
debatable, because
the concept of exceptional inventive ingenuity is not susceptible of
evaluation by objective criteria. (at p88)
15. As to the second consideration. This is not a case of an invention that has proved to have been of exceptional benefit to the public of Australia. I say that for the simple reason that during the whole life of the patent it was of no real benefit here at all. From the start it was out of date or being supplanted in the field in which it had been hoped it would be used. (at p89)
16. I do not think that it should be regarded within the third category as having come before its time. When an invention is made to meet a particular public need which the inventor has foreseen will arise in the future that is a fact which, along with the inventive ingenuity involved, may well justify an extension when the foreseen need did not eventuate as soon as expected. That is because the inventor is entitled to have the benefit of a monopoly for his invention for a period sufficient to reward him after the particular need arises which he foresaw and which his invention was intended to satisfy. But that is not this case. I was pressed with the decision in Valensi's Patent (1964) RPC 385 . But that case points the very contrast. There the invention was for a method of broadcasting and receiving colour television. That was its whole purpose. Until the broadcasting of colour television began it could not be put to the only use for which it was designed. An extension, which it was assumed would bring it within that time, was therefore allowed. This case is essentially different. (at p89)
17. In my view this is not an "exceptional case" within the meaning of s. 94. The question then is whether the petitioner has made out a case for a re-grant for some period not exceeding five years. How a monopoly for a term, which at latest must end in March 1969, could be of any benefit to the petitioner is not apparent, unless colour television should be established before then or so soon thereafter that before then there would be a demand for apparatus incorporating the invention. But the evidence does not establish or even suggest a probability that there will be any general requirement in Australia for colour television receiving sets before 1969. And the petitioner can build nothing on the use in Australia of its invention in flying spot scanning tubes or radar equipment for it is not shewn or suggested that sales of these in Australia have been or will be of any real profit to it. (at p89)
18. The petitioner seems to have made no profit in Australia from its patent. Rather it has made a loss in maintaining it. The profits that it has made from the exploitation of the invention through corresponding patents in other countries are to be considered. The petitioner must make an accurate and sufficient disclosure to the Court of his profits wherever gained. It was said for the Commissioner that in this case this was not done - and I was referred to a number of cases in which the strictness of this obligation was emphasized. Reported cases in this Court are: In re Robinson's Patent [1918] HCA 35; (1918) 25 CLR 116 ; In re Trufood of Australia Ltd.'s Patent [1920] HCA 87; (1920) 28 CLR 294 ; In re Dunlop's Patent [1922] HCA 43; (1922) 31 CLR 579 ; Ex parte Celotex Corporation; In re Shaw's Patents [1937] HCA 31; (1937) 57 CLR 19 ; In re Johnson's Patent (1938) 61 CLR 50 ; and In re Northey Rotary Engines Ltd.'s Patent [1950] HCA 26; (1950) 81 CLR 332 . To these may be added a more recent case, Re Standard Telephones and Cables (Australasia) Ltd., a judgment of Kitto J. reported only it seems in the Official Journal of Patents, Trade Marks and Designs (1959), p. 1849. The emphatic statements by his Honour in that case have made me look critically at the information which the petitioner has furnished in this case. It is elaborate and carefully compiled, and, I shall assume, accurate. But on the most important aspect, the profits made in the United States, it is based on estimations and hypotheses rather than recorded facts. It was said that the complexity and nature of the arrangements and relationships existing between the petitioner in Holland and the American organizations concerned precluded any more exact statement. There is much in the evidence to support this explanation and the basis of the estimations submitted is carefully set out. Nevertheless I think that the information before me hardly enables me to reach a firm conclusion on this aspect of the case. Taking into account estimated receipts referable to the United States patent, it appears that throughout the world dealings under patents for this invention could be said broadly to have produced net profits amounting to about 33,000 pounds for an expenditure of about 232,000 pounds. But an analysis of the material from which these figures are extracted shews that they are to a large extent estimations and to some extent speculations. If the petitioner had made out a very strong case on other aspects, I might perhaps have taken the facts and figures submitted concerning sales and profits as a sufficient indication of the measure of reward from activities outside Australia. I do not think I need set out here a critical analysis of them. Section 90 requires me to have regard to all the circumstances of the case. These facts and figures are only part of those circumstances. Giving the best consideration that I can to the matter as a whole, I am far from satisfied that a case for an extension was made out. (at p90)
