R v Commissioner of Patents [1939] HCA 7; (1939) 61 CLR 240 (30 March 1939)

This is the return of an order nisi for a writ of prohibition against the Commissioner of Patents to prohibit him from proceeding to hear and determine opposition by "Ernst Lufft and Stanley Lufft trading together in partnership as E. Lufft and Son" to the grant of two patents relating to rotary intaglio printing which were applied for on 8th May 1935 by the prosecutor Adolf Weiss.

On 1st July 1936 "E. Lufft and Son" gave notice of intention to oppose the grants. This notice was given within four months from the advertisement of the acceptance of the complete specifications, the time for giving the notice having been extended by the commissioner under sec. 56 of the Patents Act 1903-1935. The evidence in support of the opposition showed that "E. Lufft and Son" was the name of a firm consisting of Ernst Lufft and Stanley Lufft. The business of the firm included the representation in Australia of a manufacturer of rotary intaglio printing-presses. The opposing firm claimed that it had sufficient interest to oppose because, if the patents were granted, it was probable that its business of selling printing-presses as agents would be prejudiced.

Objection was taken by the applicant that the firm was not a person within the meaning of sec. 56 of the Patents Act. Sec. 56 provides that "any person" may within the time prescribed by the section give notice of opposition to the grant of a patent. Sec. 57 is as follows: "Where such notice is given the commissioner shall give notice of the opposition to the applicant, and shall at the time and in manner prescribed hear and decide the case." Sec. 58 provides that any party aggrieved by the decision of the commissioner may appeal to the High Court or the Supreme Court. Sec. 59 provides that the High Court or the Supreme Court may hear the applicant and any opponent who in its opinion is entitled to be heard in opposition to the grant and may determine whether the grant ought or ought not to be made.

There is no definition of in the Patents Act, and the definition in the Acts Interpretation Act 1901-1937, sec. 22 (a), includes in the meaning of "person" a body politic or corporate as well as an individual, but not a firm. In contrast the Trade Marks Act 1905-1936, sec. 4, provides that "person" includes a firm. The applicant relies upon Sadler v. Whiteman[1], where, in a well-known judgment, Farwell L.J. said that in English law a firm as such has no existence, the firm-name being "a mere expression, not a legal entity." (See also Von Hellfeld v. Rechnitzer and Mayer Frères & Co.[2].)

It was contended that the power of the commissioner to hear and decide the opposition existed only "where such notice is given" (sec. 57) and that, if no "such notice" of opposition had been given (that is, notice of opposition by a person (sec. 56)), the commissioner had no power to proceed with the hearing and determination of the opposition. Upon the hearing before the commissioner on 13th November 1937 application was made for an amendment of the notice of opposition. The applicant for the patent objected that the commissioner had no power to amend a non-existent notice of opposition and that to allow a so-called amendment would really amount to allowing a notice of opposition to be given at a time long after the expiration of the maximum period of four months for giving such a notice (sec. 56). The commissioner, acting under reg. 147 of the Patents Regulations (Statutory Rules 1912, No. 76), amended the notice of opposition on 25th February 1938 so that the notice now purports to be given by "Ernst Lufft and Stanley Lufft trading as E. Lufft and Son." The applicant further objected that the opponents had no locus standi inasmuch as they were merely agents for the sale of a commodity (Re Wheeler's Application[3]; Comptroller's Ruling B[4]).

The commissioner, however, proposes to proceed with the hearing of the opposition, and the applicant has obtained an order nisi for prohibition upon the grounds to which reference has been made above.

