Stamp v W J Powell Pty Ltd [1918] HCA 14; (1918) 24 CLR 339 (20 March 1918)

HIGH COURT OF AUSTRALIA

Stamp Applicant, Appellant; and W J Powell Proprietary Limited Opponents, Respondents.

H C of A

20 March 1918

Barton, Gavan Duffy and Rich JJ.

Schutt (with him J. R. Macfarlan), for the appellant.

Starke, for the respondent.

Barton J. read the following judgment:—

March 20

Barton J.

The objector, who is the respondent, based his opposition on two grounds—(1) "that the invention is not novel," and (2) "that the invention has been described in a book or other printed publication published in the Commonwealth before the date of the application or is otherwise in the possession of the public." These grounds are denoted (e) and (f) among those on which sec. 56 allows an objection to the grant of a patent to be founded.

In such a case it lies on the opponent to show that the patent if granted would be clearly bad on the ground alleged: McGlashan v. Rabett[1]. In that case Griffith C.J. acted upon the principle that the Court "should not refuse to allow the grant of a patent unless it is quite clear that it cannot stand upon the ground of want of novelty"[2]. That applies to both the grounds taken here. It should be proved affirmatively that the invention already exists or has been previously described in print. The question of want of substantial inventive faculty has been to some extent discussed, as it is also in the Commissioner's decision, and in the case cited the Chief Justice pointed out that there are many objections that run more or less into the question of novelty; for instance, that there is no substantial inventive faculty involved in such difference as there may be between the new appliance and others already existing. A good deal was said on that head in the argument.

In the present case it is not necessary, and at this stage it might not be wise, to say more than that the objector has not, in my judgment, discharged the onus laid upon him of establishing that the combination is not new, and in that regard an invention, or that the invention as claimed has ever been described in book or print published in the Commonwealth. He has not enabled one to say affirmatively that any combination substantially identical had ever been used before the appellant lodged his complete specification, or that the same combination had been described in any publication in the Commonwealth. In fact the second of these grounds cannot be said to have been argued by the objector. The various claims in the specification were freely discussed. In effect claim 1 corresponds with the first paragraph of the appellant's statement.

I think the appeal should be allowed.

Of course the conclusion arrived at is no decision that the patent will be valid when granted.

Gavan Duffy J.

I agree.

Rich J.

I agree.

Appeal allowed with costs. Decision of Commissioner set aside with £15 15s. costs to the appellant. Patent to be granted.

Solicitors for the appellant, Fink, Best & Hall.

Solicitors for the respondents, Braham & Pirani.

[1] [1977] FCA 14; 9 C.L.R., 223.

[2] 9 C.L.R., at p. 228.