Lufft v Weiss [1946] HCA 40; (1946) 73 CLR 119 (21 October 1946)

Coppel K.C. (with him Stanley Lewis and Adam), for the respondent, in support of the objection.

The appellants in this appeal are Stanley Ernst Lufft in his personal capacity and Stanley Ernst Lufft and the Permanent Trustee Company of New South Wales, the executors of the will of E. A. P. Lufft deceased. The appellants are persons who opposed the grant of a patent under the provisions of s. 56 of the Patents Act. Section 56 provides that any person may, within three months from the advertisement of the acceptance of a complete specification, or within such further time as may be allowed, give notice of opposition. The Commissioner decided to grant the patent applied for. The opponents then appealed to this Court under the provisions of s. 58 of the Act—"Any party aggrieved by the decision of the Commissioner may in the time and in the manner prescribed appeal to the High Court or the Supreme Court." Section 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. Accordingly appellants in this Court must be opponents who in the opinion of the Court are entitled to be heard in opposition to the grant.

Similar provisions contained in ss. 74 and 76 of the Act relating to the amendment of specifications were considered by this Court in Australian Radio Manufacturers' Patents Association Ltd. v. Neutrodyne Pty. Ltd.[1]. It was there held that the words "person ... being in the opinion of the Court entitled to be heard in opposition to the request" showed that it was intended that there should be a standard according to which it might be determined whether or not a particular person was entitled to be heard in opposition to the request. The standard was found in the interest of the person claiming to have a right of appeal. The standard (it was said[2]) "may be described generally by saying that the person must have a sufficient interest in the matter which is before the Commissioner for determination." It has been held upon similar provisions in Great Britain that a person who manufactures or trades in the articles or uses the process to which the patent relates, or who has an interest in a prior patent which would be affected by the grant claimed, is a person with a sufficient interest to entitle him to be heard upon an appeal. I refer to Notes of Rulings of the Comptroller-General[3]. In In re Application by New Things Ltd.[4], where the decision related to a trading interest, it was held by Sir Stanley Buckmaster, Law Officer, that the interest must be real, definite and substantial. In the case of Wheeler's Application[5], it was held that an interest as an agent for the sale of articles was an insufficient interest, and in the Australian Radio Case[6], to which I have referred, it was held by this Court that a company created for the purpose of protecting the interests of its shareholders in patents which was the agent of the shareholder for that purpose did not have sufficient interest to be held to be a person entitled to oppose. An employee of a person interested would not himself have a sufficient interest. The interest in such a case would be the interest of his employer. So also in the case of an agent for sale, the interest would be the interest of his principal.

In this case the evidence shows only that the opponents are the agents of a company, R. Hoe and Company of New York, which manufactures and deals in rotary intaglio presses of the character to which the invention relates and have been such agents for a number of years. Two such presses have been sold in Australia by the company since 1915. The evidence is consistent with the opponents simply having obtained and transmitted orders to their principals in New York for these presses and having received a commission when the orders were executed. If such an indirect interest—consisting in the prospect of obtaining a commission if articles should be sold—were held to be sufficient interest to give a locus standi for opposition to the grant of a patent, it would in my opinion be very difficult to draw the line anywhere. Such an interest is not a real, definite, substantial interest within the meaning of the decisions to which I have referred—decisions which I think we should adopt and follow in Australia. Accordingly, in my opinion, the appellants have not shown that they are persons who should be held in the opinion of the Court to be persons entitled to be heard within the meaning of s. 59 of the Act. Therefore the objection to locus standi should be sustained.

The provisions of s. 56 of the Patents Act 1903-1935 limit the class of persons who may oppose the grant of letters patent on the grounds specified in clauses (a) and (d). But clauses (b), (c), (e) and (f) are not limited in any way though in England and here some interest in the opponent is required. A man in the street cannot oppose a grant. I am quite content to accept the gloss put upon the section by the Solicitor-General, Sir Stanley Buckmaster, as he then was. The interest must be real, definite and substantial (New Things Ltd.'s Case[7]) and, in my opinion, this right to oppose should be liberally construed.

An interest in the invention itself is not required but it must be some business interest, some interest that gives reasonable grounds for apprehending that the grant of patent rights would be prejudicial to the interests of the opponent, for instance, that he is manufacturing machines of the same kind or carrying on or interested in some business, whether as principal, agent, indentor or otherwise competing in the same field with persons owning or using the invention, the subject of the application for a grant. Wheeler's Case[8] is not to the contrary for all that the Solicitor-General actually held was that he was not prepared on the facts proved in that case to say that the opponent had any interest which entitled him to oppose.

