Australian Radio Manufacturers' Patents Association Ltd v Neutrodyne Pty Ltd [1937] HCA 86; (1937) 57 CLR 27 (11 June 1937)

HIGH COURT OF AUSTRALIA

H C of A

11 June 1937

Latham C.J., Dixon and McTiernan JJ.

Gain, for the appellant.

Lewis (with him Dean), for the respondent.

Sholl, for the Deputy Commissioner of Patents.

Lewis took a preliminary objection that the appeal was not competent.

Gain, in reply to the objection.

Lewis, in reply.

The following judgments were delivered:?

Latham C.J.

This is a proceeding by way of appeal from an order made by the Deputy Commissioner of Patents. The respondent in these proceedings, Neutrodyne Pty. Ltd., applied under sec. 71 of the Patents Act 1903-1935 for leave to amend certain specifications. A notice of opposition was lodged by the appellant, the Australian Radio Manufacturers' Patents Association Ltd. It was objected by the patentee applicant that the present appellant was not entitled to be heard before the deputy commissioner for various reasons, which may be summed up in the statement that the present appellant had not sufficient interest to entitle it so to be heard. By arrangement between the parties, and at the request, I should say, of Neutrodyne Pty. Ltd., the deputy commissioner determined this question of locus standi in the first instance. He has decided that the opponent has no locus standi, and has awarded costs against the opponent.

The opponent gave notice of appeal, and the matter is now before the court in pursuance of that appeal. A preliminary objection has been taken by the respondent. That objection is that the appeal is incompetent. Secs. 75 and 76 are the sections which entitle a person to appeal to this court or to a Supreme Court in relation to amendment proceedings. Sec. 75 says: "The commissioner shall hear the person making the request and, if he appears, the person so giving notice, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed, subject however to an appeal to the High Court or the Supreme Court."

Sec. 76 then deals with the matter when it is before the High Court or the Supreme Court. The objection is that, under sec. 75, it is provided that the commissioner may determine whether and subject to what conditions, if any, the amendment ought to be allowed, and, accordingly, that the only order which the commissioner may make under that section is an order so determining whether or not the amendment ought to be allowed. Only such an order is subject to appeal to the High Court. No such order has been made. All that has been done is that the commissioner has declared that, in his opinion, the opponent has no locus standi. The order in relation to which sec. 75 provides that there shall be an appeal is an order of a kind which has not been made in these proceedings.

In my opinion, therefore, the preliminary objection is a good objection and the appeal must be dismissed. As to costs, the court has been informed that the opponent proposes to move immediately for a writ of mandamus. I think that such an application should be heard at once, and that the question of costs of the appeal should be reserved until the court has heard any application for a mandamus. The form of order, in my opinion, should be that the appeal should be struck out, and not that the appeal should be dismissed as though it had been heard.

Dixon J.

I agree. I think that the only appeal given by sec. 75 and sec. 76 is against a determination of the commissioner made pursuant to sec. 75. Sec. 76 seems to me to confirm that view, because the jurisdiction which it gives to this court is to determine whether and subject to what conditions, if any, the amendment ought to be allowed.

McTiernan J.

I agree that the preliminary objection is well founded, and that the appellant should be allowed to make an application as stated by the Chief Justice.

Application for mandamus dismissed with no order as to costs; and in the appeal, appeal struck out, appellant to pay the costs of the respondent, Neutrodyne Pty. Ltd. and of the commissioner.

Solicitors for the appellant, A. N. Harding & Breden.

Solicitors for the respondent, Herman & Coltman.

Solicitor for the Deputy Commissioner of Patents, H. F. E. Whitlam, Crown Solicitor for the Commonwealth.