Re Philips Electrical Industries Pty Ltd [1962] HCA 25; (1962) 106 CLR 623 (22 May 1962)

HIGH COURT OF AUSTRALIA

Ex parte PHILIPS ELECTRICAL INDUSTRIES PTY. LTD. [1962] HCA 25; (1962) 106 CLR 623

Patents

High Court of Australia
Dixon C.J.(1), McTiernan(2), Menzies(3), Windeyer(4) and Owen(5) JJ.

CATCHWORDS

Patents - Date of patent - Convention patents - Registration of licences - Whether date of patent granted under earlier legislation changed by later legislation - Patents Act 1952-1960 (Cth), s. 67 (1).

HEARING

Sydney, 1962, April 27, May 1;
Melbourne, 1962, May 22. 22:5:1962
MANDAMUS.

DECISION

May 22.
The following written judgments were delivered: -
DIXON C.J. Notwithstanding the elaborate and resourceful argument of counsel see how s. 67 (1) could be understood as applying to patents granted and sealed before the Patents Act 1952-1960 came into force. It is evident on its terms that it deals with patents to be sealed, not with patents long since sealed. The case for the applicant must depend upon giving to s. 67 (1) an operation, which I think is quite impossible, that is to say an operation whereby a patent sealed before the Act came into existence must in the future be taken to have been sealed as of a date other than that which it in fact bears and as of which it was originally sealed. It is necessary to add only that sub-s. (3) of s. 5 continues the application of the Acts repealed to an application pending at the commencement of the Act of 1952 and is expressed to do so up to and including the sealing of the patent and only after such a patent is sealed does the Act of 1952 apply to it. This excludes the application of s. 67 (1) to a patent granted upon an application under the old Act pending when the new Act commenced. How then could it apply to a patent granted before that time? It appears to me that the case for the applicant cannot be supported. (at p627)

2. I have had the advantage of reading the judgment of Menzies J. and I agree in it. (at p627)

3. The application should be refused, the applicant paying the costs of the Commissioner. (at p627)

McTIERNAN J. In my opinion this application should be refused. (at p627)

2. The question raised really depends in my view upon the construction of s. 5 of the Patents Act 1952-1960. The strength of the applicant's argument would appear to be that sub-s. (2) of this section provides that the Act applies to and in relation to patents granted under the repealed Acts. The patents in question answer this description. Section 64 (1) of the Patents Act 1903-1950 provided that the term of a patent was sixteen years from "its date"; s. 66 provided for the sealing of a patent when it is determined that it ought to be granted; s. 69 provided that, subject to the provisions of the Act, every patent shall be dated and sealed as of the date of the application. The result of those provisions was when the Patents Act 1952-1960 came into force, the date of the patents in question was governed by the sections to which reference has just been made. The new Act contains its own provisions regarding the sealing and dating of a patent. Section 62 says, as did s. 66 of the previous Act, that when it is determined that a patent ought to be granted, the Commissioner shall cause a patent to be sealed with the seal of the Patents Office; s. 62 contains a direction not in s. 66, that the patent is to be in accordance with the prescribed form. Under s. 67 of the Patents Act 1903-1950, a patent was to be sealed "as soon as may be and not after the expiration of sixteen months from the date of the application"; the section provided for an extension of such time. Section 6 of the new Act deals with the time for sealing. It repeats the provision of s. 67 of the prior Act that the patent shall be sealed "as soon as may be" but there is a new limitation of time for sealing, which is "not after six months from the date of the advertisement of the acceptance of the application and complete specification", and there is also provision for an extension of time. Section 67 of the Patents Act 1952-1960 provides that, subject to this Act, a patent shall be dated as of the day on which the complete specification was lodged, and s. 68 that the term of the patent shall be 16 years reckoned from the date of the patent, which is to be determined by reference to s. 67. (at p628)

3. Has sub-s. (2) of s. 5 the effect of applying the provisions of the 1952-1960 Act relating to the sealing of a patent and its date to patents granted under the repealed Acts? If it has the appellant argues that it would not be necessary to call in all patents sealed under the provisions of the Act of 1903-1950 for the purpose of altering that date. According to the argument, the word "dated" in s. 67 of the new Act does not mean the writing of the date on the patent but is intended to mean that the patent shall take effect from the day on which the complete specification was lodged. It would follow that the actual date written on a patent, sealed under the repealed Acts or the Patents Act 1952-1960, would not be material. It was further urged that under the new Act the letters patent themselves are to be read merely as a grant of the rights the patentee has under the Act and that in this view a patent sealed under the repealed Acts ought to be read as conferring those rights as from the day on which the complete specification was lodged, and not from the date of the application, its date according to the repealed Acts. (at p628)