On the facts of this particular case it is very easy to say—"Oh, well, there are only one or two cases shown." But the fact that one or two cases are shown indicates that the opponents are in business in the same class of machinery as that described in the application for a grant and there is a general statement in one of the declarations filed by the opponent that his firm had for the last 35 years been connected with the printing and press trade in the capacity of suppliers of printing presses, various classes of paper and other trade accessories.

The appellants unsuccessfully opposed the grant of letters patent for an invention relating to rotary intaglio printing and they now appeal, under s. 58 of the Patents Act, to this Court from the decision of the Commissioner upon their opposition. The respondent, however, objects that the appellants did not possess any sufficient interest entitling them to be heard in opposition to a grant. The contention is that the Commissioner of Patents should have dismissed the opposition on the ground of want of interest on the part of the opponents. It appears from the not very satisfactory materials describing their interest that it arises out of the fact that they constitute a firm which has for a very long time carried on in Sydney the business of supplying the needs of the printing trade. The business covers the supply of printing presses including rotary presses. The rotary presses are imported; none is manufactured in Australia. Rotary intaglio presses, the description of press to which the invention relates, seem to be special machines, and so far only two have been imported through the appellants' firm, one in the year 1918 and the other in 1936. The firm are Australian agents for a company abroad which manufactures printing presses of all kinds, including rotary intaglio presses of the kind that would or might be affected by the grant of letters patent for the respondent's invention.

The agency is exclusive and the appellants' firm is kept informed of the developments in the manufacturing company's machinery and products and endeavours to induce traders and printers to buy them; but the firm acts between the company and the purchaser on a commission basis. I take this to mean that the appellants' firm obtains an order for a press to be supplied by the manufacturing company, which consigns the parts to the purchaser and installs the machine; the firm never itself becoming an intermediate purchaser or becoming responsible for the delivery or the price and receiving a commission from their principals by way of remuneration.

It is upon these facts that the appellants rest their claim to have a sufficient trading or commercial interest in preventing the grant of letters patent for a rival contrivance to entitle them to file an opposition.

It is not denied that an interest is necessary. Although s. 56 employs the unqualified expression "any person," s. 59, when it comes to an appeal, speaks of "any opponent ... entitled to be heard in opposition." The same incongruity of expressions has run through the analogous provisions of the English legislation from 1883 to the present time. It occurs in sub-ss. (1) and (3) of s. 11 of the Patents, Designs, and Trade Marks Act 1883 Imp.; in sub-ss. (1) and (3) of s. 11 of the Patents and Designs Acts 1907 and 1919 Imp. and now in sub-s. (1) and sub-s. (3) as amended by the Patents and Designs Act 1932 Imp. for the purpose of sending proceedings by way of review to the Appeal Tribunal. For a number of reasons, first the Law Officers and then the courts adopted the view that the opening general words must be limited and that the words "entitled to be heard" showed the general sense of the provision. Thus Romer L.J. said: "The words in sub-s. 3 which point out that the law officer is entitled, on appeals before him, to decide who may be heard in opposition to the grant, show to my mind that it is not every person who is entitled to be so heard. The words in opposition to the grant are important. They do not say, and I do not think they mean, entitled to be heard merely on the appeal before the law officer, but they are more general in their effect, and to my mind they show that it is not everyone who is to be entitled to be heard in opposition generally, and, if so, this covers the case of a hearing before the comptroller" (R. v. Comptroller-General of Patents; Ex parte Tomlinson[9]). In the same case[10] Collins L.J. said: "As I read the section, it is not every person who is to be entitled to object, but persons having a certain status, and it indicates that there must be something in that status showing a right to be heard." Some of the reasons assigned in support of this construction or conclusion have been weakened by the introduction of new grounds of opposition; but the interpretation remains settled and it has been extended to the provisions relating to opposition to amendment (Australian Radio Manufacturers' Patents Association Ltd. v. Neutrodyne Pty. Ltd.[11]).

The development of the legislation has, however, affected the question what is the necessary status or locus standi. For certain cases the grounds of opposition themselves describe the position that the opponent must occupy: See s. 56 (a) and (d). In the beginning, of three grounds one only failed to do this, but now in the Commonwealth provisions we have four which fail to do it, at all events expressly. Where the position which the opponent must fill is not indicated by the ground, whether expressly or impliedly, he must show an interest. For a time it was considered that it must be an interest as a manufacturer but when Lord Buckmaster was Solicitor-General he ruled that this was a mistake, "A trading interest would also be sufficient, but the interest must be a real, definite, and substantial interest, and must not arise from something that the opponent proposes to do" (In re Application by New Things Ltd.[12]). In that case the Comptroller had taken a wide, and to some possibly an attractive, view[13]. The test he formulated was expressed as flowing from the then more recent authorities. He said:—"In the later decisions the broad principle was laid down that the right to oppose ought to be extended to all those who give bona fide and satisfactory reasons for wishing to do so; and for this purpose it would be sufficient to show that some bona fide and existing right or interest of the opponent would be prejudicially affected. ... If this principle is correct, I think it is clear that any person who is bona fide and honestly in possession of any plant, mechanism or article which may reasonably be held to fall within the scope or claims of the specification in question has a sufficient interest to oppose the grant of a patent."