19. On the view I take of the matter I must dismiss the petition. The petitioner must pay the Commissioner's costs, including reserved costs. (at p91)
20. Petition dismissed. The petitioner to pay the Commissioner's costs, including reserved costs. (at p91)
21. From this decision the applicant appealed to the Full Court of the High Court. (at p91)
22. R. J. Ellicott Q.C. and R. V. Gyles, for the appellant, referred to Re Smith's Patents (1922) 39 RPC 313, at p 322 ; In re Robinson's Patent [1918] HCA 35; (1918) 25 CLR 116, at p 119 ; Re Perry and Brown's Patents (1930) 48 RPC 200, at pp 213,214 ; Ex parte Celotex Corporation; In re Shaw's Patents [1937] HCA 31; (1937) 57 CLR 19 ; Pomieraniec's Letters Patent (1947) 65 RPC 33, at p 38 ; Re Standard Telephones and Cables (Australasia) Ltd., Official Journal of Patents, Trade Marks and Designs (1959), at p. 1849; Valensi's Patent (1964) RPC 385 ; Parker's Patent (1963) RPC 140 . (at p91)
23. H. W. Robson, for the respondent, referred to Re Stoney's Patent (1888) 5
RPC 518 ; In re Trufood of Australia Ltd.'s Patent
[1920] HCA 87; (1920) 28 CLR 294, at pp
301,303 ; Western Electric Co. Inc.'s Letters Patent (1965) RPC 335 ; American
Cyanamid
Co.'s Patent (1966)
RPC54, at p 60 .
Cur. adv. vult.
1967, October 24.
THE COURT delivered the following written judgment:-made to this Court under Pt IX of the Patents Act 1952-1962 (Cth) for an extension of the term of a patent on the ground of inadequate remuneration, is an appeal of a kind which is not permitted in the United Kingdom: see Patents Act, 1949 (U.K.), s. 87 (2). It is within the jurisdiction of this Court by virtue of s. 73 (i.) of the Constitution, the Parliament not having made any relevant exception or regulation under that provision. Leave to appeal would have been necessary had the judgment appealed from been a judgment of a justice sitting as the appeal tribunal under Pt XVII of the Act: see s. 151; but no provision requiring leave is made with respect to appeals from orders under Pt IX. (at p91)
This appeal, which is from an order of a justice refusing an application
2. The character of the appeal must be kept in mind throughout the consideration of the matter. It is an appeal against a discretionary judgment, and therefore not one in which an appellate court is entitled to substitute its opinion for that of the judge of first instance merely because he has taken a view which the appellate judges would not have taken if they had been in his place. The discretion must somehow have miscarried if the judgment is not to stand: see Mace v. Murray [1955] HCA 2; (1955) 92 CLR 370, at p 378 , and the line of cases in this Court which are there cited. It may, of course, miscarry in a variety of ways. One is that no weight, or no sufficient weight, has been given to relevant considerations: Charles Osenton & Co. v. Johnston (1942) AC 130, at p 138 ; and the appellant's contention is that in several respects the learned judge omitted to give due weight to considerations which should have told in favour of an extension. (at p92)
3. The application required in the first place a decision as to whether the appellant as Australian patentee had been inadequately remunerated by his Australian patent, that is to say whether, from making, using, exercising and vending the invention in Australia under the protection which the patent gave against competition, the patentee had not derived profits or advantages which were adequate remuneration for the benefit it conferred upon the public of Australia by presenting the invention to be freely used after the end of the monopoly period: In re Robinson's Patent [1918] HCA 35; (1918) 25 CLR 116, at p 119 . If his Honour had been in favour of the appellant upon that question a further question for discretionary decision would have presented itself, namely for how long (and subject to what (if any) restrictions, conditions and provisions) the term of the patent should be extended or a re-grant ordered; and the new period could not have exceeded five years or, if the case were considered exceptional, ten years: s. 94. Upon both questions it was necessary to have regard to (a) the nature and merits of the invention in relation to the public, (b) the profits made by the patentee as such, and (c) all the circumstances of the case: s. 93. (at p92)
4. It is necessary first to indicate briefly what was the problem which the invention solved and how the solution was reached. The problem was to obviate discolouration which had been found to occur in the glass support of the layer of luminescent material which forms the screen of a cathode-ray tube. It was a problem associated particularly with the use of high voltages, as in some forms of radar equipment, flying spot scanning at television transmission stations, television reception by the projection method, and colour television reception by the method of direct viewing. A known cause of discolouration was the action of X-rays generated in the glass by the bombardment with electrons which in the operation of the tube are directed at the luminescent material; and a known method of countering that type of discolouration was to introduce cerium into the composition of the glass. It had been found, however, that when the X-ray