In my opinion the commissioner had jurisdiction to decide the question of locus standi. If an objection based on absence of locus standi is raised, the commissioner must decide the point as part of his procedure in "hearing and deciding the case" (sec. 57); cf. Australian Radio Manufacturers' Patents Association Ltd. v. Neutrodyne Pty. Ltd.[5], where the court entertained an application for a mandamus to the commissioner to hear and determine a question of locus standi, though in the result the application was dismissed. I may add with reference to that case that the ground of the decision that no appeal lay from a decision that an opponent to the amendment of a specification had no locus standi was that the commissioner had not made an order allowing or disallowing the amendment (See sec. 75) and that therefore there was no appealable order at the stage when all that the commissioner had done was to give a ruling on locus standi. I do not regard that case as deciding, in relation to opposition either to amendments or to grants, that no question as to locus standi can be raised when an appeal from an appealable order is properly made, though an appeal on such a question alone might not have a great chance of success.

The ground upon which the prosecutor mainly relied was that, as a firm is not a person, no notice of opposition had been given by a person within the meaning of sec. 56 and that therefore the commissioner had no authority to proceed to hear and decide the case or to amend the notice. The question which this objection raises is the perpetually recurring question whether a tribunal which it is sought to prohibit is or is not intended to decide upon a particular matter which is a condition of its power to act. The question is whether or not the opinion of that tribunal is made the test of the existence of the relevant matter (Colonial Bank of Australasia v. Willan[6]): See articles by Mr. D. M. Gordon in the Law Quarterly Review, vol. 45, p. 459, and vol. 47, p. 386. The distinction is clearly put in Colonial Bank of Australasia v. Willan[7]. The relevant distinction for the purposes of the case is between"certain proceedings which have been made essential preliminaries to the inquiry" and "facts or a fact to be adjudicated upon in the course of the inquiry." Mr. Gordon points out in the articles mentioned that, when a court is empowered to impose a penalty for an assault, the court has to determine the question whether there has been an assault and that it may determine it rightly or wrongly, but that it is a mistake to say that the actual objective happening of an assault is a condition of the jurisdiction of the court to impose a penalty. Where it is provided, as, for example, in a contract, that upon the happening of a specified event certain rights or obligations shall arise, the question of whether or not the specified event has happened must, in the event of controversy, be determined by a court and not by the opinion of either of the parties, unless that opinion is plainly made the relevant test. But, where a court which or a person who is required to act judicially is authorized to hear and decide a case, the whole matter of "the case" is submitted for the consideration of the court or person.

In the present instance the authority of the commissioner is "to hear and decide the case," that is, the questions arising upon the opposition. The prosecutor contends, however, that, as there can be no opposition except by a person, the commissioner cannot, by deciding that there is opposition when in truth there is no opposition, give himself authority to proceed. The argument can be put shortly by saying that the commissioner can hear and decide a case only when there is a case. There are, in my opinion, two answers to this argument. The first depends upon the general considerations already mentioned. When any tribunal or person is authorized to hear and decide a matter, it is prima facie left to that tribunal or person to determine whether those who appear or purport to appear before the tribunal have made out a case. I can see no real distinction between the provisions of sec. 56 and the example relating to an assault which I have above taken from Mr. Gordon's articles. When the objection is taken that no notice of opposition has been given, the commissioner decides upon that objection as he decides upon any other question that arises in the opposition. The commissioner may decide this question either rightly or wrongly. He may have decided it wrongly in the present case. If he has decided it wrongly, the aggrieved party has at a later stage an opportunity of appeal under sec. 57, but the decision upon this particular question is as much an exercise of the jurisdiction of the commissioner as any other decision made in the course of dealing with an application for a patent.

The second answer to the argument for the prosecutor is that the proceeding before the commissioner is not merely a proceeding by way of opposition. The commissioner is actually concerned in dealing with applications for patents. It is only in the course of the discharge of his duties in dealing with these applications that opposition can arise. He has power to decide all the questions which may arise as incidental to the discharge of his duty in determining whether or not a patent should be granted. Any other view would erect many procedural rules into essential preliminaries to jurisdiction. If the opposition had been an original proceeding, it might have been necessary to consider such a case as R. v. Arkwright[8], where it was held that the giving of a notice ought to have preceded the inquiry which a statute authorized and that the absence of the notice was the absence of "that which the legislature had made an essential preliminary to the exercise of jurisdiction": See Colonial Bank of Australasia v. Willan[9]. But in the present case the commissioner is seised of the whole matter when the application for the patent is made, and it cannot be said that the giving of a notice of opposition is an essential preliminary to action by the commissioner in relation to the patent. But, apart from this consideration, I am of opinion that the first answer which I have stated to the objection made is in itself sufficient.

