Esso Research & Engineering Co v Commissioner of Patents [1960] HCA 31; (1960) 102 CLR 347 (31 May 1960)

HIGH COURT OF AUSTRALIA

ESSO RESEARCH AND ENGINEERING CO. v. COMMISSIONER OF PATENTS [1960] HCA 31; (1960) 102 CLR 347

Patents

High Court of Australia
Fullagar J.(1)

CATCHWORDS

Patents - Application - Refusal - Appeal against refusal - Institution of appeal after expiration of period prescribed for acceptance - Whether appeal effective - Time within &which appeal must be instituted - Patents Act 1952-1955 (No. 42 of 1952 - No. 3 of 1955), ss. 52, 53, 54 - Rules of the High Court, O. 66A, rr. 2, 3, O. 70, r.6.

HEARING

Melbourne, 1960, May 19, 31. 31:5:1960
APPEAL under the Patents Act 1952-1955.

DECISION

May 31.
FULLAGAR J. delivered the following written judgment:-
This is an appeal by Esso Research and Engineering Company against a refusal application and complete specification. I am concerned at the moment only with a preliminary objection taken by Mr. Tredinnick, who appears for the Commissioner. The objection is that there can be no effective appeal, because, before the notice of appeal was filed, the application for a patent had lapsed by virtue of s. 54 of the Act. The Commissioner, said counsel, could not be ordered to accept an application which had lapsed. The objection appeared to me to raise a question of some difficulty, and I desired to take a little time to consider it. (at p348)

2. There is one matter on which, though it has only a very indirect bearing on the question now in hand, I think I should express an opinion at the outset. Although s. 52(3) gives a right of appeal to this Court from a refusal by the Commissioner to accept an application, and although s. 53(3) speaks of "the time within which an appeal . . . may be instituted", the fact is, I am told, that neither the Act nor the Regulations made under it prescribe any time within which a notice of motion instituting an appeal may be given. In these circumstances there seem to be three possible views. The first is that there is no time limit. The second (which was advanced by Mr. King, who appears for the appellant) is that notice of appeal must be given within a reasonable time. The first view could lead to grave inconvenience. The second also is an inconvenient view, and I can, in any case, see no real reason for saying that the right given is subject to an implied condition that it shall be exercised within a reasonable time. The third view, which is, in my opinion, the correct view, is that, until special provision is made by or under the Patents Act, or by or under the High Court Procedure Act 1903-1950, the position is governed by O. 70 r. 6 of the Rules of the High Court, and the notice must be filed and served within twenty-one days. Rule 2 of O. 66A, which deals with proceedings under the Patents Act, provides:- "This Order applies to all proceedings in the Court under the Act". Rule 3 provides:- "Subject to this Order, the provisions of the other Orders of these Rules, other than Order 66, apply, so far as is practicable, to proceedings to which this Order applies". The words "so far as is practicable" are, I think, intended to give the rule a wide application, and I think the meaning of the rule is that, if a question of procedure arises for which no special provision is made in O. 66A, and if there is some rule outside O. 66A which deals generally with the relevant subject and is capable of being applied mutatis mutandis, then that rule is to be regarded as applicable to the case. On this view of O. 66A r. 3 we are justified, in the absence of any specific provision, in regarding O. 70 r. 6 as applicable to appeals under s. 52(3) of the Patents Act. A somewhat similar solution of a similar problem was found by Hood J. in In re Sulman and Teed (1896) 2 ALR 246 , but I am inclined to think that O. 66A r. 3 provides firmer ground for the conclusion than seems to have existed in that case. (at p349)

3. Actually, on any one of what I regard as the three possible views, the notice of motion in the present case was filed and served in due time, and I turn now to the point which really arises for decision. (at p349)

4. When an application for a patent is made, ss. 47 and 48 require that an examiner shall make reports to the Commissioner with regard to certain specified matters, and s. 161 requires that a copy of each report of an examiner under the Act shall be sent to the applicant. The examiner may, of course, raise objections to the application or the complete specification or both. If and when the Commissioner is satisfied that there is no lawful objection or that the grounds of objection have been removed, s. 52(1) provides that he shall accept the application and complete specification. If he is not so satisfied he may refuse acceptance. Section 52(2) requires him to give notice of acceptance to the applicant and within three months to advertise the acceptance in the Official Journal. Section 52(3) provides that "an appeal lies to the Appeal Tribunal from a decision of the Commissioner under this section". (at p349)

5. Section 53(1) provides that, subject to the next two succeeding sub-sections, the time within which an application and complete specification may be accepted is fifteen months from the date on which the first report of the examiner was sent to the applicant. The next two succeeding sub-sections provide:- "(2) Where - (a) an appeal under any of the provisions of this Act has been instituted in respect of an application; . . . the time within which the application and complete specification may be accepted is extended until the expiration of three months after the determination of the appeal or until the expiration of such further time as the Appeal Tribunal allows. (3) Where - (a) the time within which an appeal mentioned in the last preceding sub-section may be instituted has not expired; or (b) the applicant has died, the Commissioner may extend, until the expiration of such further time as he determines, the time within which the application and complete specification may be accepted". Section 54 provides:- "Where an application and specification have not been accepted within the time for acceptance, or acceptance of an application and specification has not been advertised within three months after the date of acceptance, the application shall lapse". (at p350)