discolouration had been thus dealt with there remained another type of discolouration, differing from the former in this amongst other things that instead of being homogeneous over the whole screen it was interspersed with minute holes, suggesting that the luminescent grains of the screen had protected the glass from the bombardment of the high-voltage electrons. This suggestion was reinforced by the fact that the discolouration, or "burning", of the glass was most prominent where the luminescent material of the screen was thinnest. The inventors surmised that the bombardment by electrons was causing electrolysis of some of the constituent materials of the glass such as would occur if metal electrodes of different potentials were embedded within the glass; but before this surmise could have sufficient probability about it to justify its adoption as a working hypothesis a credible theory had to be evolved to explain how an electrical field was being created within the glass without the insertion of metal electrodes. The inventors evolved such a theroy. In effect it was that high energy electrons, passing through the luminescent layer, penetrated the glass so far as their energy would carry them, and there established a plane of electrons possessing residual energy; that this plane was acting as a negative electrode and the surface of the glass as a positive electrode; that between the two a field was being created in the glass, one of the constituent substances, sodium oxide, being a ready conductor; that electrolysis of some of the readily reducible constituents of the glass was resulting from the electrolytic process, lead oxide for example being reduced to lead and the lead forming "lead trees" resembling those to which discolouration is known to be due where metal electrodes are incorporated in glass. The conclusion which this theory supported was that the discolouration in question would be obviated by employing as the support for the luminescent material a glass of low electrical conductivity - made so by the presence, not of a higher proportion of lead oxide as a glass technologist might have been inclined to think, but of a greatly diminished proportion of lead oxide and other readily reducible compounds and a diminished proportion also of the conductor sodium oxide. An investigator who sought a solution of the problem of discolouration without first having arrived at this conclusion would have had to experiment with a vast range of glasses of various compositions; but, by adopting the hypothesis of electrolysis and reasoning from that to the conclusion we have mentioned, the inventors were able to confine their experiments within a narrow field. Even so, much patient work went into the task of finding by trial and error what compositions within the indicated range would yield the desired result. In the end they found a solution for a problem upon which others had been, and were even then, working unsuccessfully. (at p94)
5. The appellant's contention that as patentee it had been inadequately remunerated during the term of the patent rested primarily upon the fact, of which the learned judge was satisfied, that in Australia it had made no profit at all from the invention. The use of the invention for radar equipment and flying spot scanning tubes had yielded little; and so had its use for the projection method of television viewing, for that method had been superseded quite early by the direct viewing method and direct viewing had been confined to monochrome reception for which high voltages were not required. The only source from which substantial profits might have been expected was the use of the invention in colour television receiving sets; but this source had produced nothing, for without a licence television transmission was unlawful by reason of the provisions of s. 6 (1) (b) of the Wireless Telegraphy Act 1905-1950 (Cth), and throughout the term of the patent the Australian Government had set its face against granting licences for colour television transmission. In the result, the appellant, through no fault of its own, had actually lost money in its endeavours to exploit the invention in Australia. (at p94)
6. We do not think that the case thus made lost strength by reason of the appellant's inability to give definitive evidence of the amount of the profits that the invention had yielded in other countries. The amount of those profits was put as having been of the order of $67,000 Australian, but his Honour found himself unable to reach a firm conclusion as to what they were, for he regarded the evidence as consisting largely of estimations and speculations. The comment is fair, and it may be added, as counsel for the Commissioner has pointed out to us, that although the figures that were put before the Court had been worked out with some elaboration they treated as the patentee's overseas receipts from licences an amount representing what would have been recieved if licences had been granted at usual rates, whereas the licences were in fact given, in many instances at least, under systems of cross-licensing, so that the patentee derived in respect of the subject invention an undefinable share of the undefinable value of the licences granted to it, plus, possibly, some undefinable addition to the value of its goodwill due to its possession of those licences (as to which see In re Trufood of Australia Ltd.'s