If this view is right, then it follows that the commissioner, having decided that there was a notice of opposition, had power to amend the notice under reg. 147 of the Patents Regulations. He may have exercised this power wrongly. If there was no notice of opposition, there was nothing to amend. The commissioner cannot, by purporting to exercise a power of amendment, make nothing into something, but, if he had the power to decide whether or not there was a notice of opposition, then he also had power to amend the notice if he decided that there was a notice. Again the remedy must be sought in an appeal and not by way of prohibition: Cf. Barker v. Palmer[10].

I agree, however, with the contention for the prosecutor that the amendment actually made is, in any event, wrong in form. The result of the amendment is that the opponents are described as two named persons "trading as E. Lufft and Son." I know of no authority for allowing any person to oppose other than simply as a person. He cannot qualify his opposition by stating that he opposes only as trading in conjunction with some other person. But this, again, is not an objection which can be dealt with on prohibition proceedings.

There has been some argument (but not very full argument) upon the question whether prohibition will go to the commissioner in any circumstances. In R. v. Electricity Commissioners[11] a wide view was taken of the scope of the very valuable remedy of prohibition, and, as at present advised, I am of opinion that the proposition of Atkin L.J.[12] is applicable in the case of the commissioner. The learned Lord Justice was dealing with both prohibition and certiorari, and he said:—"It is to be noted that both writs deal with questions of excessive jurisdiction, and doubtless in their origin dealt almost exclusively with the jurisdiction of what is described in ordinary parlance as a court of justice. But the operation of the writs has extended to control the proceedings of bodies which do not claim to be, and would not be recognized as, courts of justice. Wherever any body of persons having legal authority to determine questions affecting the rights of subjects, and having the duty to act judicially, act in excess of their legal authority they are subject to the controlling jurisdiction of the King's Bench Division exercised in these writs." But in the view which I take of sec. 56 it is not necessary actually to decide the question whether prohibition will in any circumstances go to the commissioner.

For the reasons stated I am of opinion that the order nisi should be discharged.

It was first objected that the firm in question was not a person within the meaning of sec. 56 of the Patents Act 1903-1935. The word "firm" is derived from an Italian word which means simply "signature" (Churton v. Douglas[13]). In law a firm has no existence; the firm-name is a mere expression, not a legal entity (per Joyce J., In re Vagliano Anthracite Collieries Ltd.[14], quoting Sadler v. Whiteman[15]). In the old days, where the plaintiff misnamed himself the misnomer was pleadable in abatement. I adopt what was said by Rooke J. in Mayor and Burgesses of Stafford v. Bolton[16]: "I think we ought not to be more strict than they were in the days of the Year Books." Heath J., in the same case took his illustration from a Year-Book case which, although exemplifying the more spiritual interests of the medieval law, showed that in the yet more temporal concerns of modern law the misnomer of aggregates of people should be considered an irregularity exposing the proceedings to objection, it is true, but not entitling the opposite party to treat them as completely null, a thing of nought. He said: "In 22 Ed. 4, 34, which was an assize by the Master, and brethren of the fraternity of the Nine Orders of Angels in B., and the defendant pleaded, that they were incorporated by the name of the Master and Brethren of the Fraternity of All Saints, and the Nine Orders of Angels in B.; the writ was abated, which shows that a misnomer may be pleaded in abatement, where the plaintiff misnames himself"[17]. And Eyre C.J. said: "In the case of a mistake in the name or description of an existing person having a right to sue, it may be pleaded in abatement ... for if he be misnamed, he may have a new writ by the right name; but if there be no such body politic or such person, then he cannot have an action"[18]. "To make it pleadable in bar," said Buller J.[19], "it must appear that there is no such corporation. The Year Books are decisive." In these days the objection is overcome by amendment and not by the defendant pleading in abatement and offering a better writ or proceeding to the plaintiff. Accordingly I think that the commissioner acted rightly in amending the notice of opposition.