4. These may be the consequences if sub-s. (2) of s. 5 of the Patents Act 1952-1960 applies to and in relation to any patent granted under the repealed Acts to the extent of altering the day as of which it is "dated and sealed" to the day on which the complete specification is lodged. But it is obvious that sub-s. (2) of s. 5 should be construed so as to operate consistently with sub-s. (3) of that section. This sub-section contains a special provision preserving the application of the repealed Acts to "all applications lodged before the commencement of this Act and to the sealing of patents on those applications", with an addendum in these words "but this Act applies to and in relation to the patents so sealed". In my opinion, the operation of the repealed Acts which is preserved by the sub-section extends to the dating and sealing of patents done pursuant to s. 69 of the Patents Act 1903-1950. I think that "sealing" is intended to embrace "dating" and if this be right it is not important that dating is not expressly mentioned in sub-s. (3) of s. 5. (at p629)

5. It was submitted for the applicant that reference to a number of sections of the present Act confirms the argument that s. 67 and s. 68 of this Act apply to patents sealed under the repealed Acts. If it be conceded that from certain of these provisions some aid might be gathered for the argument, nevertheless the determining provision is sub-s. (3) of s. 5, because in effect it says, in my view, that the date which every patent sealed under the repealed Acts had by virtue of their operation is to be retained. (at p629)

MENZIES J. As a means of having it determined whether or not three Australian patents Nos. 144269, 147972 and 151705 belonging to N. V. Philips' Gloeilampenfabrieken had expired, that company on 14th April 1961 gave licences thereunder to the applicant, Philips Electrical Industries Pty. Limited, which then applied to the Commissioner of Patents to have the licences registered. When registration was refused the applicant applied to this Court for mandamus to compel the Commissioner to register the licences. The matter first came before Kitto J., who refused an order nisi. The applicant then sought an order absolute from the Full Court. (at p629)

2. The patents in question were convention patents dated 25th February 1943, 31st May 1943 and 8th August 1942 respectively - that is, the dates upon which the various basic applications were made by N. V. Philips' Gloeilampenfabrieken in Holland. The patents were so dated in accordance with s. 121 (1) of the Patents Act 1903-1946 (which I will call "the old Act"). The convention applications were lodged in the Australian Patent Office on 21st April 1948, 31st March 1948 and 21st May 1948 respectively and each application was accompanied by a complete specification. It is the applicant's contention that the Patents Act 1952-1960 (which I will call "the new Act") changed the date of each of the three patents from the date of the basic application to the date upon which the complete specification was lodged in the Australian Patent Office so that in each case the sixteen-year term of the patent is still current. (at p630)

3. This contention depends upon the repeal of the old Act by the new and upon s. 5 (particularly s. 5 (2)), the definition of "patent" in s. 6, s. 67 (1) and s. 68 (1) of the new Act. These provisions are as follows: "5. - (1) This Act applies to and in relation to all applications for patents lodged after the commencement of this Act and to and in relation to all patents granted on those applications. (2) This Act also applies to and in relation to patents granted under the repealed Acts. (3) Subject to sections fifty and fifty A of this Act, the repealed Acts apply, notwithstanding their repeal, to and in relation to all applications for patents lodged before the commencement of this Act and to the sealing of patents on those applications, but this Act applies to and in relation to the patents so sealed. (4) The priority date of each claim of the complete specification of a patent referred to in either of the last two preceding sub-sections is - (a) the date of the patent; or (b) in the case of a single patent granted on two or more applications, the date of the application which was accompanied by the provisional specification to which the claim relates, and any reference in this Act to a priority date indicated in a claim includes a reference to such a priority date." Definition of "patent" in s. 6 of the Patents Act 1952-1960: "'Patent' means letters patent for an invention granted under the repealed Acts or under this Act".
"67 (1) - Subject to this Act, a patent shall be dated as of the day on which the complete specification was lodged."
"68 (1) - Subject to this Act, the term of a patent shall be sixteen years, reckoned from the date of the patent." (at p630)