6. In the present case the application was lodged with a complete specification on 13th July 1954. It was a "Convention" application, and the priority date sought for each of the claims was 20th July 1953. The first report of the examiner was sent to the applicant on 5th September 1955. Prima facie, therefore, the last day for acceptance was 5th December 1956 (s. 53(1)). On that date the Commissioner refused to accept the application and complete specification, and the applicant's patent attorney was advised of the refusal. On 24th December 1956 the notice of appeal under s. 53(3) was served on the Commissioner. The only other fact that need be mentioned is that on 11th February 1957 the applicant's patent attorney applied to the Commissioner under s. 160 for an extension for one month of the time for acceptance "to ensure that the appeal was lodged within time". This application was refused. Section 160 does not appear to me to have any application in respect of the situation which had arisen in this case. (at p350)

7. Mr. Tredinnick says that on 5th December 1956 the application lapsed by virtue of s. 54 - that it was dead and nothing could revive it. There was, he says, nothing in existence thereafter with which the Commissioner could deal under the Act, and nothing therefore with which the Appeal Tribunal could order him to deal. (at p350)

8. So far as the meaning which it attributes to the word "lapse" is concerned, I am disposed to agree with this argument. I think that the word "lapse" in s. 54 connotes finality, and that the intention is that, when the time for acceptance has passed and there has been no acceptance, the application is to be no longer regarded as subsisting: cf. Re Freeman and Heatrae Ltd.'s Application (1959) RPC 25, at p 27 , where the words under consideration were "deemed to be abandoned". But, in order to find out what is the "time for acceptance" which is referred to in s. 54, we have to turn to s. 53, and, although I do not think the matter is free from difficulty, I am of opinion that Mr. King is right when he says that the argument is answered by sub-s. (2) of s. 53. (at p350)

9. When s. 53(1) prescribes the "time for acceptance" it does so expressly subject to the next two succeeding sub-sections. Each of those two sub-sections provides for an extension of the time for acceptance beyond the fifteen months. I have difficulty in understanding why, apart from cases of death, the two different provisions were thought necessary, but we must take the two sub-sections as we find them. Sub-section (3) deals with cases where the time for instituting an appeal has not expired and (presumably) no appeal has been instituted. Where that is the position, the Commissioner is empowered to extend the time for acceptance for such period as he thinks fit: he has apparently a discretion in the matter. Sub-section (2) deals with cases where an appeal has been actually instituted in due time, and, where this has been done, the sub-section itself of its own force extends the time for acceptance for a defined period, giving power to the Appeal Tribunal (not the Commissioner) to extend the time further. The real question in the case is whether sub-s. (2) operates in cases where the period of fifteen months prescribed by sub-s. (1) has expired before an appeal is instituted. (A similar question may arise, of course, with regard to sub-s. (3), but we are directly concerned only with sub-s. (2)). The question arises in a crucial form in the present case, because acceptance was refused on 5th December 1956, which was the last day of the fifteen months, so that it was impossible for the applicant to institute an appeal until after that period had expired. Did sub-s. (2) operate, on the institution of the appeal, to prescribe a new period within which acceptance might take place? Or had s. 54 finally and conclusively done its work at midnight on 5th December 1956? (at p351)

10. I think I would concede that a provision for "extending" a prescribed period during which a thing may be done should prima facie be construed as operating only while the originally prescribed period is still current. It may even be said that, when the originally prescribed period has expired, there is nothing to "extend". But, while this view may be said to represent the most natural meaning of the word "extend", that word is by no means incapable of a wider reference. It is by no means a misuse of language to speak of what is really the prescription of a new period as an "extension" of the period originally prescribed. Cases are numerous in which the conferring on a tribunal of a power to "extend" the time for doing a thing is accompanied by an express provision that an "extension" may be granted although the originally prescribed period has expired. An example ready to hand is s. 160 of the Patents Act, sub-s. (2) of which says that "the time required for doing an act . . . may be extended under this section although that time has expired". While these cases suggest that a power to extend time without more is prima facie to be regarded as a power to extend a period still current, they also indicate that an enlargement of time after the expiration of a prescribed period is quite naturally regarded as itself an "extension". (at p351)

11. Section 53(2) must, in my opinion, be construed as enlarging the time for acceptance on the institution of an appeal, whether or not, on the date of the institution of the appeal, the original period prescribed by s. 53(1) has expired. The language used is, as I have said, quite capable of this meaning. To adopt it involves no distortion, no attribution of an unnatural meaning to any word. And it seems to me to be a decisive consideration that sub-ss. (2) and (3) of s. 53 were obviously intended for the protection of applicants desiring to exercise the right of appeal given in unqualified terms by s. 52(3). It is obviously for the purpose of preventing an applicant for a patent from being deprived of his rights by s. 54 that sub-s. (1) of s. 53 is expressly made subject to sub-ss. (2) and (3) of that section. If the narrower construction of those two sub-sections were adopted, the protection in a large number of cases would be altogether illusory. Where two constructions of an enactment are fairly open, and one will achieve the obvious purpose of the legislature while the other will in many cases defeat it, the former construction is to be preferred. This is the rule which should, in my opinion, govern the present case, and I overrule the preliminary objection. (at p352)

ORDER

Preliminary objection overruled.