It was next objected that, as the opponents were merely agents for the sale of a commodity, they had no locus standi. The commissioner took the view that their interest was deeper than that of agency. In my opinion the whole question of the sufficiency of an opponent's interest to give him a locus standi is one which falls to be decided in the proceedings upon opposition, first by the commissioner, and then on appeal. It is not a question which is external to the proceedings and preliminary to their validity. If the commissioner's decision were wrong, he did not usurp any power he did not possess by making such an error.

The writ goes to restrain inferior courts and any persons or authorities exercising judicial functions from exceeding the jurisdiction committed to them (R. v. Electricity Commissioners[20]; Parisienne Basket Shoes Pty. Ltd. v. Whyte[21]). But the writ does not go to persons exercising administrative or ministerial and not judicial functions.

The writ in this case is sought pursuant to sec. 75 of the Constitution against the Commissioner of Patents, who is an officer of the Commonwealth. The prosecutor applied under the Patents Act 1903-1935 for letters patent for inventions entitled "Improvements in and relating to rotary intaglio printing." The applications were accepted and duly advertised. E. Lufft & Son were granted an extension of time for giving notices of opposition to the grant of patents, and they gave such notices within the extended time. The notices were in the form, "We, E. Lufft & Son of 337 Kent Street Sydney in the State of New South Wales, Commonwealth of Australia, printing suppliers, hereby give notice of our intention to oppose the grant" of letters patent upon certain grounds.

The prosecutor later sought to amend the specification of his inventions, and E. Lufft & Son also opposed these amendments. The commissioner heard the parties upon the right of E. Lufft & Son to be heard. It was argued for the prosecutor that the name "E. Lufft & Son" indicated a partnership firm, as was the fact, and that the Patents Act only conferred the right to oppose the grant of letters patent upon some legal entity and that in English law a partnership firm as such had no existence. It was further argued that E. Lufft & Son had no interest sufficient to support their opposition.

The commissioner allowed E. Lufft and Son to amend their notices of opposition by inserting the names "Ernst Lufft and Stanley Lufft trading together in partnership as E. Lufft & Son" in lieu of E. Lufft & Son. He further held that Ernst Lufft and Stanley Lufft trading together in partnership had established an interest sufficient to support their opposition. But the application for the letters patent and the opposition thereto stood over. And the prosecutor in the meantime obtained this order nisi for prohibition.

The argument before this court sought to establish that the commissioner, in acting as he did, exercised a judicial function in excess of the power committed to him. It was said that the authority or jurisdiction of the commissioner to hear and determine the opposition never attached, because a preliminary condition of that jurisdiction was never fulfilled, namely, the giving of notices of opposition required by the statute. It was suggested that the notices in fact given were bad and mere nullities in point of law for several reasons:—(1) That the notices were not given by an entity known to the law but by a partnership firm which had no existence in law. (2) That the commissioner had no authority to amend void notices. (3) That, if the commissioner had authority to amend the notices, then the opposition was beyond the period allowed by the Act (sec. 56) for giving notices of opposition. (4) That Ernst Lufft and Stanley Lufft trading together in partnership as E. Lufft & Son had no interest sufficient to support their opposition.

But little attention was devoted in the argument to the question whether the commissioner had any judicial function in relation to the grant of letters patent and of opposition thereto or merely an administrative or ministerial function. The question depends upon the nature of the function rather than upon the form of the proceedings, though the form cannot be disregarded. It is quite true that judicial functions may be conferred upon an administrative body as distinguished from a court strictly so called. But it by no means follows that an administrative body is exercising judicial functions because it can hear and determine some matter or call and examine witnesses or award costs and so forth: Cf. Shell Co. of Australia Ltd. v. Federal Commissioner of Taxation[22]. A judicial function requires some determination affecting the rights of subjects or imposing some obligation upon them: See R. v. Local Government Board[23]; R. v. Electricity Commissioners[24].

