Potter v Dickenson [1905] HCA 26; (1905) 2 CLR 668 (18 August 1905)

HIGH COURT OF AUSTRALIA

Potter Objector, Appellant; and Dickenson Applicant, Respondent.

H C of A

On appeal from the Supreme Court of Victoria.

18 August 1905

Griffith C.J., Barton and O'Connor JJ.

Mitchell K.C. and Agg, for the appellant.

Coldham and Cussen (with them Sproule), for the respondent.

Agg in reply

Griffith C.J.

This is an appeal from a decision of the Full Court dismissing an appeal from the law officer on an appeal from the Commissioner of Patents. The question arises under the provisions of the Patents Act 1890, and relates to a sum of £350 awarded by the Commissioner to the petitioner as against the objector, who is the appellant in the present case. The respondent applied for a patent, and the appellant lodged objection to the grant. The procedure laid down by the Patents Act 1890 in that event is that a time is to be appointed by the Commissioner to hear the application and the objection. At the time appointed the Commissioner hears the parties, and if he is satisfied of the novelty of the invention, and if his determination is in favour of the patent, he issues a warrant under his hand for the grant of the patent. The Act authorizes the Governor-in-Council to make rules of procedure, and, under the rules which have been made, the objector is required within a limited time to put in statutory declarations or other evidence, and within a further limited time the applicant is required to put in his statutory declarations or other evidence in answer, and within a further limited time the objector must put in his statutory declarations or other evidence in reply. The Commissioner then appoints a day for hearing the case on that evidence. All those things were done in the present case, the respondent being represented by a patent agent. The Act also provides for rules being made for the licensing of patent agents, and it is the recognized practice for patent agents to appear on behalf of parties to applications for patents, to prepare the evidence, and to get up the case just as a professional man does in a Court of law. Sec. 29 (3) provides that the Commissioner:—"May by summons under his hand require the attendance of all such persons as he thinks fit before him for examination, and may by writing under his hand order to be paid to any such persons summoned at the request of any applicant patentee petitioner objector or other party such reasonable remuneration for their attendance as he thinks fit, and may also in like manner order that such remuneration and the costs of and incidental to any such appeal or to the hearing of any such application petition or other proceeding or matter under this Act shall be paid by any applicant patentee petitioner objector or other party, and to whom such costs shall be paid, and in and by such writing may fix the amount of such remuneration and costs. Every such order shall be in the form contained in the Fourth Schedule hereto or to the like effect and may be made a rule of the Supreme Court." In the present case the Commissioner decided in favour of the grant of the patent, and issued his warrant for granting it, and ordered the appellant to pay the respondent £350 for costs. The present appellant then appealed to the law officer, the Attorney-General, who dismissed the appeal; the appellant then appealed to the Supreme Court, who also dismissed the appeal. He now comes to this Court. An objection was taken by the respondent in the first place that no appeal lies from the Commissioner in such a matter as the present. It is clear that no appeal lies unless it is given by the Act. The power given to the Commissioner is to order "the costs of and incidental to" the hearing of an application to be paid, and to fix the amount of such costs. That order is final unless an appeal is given. The appellant relies on sec. 28 which provides:—"(i.) Any applicant ... or objector ... who is aggrieved by any decision or determination of the Commissioner in respect of such application petition proceeding or matter may within fourteen days from the giving of such decision or the announcement by him of his determination appeal to the law officer." "(iii.) The law officer shall at a time and place to be fixed by him proceed to rehear and determine the matter of such appeal, and may reverse vary or confirm the decision or determination of the Commissioner." But what is to follow? The law officer is to do one of two things, he may issue a warrant for the granting of a patent to the applicant, or he may decline to issue such warrant. That is to say the duty of the law officer on the hearing of an appeal from the Commissioner is to issue his warrant for granting a patent, or to decline to issue his warrant. There is apparently nothing in those words applicable to an appeal from an incidental order for costs. The section dealing with costs is sec. 29, which uses different language, and, in particular, provides that the Commissioner may order the costs of the hearing of an application to be paid by the applicant or by the objector, and may fix the amount of them. Upon those sections alone I think it is tolerably clear that the Commissioner is, as was said by Lopes L.J., in the case of Earl of Shrewsbury v. Wirral Railways Committee[1], put in the postion of an arbitrator from whose decision there is no appeal unless expressly given, and I cannot find anything which gives an appeal. But, even if there is any doubt whether an appeal lies from the Commissioner to the law officer, I think it is quite clear that there is no appeal from the law officer to the Supreme Court. An appeal to the Supreme Court is given by sec. 33, which provides that:—"(i.) If any applicant patentee petitioner objector or other person as aforesaid be dissatisfied with the refusal of the law officer to issue his warrant for the granting of a patent or with any other decision of the law officer with respect to any proceeding or matter under this Act, such applicant patentee petitioner objector or other person as aforesaid may appeal to the Supreme Court. (ii.) No such appeal shall be entertained unless before entering the same a certificate under the hand and seal of the Commissioner that the appellant has paid all costs (if any) ordered by the Commissioner or law officer to be paid by him in respect of any matters arising out of the application petition or other proceeding or matter is produced to the proper officer of the Supreme Court." If that were held to apply to an appeal as to costs, there would be the extraordinary position that no appeal as to costs would be allowed except on condition that the appellant produces a certificate that he has paid those costs. I am unable to entertain any doubt on the construction of the Act that no appeal lay either to the law officer or to the Supreme Court in this case. It is possible that the remedy by mandamus or certiorari, suggested by Rigby L.J., in Earl of Shrewsbury v. Wirral Railways Committee[2], may be available, but I express no opinion whether a remedy of any sort exists.