4. Unless s. 67 (1) means, in relation to every patent in existence when the new Act came into operation, that thenceforth, for the date appearing in the letters patent as its date, there should have been substituted the date upon which the complete specification was lodged in the Patent Office so that the term of the patent would have commenced from the latter date, the applications must be refused. (at p630)

5. Looking at s. 67 (1) in the context of the other sections comprising Pt VI of the new Act, it is plain that it is not concerned with the re-dating of letters patent that had been dated and issued but is concerned merely with dating patents in accordance with the Act as they are granted and sealed pursuant thereto. This is the natural meaning of the language used. Moreover, as will be seen later, although there is nothing in the new Act that requires the plain words of s. 67 (1) to be given any other than their natural meaning, there is a good deal that reinforces the conclusion that the section does not change the dates of existing letters patent. In the first place it is unlikely that it was intended, without an express provision, to give practically every patent in force when the new Act came into operation a different and extended term. Then the words "the date of the patent" in s. 5 (4) in relation to patents sealed under the provisions of repealed Acts clearly enough refer to the original date and not to a later substituted date - otherwise existing patents would be liable to defeat on account of happenings occurring after the date at which they were dated and sealed in accordance with s. 69 of the old Act - and the same words in s. 68 of the new Act should prima facie bear the same meaning. A further consideration is that where it has been provided in s. 5 (3) that the old Act applies to pending applications up to the sealing of patents upon those applications, it is not to be supposed that, as soon as a patent has been dated and sealed in accordance with s. 69 of the old Act, s. 67 (1) of the new Act should operate to give such a patent a different date. When to these considerations there is added the unlikelihood that it was intended by the new Act to give different dates to practically all letters patent in existence without any provision for re-dating the documents themselves with the consequence that the date of any patent could only be ascertained by search in the Patent Office, it is apparent that to construe s. 67 (1) in accordance with the applicant's contention would produce such startling and inconvenient consequences that the contention should be rejected unless there can be found elsewhere in the Act some provision which dictates that s. 67 (1) should be construed otherwise than in accordance with the natural meaning of the words used. (at p631)

6. In support of his contention, Mr. Bowen (for the applicant) did rely upon ss. 50, 50A and 73 as indications that, in relation to patents granted under repealed Acts or upon pending applications, the date upon which the complete specification was lodged is given a significance that points to its general acceptance as the date of any patent, but I find nothing in these sections to support this conclusion. Sections 50 and 50A relate to the granting of a single patent for cognate inventions and contain the particular provision that, where an application for such a patent is refused and the complete specification is cancelled, any patent granted upon any of the applications should be dated as from the date on which the cancelled specification was lodged. This provision cannot, of course, have any direct bearing upon the date of patents granted under repealed Acts, which is the problem with which we are here concerned, and the fact that the sections do apply to pending applications because s. 5 (3) is subject to them does not seem to me to have any bearing upon the construction of s. 67 (1). In a very special case it has been thought advisable to depart from the general scheme of the legislation and to have one rule applicable to pending applications and new applications alike and, not unnaturally, the rule that the new Act establishes for new applications has been adopted. Nor does s. 73 assist the applicant. This relates to patents of addition and by sub-s. (2) requires that "a patent shall not be granted as a patent of addition unless the date of lodging of the complete specification was the same as, or later than, the date of lodging of the complete specification in respect of the main invention". This is no doubt a rule of convenience because whether there is to be a patent of addition or not depends upon a comparison of the two complete specifications, but the circumstance that s. 73 (2) applies to the case where there is an application under the new Act for a patent as a patent of addition to a patent for the main invention granted under a repealed Act affords no ground for inferring that the date of the original patent has been advanced to the date upon which the complete specification was lodged. (at p632)

7. For the foregoing reasons the application for mandamus should be refused on the ground that the patents in question have already expired. (at p632)

WINDEYER J. I agree that this application must be refused for the reasons that are sufficiently and convincingly given in the judgment of my brother Menzies to which I have nothing to add. (at p632)

OWEN J. I have read the reasons of the Chief Justice and of Menzies J. I agree with them and with the order which they propose. (at p632)

ORDER

Application for an order absolute for a writ of mandamus directed to the Commissioner of Patents dismissed with costs.