A subject is, no doubt, entitled as of right to the grant of a patent for an invention if he complies with conditions required by the Patents Act. But the determination of the commissioner, whether there be or be not opposition, that a "grant ought to be made" (sec. 59) is no adjudication of the validity of the grant or of its effect (sec. 62) but rather whether he is satisfied on the preliminary investigations directed by the statute (secs. 39, 40, 41, 56-60) that the conditions required by the statute for the grant of a patent exist. In my opinion such a determination is, in substance, administrative or ministerial and not a judicial function. Consequently the prerogative writ of prohibition is not an appropriate remedy (Re Grosvenor and West End Terminus Hotel Co. Ltd.[25]; Re Wingate's Patent[26]; Re Hall[27]; Re Van Gelder's Patent[28]; R. v. London County Council[29]). But, even if the determination of the commissioner be a judicial function, still in my judgment the writ of prohibition should in this case be refused inasmuch as the commissioner has acted throughout in accordance with his statutory duty and without any excess of his jurisdiction. A statute may, as was pointed out in R. v. Commissioners for Special Purposes of the Income Tax[30] and in R. v. Bloomsbury Income Tax Commissioners[31], provide that if a certain state of facts exist a tribunal shall have jurisdiction but not otherwise. In such a case the tribunal cannot conclusively decide whether that state of facts exists or not, and, if it exercises jurisdiction without the existence of those facts, then what it does may be questioned in appropriate proceedings, such as proceedings in prohibition. An illustration of this class of case may be found in the case of R. v. Commonwealth Court of Conciliation and Arbitration; Ex parte Broken Hill Pty. Co. Ltd.[32]. But the statute may entrust the tribunal with a jurisdiction "which includes the jurisdiction to determine whether the preliminary state of facts exist as well as the jurisdiction, on finding that it does exist, to proceed further or do something more"[33]. In such a case it "is an erroneous application of the formula to say that the tribunal cannot give themselves jurisdiction by wrongly deciding certain facts to exist because the legislature gave them jurisdiction to determine all the facts ... and if they were given jurisdiction so to decide then there is no excess of jurisdiction"[34]. Such a case was R. v. Bloomsbury Income Tax Commissioners[35], and also R. v. Swansea Income Tax Commissioners[36], and such a case is that now before us.

An application for letters patent must be left with or sent to the Patent Office (sec. 33). It then becomes the duty of the commissioner to investigate the application (secs. 42, 44, 45, 46, 49 and 50). If he accepts the application and specification, then he advertises the fact, and the next step in the proceedings is open. Any person may within the time prescribed give notice of opposition (sec. 56). It is then the duty of the commissioner to hear and decide the case, which is whether the grant of a patent ought to be made. But the case cannot be decided unless the commissioner determines whether the notice of opposition is good or bad, whether, in other words, it is given by a party entitled to give it, whether that party has sufficient interest to support the opposition, and whether it is given in due time. It is part of his jurisdiction to determine these questions, and it is not in excess of his jurisdiction if he determines them wrongly. If he decides wrongly, that is a matter for appeal if any appeal be provided, and if no appeal is provided then the decision is final and the courts cannot interfere by means of the prerogative writ of prohibition. I need only refer in this connection to sec. 58 of the Act and the case of Australian Radio Manufacturers' Patents Association Ltd. v. Neutrodyne Pty. Ltd.[37].

It is plain, I think, that the object of the legislature was to make the decision of the commissioner final unless disputed in the manner provided by sec. 58. In this view, ample power to amend the notices of opposition was conferred by reg. 147 of the Patents Regulations.

This is an application for a writ of prohibition directed to the Commissioner of Patents prohibiting him from proceeding to hear and determine an opposition, or, rather, two several oppositions.