That, of course, is sufficient to dispose of the matter. But, as what may be called the merits of the objection taken by the appellant to the decision of the Commissioner were argued, I think it right, although not necessary, to express an opinion upon them. It may be said that what I now propose to say is an extrajudicial utterance, but I have the example of the Lords of the Privy Council in several cases.

What the Commissioner is authorized to award is "costs." The term "costs" was first introduced in a Statute of Edw. I., and it clearly means the expenses to which a party is put in litigation. What it means in the section under consideration is some expense to which the party is put. It is contended that the costs must be limited to such costs as could be recovered in an action in a Court of law. Why? In a Court of law no doubt the term "costs" is used often in a limited sense, and no doubt in connection with an action in a Court of law, in which a party can only be represented by a solicitor, the meaning is to a certain extent limited. But in a Court of law the term "costs" includes not only payments for proceedings in Court, and other matters which can only be done by a solicitor, but also payments out-of-pocket, such as for Court fees, and for securing the attendance of witnesses. All these are "costs." The term also includes the expenses of commissions to foreign countries to take evidence. It includes all the necessary expenses of a party in establishing his case. When we speak of costs between solicitor and client, another distinction comes in between profit costs and out-of-pocket costs. As far as the client is concerned they are all out-of-pocket costs, but he will only be allowed to recover from the other party the proper charges incurred in establishing his case. The question cannot arise in the Supreme Court in respect of any other person than a solicitor, because it is not lawful for any other person to act as an agent in legal proceedings. The principle is that there are many things in connection with an action which the party cannot do himself, and therefore he must employ an agent, and necessary payments to that agent are allowed. In proceedings in Courts of law only one kind of agent is allowed to act, and, if payments are made to any other person for acting as agent, they cannot be recovered from the other party. But if several classes of agents might be employed, payments made to any of them might be recovered. Thus at one time solicitors, attorneys and proctors were each employed for a different class of business. Payments made to a member of any one of these classes of persons, for work which might properly be done by a member of one of the other classes only, could not be recovered from the other party. Afterwards, when all three classes might do any kind of legal work, payments to them could be recovered because it was money properly expended in establishing the party's case. If that be the principle, why should it not extend to a patent agent, who may be lawfully employed in conducting proceedings before the Commissioner. There is a great deal of work to be done in preparing the case for hearing, and the applicant cannot be expected to know all about it, and therefore he is entitled to employ an agent and to pay him remuneration for the work done. The expenses so incurred are costs, and the amount of those costs may be fixed by the Commissioner. Objection was taken in this instance to a sum of about £200 paid for qualifying fees to witnesses. Most of the persons to whom those fees were paid made affidavits. It is clear that, in an action in the Supreme Court in which those facts had to be proved, those fees might be allowed on taxation. Order LXV., r. 27 (9) of the Rules of the Supreme Court 1884 expressly provides that such fees may be allowed in all cases, whether under the higher or lower scale of costs. The rules authorized to be made under the Patents Act 1890 adopt the lower scale of costs. I have no doubt that these fees were properly allowed in respect of preparing the affidavits, or that in the Supreme Court they would have been allowed.

There is only one other matter to which I will refer, and I only do so because it has been so strenuously argued on behalf of the appellant. Sec. 29 (3) of the Patents Act 1890 authorizes the Commissioner to order:—"to be paid to any such persons summoned at the request of any applicant patentee petitioner objector or other party such reasonable remuneration for their attendance as as he thinks fit, and may also in like manner order that such remuneration ... shall be paid by any applicant patentee petitioner objector or other party." It is contended for the appellant that no remuneration can be ordered to be paid to any person not summoned by the Commissioner. In the present case only one witness was examined, but whether a summons was issued before he attended for examination is a matter of pure detail. He was called with the consent of the Commissioner, and whether he was summoned or not is immaterial.

As to the amount allowed, that is a matter for the Commissioner. He, having jurisdiction to allow costs, had jurisdiction to include in them what he considered a fair remuneration to the patent agent for the services he rendered to the applicant in applying for and obtaining the warrant for the patent. If the sums which the Commissioner properly fixed for the services of the patent agent, or for the services of the witnesses whom he called, are in respect of matters that could properly be allowed, they were matters for the exercise of his discretion, and they cannot be the subject of an appeal as to the manner in which he exercised his discretion. I say so much because I am of opinion that the appellant has no cause of complaint at all. In my opinion the appeal should be dismissed on both grounds.

Barton J.

I concur on all points.

O'Connor J.

I am of the same opinion.

Appeal dismissed with costs.

Solicitors, for appellant, Braham & Pirani, Melbourne.

Solicitors, for respondent, Moule, Hamilton & Kiddle, Melbourne.

[1] (1895) 2 Ch., 812.

[2] (1895) 2 Ch., 812.