Patent [1920] HCA 87; (1920) 28 CLR 294, at pp 303, 304 ; Western Electric Co.'s Patent (1965) RPC 335, at p 344 .) It is important, however, to bear in mind why it is that the Court has always insisted upon being informed of the profits and advantages derived in other countries in respect of an invention for which an extension is sought. It is that consideration of those profits and advantages among the other circumstances of the case may affect the application in more ways than one. Where the patentee has received some remuneration in Australia the question of the overseas benefits generally may well bear upon the question whether the remuneration in Australia should be considered adequate, as well as upon the questions of discretion which arise when the conclusion is reached that in fact the remuneration of the patentee as such has not been adequate. On the other hand, where no Australian remuneration has been received and therefore the condition precedent of an order for extension, namely that the patentee as grantee of the Australian patent has not been adequately remunerated by his patent, is necessarily fulfilled (see Ex parte Celotex Corporation; In re Shaw's Patents [1937] HCA 31; (1937) 57 CLR 19, at pp 23, 24 ), the question of the overseas benefits may nevertheless affect the exercise of the Court's discretion to grant or refuse an extension, or its judgment as to the appropriate length of any extension it may grant. (at p95)
7. In the latter class of cases it seems to us that, in some instances at least, the Court may well find its purposes sufficiently served, so far as the question of overseas benefits is concerned, by evidence which falls short of providing complete information, so long as the Court is satisfied that all the assistance that is reasonably available has been provided. That seems to be the case here, and we should not have been ready to dismiss this appeal because of paucity of evidence on this subject. (at p95)
8. We should add that we do not regard the case as one in which the nature and merits of the invention, in relation to the public or generally, were unimpressive. In the first place, the disclosure of the invention seems on the evidence to have given the Australian public something of substantial value. While it is true that an effect of the statutory prohibition in respect of colour television was to postpone the utility of the invention in Australia, the disclosure of it by the patentee was valuable because it made generally available a knowledge which, when colour television is ultimately allowed into the country, will in all likelihood result in markedly more satisfactory and economical use of that medium of communication. We say "when" and not "if" in order to indicate our opinion that it would not be right to regard the future utility of the invention as subject to such a contingency that it ought to be dismissed from consideration as merely speculative. The probability of colour television transmission being permitted in this country sooner or later ought, we think, to be recognized as so substantial that the use of the invention in this field is only postponed. We must be allowed to know that television (though at present only in monochrome) provides a very large section of the public in Australia with a means of entertainment which it values and enjoys and of which it is likely to avail itself increasingly as automation in industry and other developments progressively enlarge leisure time. (at p96)
9. In the second place, the invention appears to us to have been one of
considerable merit by reason of the ingenuity which the
development of the
electrolysis theory displayed as well as the more commonplace work which was
required for the employment of the
theory in working towards a solution of the
problem. We do not say that the ingenuity was superlative, but one ought not
to put aside
the only expert evidence about it. Professor R. W. Douglas, the
professor of glass technology in the University of Sheffield, who
spent thirty
years in the research laboratories of General Electric Co. Ltd. and was there
concerned with the solution of technical
problems arising in the company's
lamp and valve works, has expressed the opinion (which no other technically
qualified person refuted
in the evidence which the Court had before it) that
the inventors, in conceiving their hypothesis of electrolysis, showed an
acuteness
of observation and a measure of imaginative thinking going beyond
the levels usually reached by technologists. When one turns from
the ingenuity
of the invention to its nature and merits in relation to the public it is
necessary to give weight to Professor Douglas's
description of the invention
as having overcome an important problem which did not admit of a routine
solution, and to his view that
the work of the inventors has been of
substantial practical value to glass technology in its application to high
energy electronic
devices. Then, to the technical merit of the invention must
be added its economic value. The evidence stands uncontradicted that
a
projection tube made otherwise than in accordance with the invention would
give a reasonable picture for only five to twenty-five
hours, depending on the
glass and the current in the electron beam, but that a similar tube conforming
with the complete specification
can still be used after 200 to 1,000 hours,
depending on the glass.