The writ is sought by the applicant for letters patent in respect of two alleged inventions. To each application a notice of opposition was lodged in purported pursuance of sec. 56 of the Patents Act 1903-1935. The notices described the opponents by the firm-name of E. Lufft and Son. It is the title of a partnership consisting of Ernst Lufft and Stanley Lufft. At the instance of the opponents, the commissioner, or, rather, a deputy commissioner empowered under sec. 11, amended the notice of opposition, in the exercise of the discretion obtained under reg. 147, by substituting the individual names of the partners for that of the firm. The applicant objected to this course on the ground that a notice in the firm-name was no opposition and the defect could not be cured by amendment, particularly as the time for opposition had then expired. In any case, the applicant objected that the opponents, whether considered as a firm or as individuals, were not interested and were not entitled to oppose. His objections having been overruled, the applicant, with a view of obtaining a judicial determination of the competence or validity of the oppositions before entering upon an expensive hearing, obtained an order nisi for a writ of prohibition.

It has not yet been decided that the Commissioner of Patents, even when dealing with proceedings by way of opposition, is a judicial tribunal or officer to whom a writ of prohibition lies. He forms part of the administrative organization established by statute for carrying out a function of the Crown which formerly depended upon the prerogative and was essentially executive. The very foundation of the principle upon which grants of letters patent are treated as not conclusive, but as liable to be held void, is to be found in the executive nature of the limited power under which grants of monopoly may be made. But a great extension of the scope of the writ of prohibition has been effected in England in late years by judicial decision. The writ has been sent to many administrative bodies acting only quasi-judicially: See R. v. Electricity Commissioners[38]; R. v. Legislative Committee of the Church Assembly[39] (contra: R. v. Minister of Health; Ex parte Davis[40]; R. v. North Worcestershire Assessment Committee; Ex parte Hadley[41]; R. v. Minister of Health; Ex parte Villiers[42]; Estate and Trust Agencies (1927) Ltd. v. Singapore Improvement Trust[43]); and compare, per Isaacs and Rich JJ., Waterside Workers' Federation of Australia v. Gilchrsti, Watt & Sanderson Ltd.[44]; and see R. v. Optical Board of Registration; Ex parte Qurban[45]. No distinction appears to have been drawn between the kind of tribunal to which certiorari will go and that to which prohibition lies. Notwithstanding this modern development, doubts seem still to exist as to the propriety of addressing prohibition to the Comptroller-General of Patents (Re Wingate's Patents[46]). But, assuming a writ of prohibition will lie to the Commissioner of Patents prohibiting him from hearing and determining opposition proceedings where he has no authority to do so, I do not think that a case has been shown in the present instance of such a complete lack of authority as to found prohibition. It may be taken that, under sec. 66, the applicant for a patent becomes entitled to a grant, that is, in the sense and subject to the qualifications explained in Tate v. Haskins[47], if no valid opposition is lodged. A notice of opposition, therefore, intercepts the applicant's right to a grant. It also imposes upon the commissioner a duty of hearing and deciding the opposition. Sec. 57 provides that, where such notice is given, the commissioner shall give notice of the opposition to the applicant and shall at the time and in manner prescribed hear and decide the case. "Such notice" means the notice of opposition referred to in sec. 56. In my opinion, unless it can be said that a purported notice of opposition is void so that the commissioner may and should ignore it and proceed under sec. 66 to complete a grant by causing a patent to be sealed, he must act under sec. 57 and hear and decide the case.

To make an objection in the firm's name was irregular. The firm-name is the description of the partners acting in conjunction for the purposes and within the scope of the partnership. It may be conceded that, not only does it insufficiently identify the individuals constituting the partnership, but it indicates an association of persons acting in a particular capacity or right. But I do not think that the misdescription or misnomer involved in the use of the partnership name makes the notices of opposition mere nullities. Under the power to make regulations contained in sec. 108, it would, I think, be possible to authorize the use of the firm-name in a notice of opposition. In fact the regulations prescribe a form requiring the full names of the opponents. But the regulations also confer a power of amendment. A firm-name is, after all, a reference to persons, and, notwithstanding its inadequacy and the limitation of capacity or legal relationship implied, it notifies a real intention to oppose by real persons. In my opinion it forms a sufficient foundation to entitle the commissioner to proceed. It is needless to add that in a proper case irregularity in a notice may justify dismissal of the opposition. In the present case, however, it has been thought right to allow an amendment and thus to make the notice regular.