Lord Buckmaster, however, overruled the Comptroller's decision and in particular dissented from the view that the use and possession of an apparatus or thing which would be covered by the patent applied for gave a sufficient interest to found a notice of opposition. Use of a thing in the regular course of trade or business might perhaps be another thing, but it is evident that the wide general proposition of the Comptroller has not won acceptance. In In re Wheeler's Application[14], Lord Caldecote as Solicitor-General declined to regard the interest of an importing agent as giving him a locus standi to oppose an application the success of which might jeopardize the sale and use of the goods he imported.

The opponent in that case was sole selling agent in Europe for an American manufacturing company and took sole responsibility for all debts and other usual trading risks. It was stated that the opponent purchased the goods and sold them at a profit. The Comptroller considered that even so, it was not enough to found an interest giving a locus standi. On appeal to the law officer, Lord Caldecote doubted the statement that the opponent bought and sold the goods and said[15]: "I very much doubt whether the Assistant-Comptroller knew the precise facts, and I am not prepared to say that the opponent has shown that he has a real, substantial and definite interest. It may be that the position of the opponent is merely that of an agent in the ordinary sense of the word, or perhaps a del credere agent, for the purpose of putting these things upon the market in this country, in which case the interest would really be the interest of the principals from whom he gets the goods and not his interest. I am, therefore, not satisfied that he has an interest which entitled him to oppose." This ruling, which no doubt has settled the practice in England, goes far to dispose of the appellants' claim to a locus standi, unless we are prepared to say that it ought not to be followed here. The opponents' position in the present case, however, does not appear to me to be as strong as that before Lord Caldecote.

The appellants' firm has only twice been connected with a purchase of a rotary intaglio press of the kind likely to be affected and that some time ago. To say that the transactions formed part of their general business in presses and in printers' supplies is hardly to the point. They would be affected only incidentally and indirectly, even if the grant did operate to prejudice the importation through them of another or other rotary intaglio presses. They would be affected only as persons who might otherwise have been remunerated by way of commission for services rendered in connection with the importation and sale of the press. The proposition that they might be infringers if they were to act as agents in such an importation, if the proposition be correct, would no doubt be a circumstance for consideration, but in this case not a very important one.

The firm is not in the position of a trader who must desist from or restrict an existing business or change its form or course in order to avoid infringement of a patent applied for, if it were granted. The two isolated transactions of the past are at best only evidence that a hope of future transactions in rotary intaglio presses is not unreasonable. A very different position was occupied by Samuel Richardson & Co., who, in Re Vignier's Trade Mark Monobrut[16], were held to be persons aggrieved and to be entitled to apply to rectify the register of trade marks; and it must be remembered that the loss of profit suffered by a sole agent for goods by reason of the passing off of other goods as being of the same manufacture has never been held a matter which the sole agent could complain of or enjoin (Dental Manufacturing Co. Ltd. v. C. De Trey & Co.[17]).

In my opinion the appellants have failed to establish a sufficiently direct interest. What they have shown is not definite and it is not substantial.

Solicitor for the Commissioner of Patents, G. A. Watson, Acting Crown Solicitor for the Commonwealth.

[1] [1937] HCA 86; (1937) 57 C.L.R. 27.

[2] (1937) 57 C.L.R., at p. 33.

[3] (1911) 28 R.P.C., Appendix, p. iii, Ruling B.

[4] (1913) 31 R.P.C. 45.

[5] (1925) 42 R.P.C. 509.

[6] [1937] HCA 86; (1937) 57 C.L.R. 27.

[7] (1913) 31 R.P.C. 45.

[8] (1925) 42 R.P.C. 509.

[9] (1899) 1 Q.B. 909, at p. 919.

[10] (1899) 1 Q.B., at p. 918.

[11] [1937] HCA 86; (1937) 57 C.L.R. 27.

[12] (1913) 31 R.P.C. 45, at p. 46.

[13] (1913) 30 R.P.C., Appendix, p. iv., Ruling B.

[14] (1925) 42 R.P.C. 509.

[15] (1925) 42 R.P.C., at p. 511.

[16] (1889) 61 L.T. 495; 6 R.P.C. 490.

[17] (1912) 3 K.B. 76.

High Court of Australia

Lufft v Weiss [1946] HCA 40; (1946) 73 CLR 119 (21 October 1946)

HIGH COURT OF AUSTRALIA