"A tube of non-conforming glass", it is said, "would have
to be exchanged so many times during a reasonable life of a
television receiver that the cost would be prohibitive. In
exchanging a tube it is also necessary to refocus the tube with
precision and this also makes it expensive to have to exchange
a projection tube. For this reason it can be said that projection
tubes for television are an impossible proposition from an
economic point of view without the use of the subject invention.
This is also true for flying spot and radar tubes as soon as the
high voltage is of the order of 25,000 volts or higher." (at p97)
10. But it is not enough that the Court should conclude that the patentee as
such has derived no remuneration from the patent and
that if the nature and
merits of the invention in relation to the public, and generally, and the
profits made by the patentee as
such were the only matters to be considered,
the case for extension might be made out. The Court is specifically required
to regard
all the circumstances of the case. Among the circumstances is the
fact that the failure of the patent to yield the appellant a remuneration
has
been due to the single cause that by reason of the inherent character of the
invention the patent was from the beginning incapable
of yielding a profit to
the patentee unless the Government should see fit to grant licences for colour
television transmission. It
was notorious at the time when the invention was
patented internationally that if it were to be disclosed to the public in
return
for the monopoly rights which patents would give, the possibility of
receiving a return in each country from colour television must
necessarily
depend upon governmental decisions in that country to permit colour television
transmission. So far as Australia was
concerned it was common knowledge,
first, that the granting of the requisite licences was and would remain
contingent upon a positive
decision being reached by the responsible Minister
to lift the statutory prohibition to the requisite extent; secondly, that such
a decision would depend, to some extent if not altogether, upon governmental
opinion as to the public interest in the light of economic
considerations;
and, thirdly, that there was at that time no prospect of colour television
being permitted in Australia immediately
or in the foreseeable future. The
appellant decided nevertheless to disclose the invention. It must have
addressed itself to the
question whether the risk that a patent in any one
country would expire before colour television should be permitted in that
country
was a risk worth taking for the sake of getting profits from the
invention in countries where television might be introduced while
the patents
there remained in force. The one decision had to be taken in respect of all
the relevant countries. Consequently we do
not need to know with any greater
certainty that the evidence affords what profits have been received outside
Australia during the
original and any extended periods of patent protection in
the countries where patents were obtained. Whatever those profits have
been,
the position in regard to Australia is simple: the appellant has had the
patent protection for which it bargained: it must
have known that unless
governmental policy in regard to colour television should change no
remuneration would be received from that
source and little was likely to be
received from any other; in fact governmental policy did not change; therefore
the appellant,
although as Australian patentee it has not been adequately or
at all remunerated by its patent, has not received less than it agreed
to
accept in the events that have happened. We say "agreed to accept", because as
Sir William Erle pointed out in speaking for the
Privy Council in In re
Herbert's Patent (1867) LR 1 PC 399, at p 402 , the privilege of a patent is
"somewhat in the nature of a
contract with the public", and the grant of an
extension of the term is in fact the taking away (pro tanto) of (the benefit
of) that
contract from the public. The situation would no doubt have been
different if the statutory prohibition of television transmission
had been
unexpectedly applied to colour television after the appellant's election to
take out patents had been made. The resulting
interference with the
opportunities that might fairly have been looked for in Australia during the
monopoly period would then have
been a circumstance favourable to an
extension. But as it is, a submission which counsel made to Lloyd-Jacob J. in
Parker's Patent
(1963) RPC 140, at p 141 may be accepted as correct in this
case:
"The patentee . . . must have applied for and maintained
the patent in the hope that sooner or later there would be a
change in transmission standards here. . . . It is like patenting
a corkscrew in a prohibition country. . . . In the circumstances
the application was a wager." (at p98)
11. For this reason we are of opinion that no extension should be granted,
and the appeal should be dismissed. (at p98)
ORDER
Appeal dismissed. Order that the appellant pay the costs of the Commissioner of Patents of the appeal.
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