The second ground relied upon by the prosecutor is that the opponents have no locus standi. But again I think that this objection does not go to the validity of the notice of opposition as a proceeding which the commissioner must hear and decide. It is an objection which may be relied upon before him and afterwards upon appeal as showing that the opposition ought not to be sustained or even heard upon the merits. But it is a matter which it is within the province of the commissioner to determine. The necessity of interest no doubt is the result of more than departmental practice. It is a requirement spelt out of the provisions of the Act. But want of interest does not make the notice a merely void piece of paper.

This is an application to the court for a writ of prohibition to prohibit the Commonwealth Commissioner of Patents from proceeding to hear and determine two oppositions by Ernst Lufft and Stanley Lufft (trading together in partnership as E. Lufft and Son) to the grant of two several patents for inventions relating to rotary intaglio printing applied for by the present applicant on May 8th, 1935. The grounds upon which the applicant disputes the jurisdiction of the Commissioner of Patents to hear and decide the oppositions are: (1) that sec. 56 of the Patents Act 1903-1935, which provides that "any person" may give notice of opposition, does not enable such a notice to be given in a mere partnership name even although the notice has been authorized by the members of the firm; (2) that the opening words in sec. 56, "any person," should be interpreted as limited to "any person having a sufficient interest to oppose," and that even in respect of their trading partnership the two respondents Lufft had not sufficient interest to oppose.

Sec. 56 occurs in Division 2 of Part IV. of the Patents Act, which is headed "Procedure." It is, of course, possible, though a priori very unlikely, that the jurisdiction of the commissioner to decide an opposition to a grant may be subjected to a provision which operates to make compliance with some procedural requirement an essential condition precedent to the exercise of his jurisdiction. Whether such condition precedent is set up depends upon the construction of the Act. Here the crucial provision is sec. 57, which runs: Where such notice is given, the commissioner shall give notice of the opposition to the applicant, and shall at the time and in manner prescribed hear and decide the case.

The applicant here is forced to contend that the authority of the commissioner to "hear and decide the case" comes into existence only if a notice of opposition which in all respects conforms to sec. 56 has been given at the Patents Office. Sec. 57 contains two distinct commands. The first directs the commissioner to give notice of the opposition to the applicant "where such notice is given." The second directs the commissioner to "hear and decide the case" wherever "such notice is given." According to the applicant the commissioner is under no duty to give the applicant notice of the opposition unless the filed opposition complies with sec. 56. On this view, presumably, the commissioner should determine in advance whether sec. 56 has been complied with. In my opinion the commissioner's duty under the first part of sec. 57 is purely administrative. He is not empowered to ignore any de-facto notice, but must in all cases notify the applicant that an opposition has been lodged. In other words, "such notice" in the phrase "where such notice is given" means a notice which purports to comply with sec. 56 and which has in fact been lodged by some person at the Patents Office. If this is so, the commissioner's jurisdiction to "hear and decide the case" (which is also made dependent upon the event "where such notice is given") cannot be conditioned by the existence of a valid notice. It is sufficient that a de-facto notice is given. If this is so, the commissioner is intended by sec. 57 to have jurisdiction to determine the case and, in the course of doing so, to determine whether the de-facto notice given complies with sec. 56 and also to determine whether, if it does not so comply, it can or should be amended. But this is only another way of saying that in this particular case nothing has happened to place the decision of what sec. 57 calls "the case" outside the commissioner's jurisdiction, and that in turn is only another way of saying that the application for a writ of prohibition should be dismissed.

While I express no opinion as to the two points of law upon which the application was founded, I reject the contention that in no case can a writ of prohibition for excess of jurisdiction be directed to the Commissioner of Patents. It is true that his functions include matters of administration and that, strictly speaking, he is not a judicial officer. But when he has to "hear and decide the case," as sec. 57 of the Act requires, it is incumbent upon him to exercise judicial or quasi-judicial functions. Since the decision of the Court of Appeal in R. v. Electricity Commissioners[48] it is too late to ask the courts to hold that administrative tribunals of the character described by Atkin L.J. possess an immunity from the writ of prohibition. In the present case it is to be noted that the decision of the commissioner under sec. 57 is subject to appeal to the High Court or the Supreme Court of a State, which strongly supports the conclusion that the commissioner can be made subject to the writ of prohibition.

But, for the reasons already given, the present application fails and should be dismissed.

Order nisi discharged. Applicant to pay costs of the opponents and of the Commissioner of Patents.

[1] (1910) 1 K.B. 868 at p. 889.

[2] (1914) 1 Ch. 748.

[3] (1925) 42 R.P.C. 509.

[4] (1911) 28 R.P.C. App. iii.

[5] [1937] HCA 86; (1937) 57 C.L.R. 27.

[6] (1874) L.R. 5 P.C. 417

[7] (1874) L.R. 5 P.C., at p. 443.

[8] [1848] EngR 67; (1848) 12 Q.B. 960; 116 E.R. 1130.

[9] (1874) L.R. 5 P.C., at p. 444.

[10] (1881) 8 Q.B.D. 9.

[11] (1924) 1 K.B. 171.

[12] (1924) 1 K.B., at p. 205.

[13] (1859) 28 L.J. Ch. 841, at p. 845.

[14] (1910) 79 L.J. Ch. 769.

[15] (1910) 1 K.B. 868, at p. 889.

[16] [1797] EngR 459; (1797) 1 B. & P. 40, at p. 44; [1797] EngR 459; 126 E.R. 767, at p. 769.

[17] (1797) 1 B. & P., at p. 44; 126 E.R., at p. 769.

[18] (1797) 1 B. & P., at p. 44; 126 E.R., at p. 769.

[19] (1797) 1 B. & P., at p. 44; 126 E.R., at p. 769.

[20] (1924) 1 K.B. 171.

[21] [1938] HCA 7; (1938) 59 C.L.R. 369

[22] (1931) A.C. 275.

[23] (1882) 10 Q.B.D. 309, at p. 321.

[24] (1924) 1 K.B. 171.

[25] (1897) 13 T.L.R. 309; 76 L.T. 337.

[26] (1931) 2 Ch. 272.

[27] (1888) 21 Q.B.D. 137.

[28] (1888) 6 R.P.C. 22.

[29] (1893) 2 Q.B. 454, at pp. 459, 465, 467.

[30] (1888) 21 Q.B.D. 313.

[31] (1915) 3 K.B. 768.

[32] [1909] HCA 20; (1909) 8 C.L.R. 419.

[33] (1915) 3 K.B., at p. 782.

[34] (1915) 3 K.B., at p. 783.

[35] (1915) 3 K.B. 768.

[36] (1925) 2 K.B. 250.

[37] [1937] HCA 86; (1937) 57 C.L.R. 27.

[38] (1924) 1 K.B. 171.

[39] (1928) 1 K.B. 411.

[40] (1929) 1 K.B. 619.

[41] (1929) 2 K.B. 397.

[42] (1936) 2 K.B. 29.

[43] (1937) A.C. 898.

[44] [1924] HCA 61; (1924) 34 C.L.R. 482, at p. 515.

[45] (1933) S.A.S.R. 1.

[46] (1931) 2 Ch. 272, at pp. 276, 277, 279, 286.

[47] [1935] HCA 40; (1935) 53 C.L.R. 594, at pp. 611, 612.

[48] (1924) 1 K.B. 171.

High Court of Australia

R v Commissioner of Patents [1939] HCA 7; (1939) 61 CLR 240 (30 March 1939)

HIGH COURT OF AUSTRALIA