CONSIDERATION
35 The source of jurisdiction for the Federal Court to entertain appeals of decisions or directions of a Commissioner is found in s 154(1) of the Patents Act which provides as follows:
(1) The Federal Court has jurisdiction with respect to matters arising under this Act.
(2) The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.
(3) A prosecution for an offence against this Act must not be started in the Federal Court.
36 The Court has broad powers in exercising its jurisdiction on appeal. It may admit further evidence, permit examination and cross-examination of witnesses including those giving evidence before the Commissioner. It may affirm, reverse or vary any decision or direction of the Commissioner and give any judgement or make any order in the circumstances that it considers to be fit including orders as to costs.
37 In Kaiser Aluminum & Chemical Corp v The Reynolds Metal Co (1969) 120 CLR 136 (at 142-143) Kitto J said (footnotes omitted):
The appeal is, of course, only an appeal in name. In truth it is an original proceeding, being the first judicial proceeding in the matter of the opposition. The right of appeal is given to an opponent who, in the opinion of the Appeal Tribunal, "is entitled to be heard in opposition to the grant", and a person who proves before the Tribunal, as the appellant has proved in this case, that he had an interest which entitled him to oppose the grant of the patent and still has that interest answers that description. The appeal is therefore competent. It must be decided upon the evidence adduced before this Court, even though that evidence presents on the question of interest a case completely different from the case which was suggested before the Deputy Commissioner. This appears to me to follow from the nature of the jurisdiction under s. 76 (ii.) of the Constitution as to which see Federal Commissioner of Taxation v. Lewis Berger & Sons (Australia) Ltd,; Commissioner of Taxation v. Finn, at pp. 167, 168; and indeed it appears from the general provision in s. 149 that upon the hearing of an appeal the Appeal Tribunal may (inter alia) admit further evidence and give such judgment or make such order as it thinks fit in all the circumstances: cf. Jafferjee v. Scarlett,. For the reasons above stated I am satisfied that the appellant has a locus standi to oppose the grant of a patent.
The respondent contended that the power to admit further evidence implies a discretion, and that I should exercise the discretion by refusing to allow the appellant to depart from the notice of opposition and to make here a case which it did not choose to make before the Deputy Commissioner. In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. (emphasis added)
38 In Jafferjee v Scarlett (1937) 57 CLR 115 (at 119), Latham CJ noted that it was the duty of a court to decide an appeal such as that presently under consideration as if on an original application and not merely to decide whether the decision of the registrar could or could not be supported.
39 In Re Smith; Ex p Mole Engineering Pty Ltd (1981) 147 CLR 340(at 348-349) Mason J noted that:
It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application - there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination.
This view is supported by the judgment of Fullagar J in Broken Hill Proprietary Co. Ltd. v American Can Co.. There two companies lodged notice of opposition to a patent application by the respondent. The grounds of opposition included obviousness, want of novelty and failure to comply with s 40. The opposition was heard by an Assistant Commissioner of Patents. The commissioner delivered an Interim Decision'' holding that the complete specification did not comply with s 40 in that the claims failed to sufficiently define the invention. However, he held that this defect could be overcome by relatively simple amendments which he identified with some particularity. He stated that the amendments, if applied for and allowed, would overcome all the grounds of objection. Fullagar J held that, despite the description Interim Decision'' the Commissioner had actually decided as much of the opposition proceedings as was susceptible of decision at the time and had decided it once and for all. The effect of the decision was that the Commissioner had decided that the application would be refused unless the amendments were applied for and ultimately accepted. (emphasis added)
40 In Iluka Merkel J observed:
[30] An appeal against a decision of the Commissioner under s 60 of the Act is an original proceeding in the Court which is to be decided as the Court thinks fit in all the circumstances upon the evidence before the Court, notwithstanding that the evidence may present a case that is completely different from the case before the Commissioner: see Kaiser Aluminum & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 142-143.
[31] There may be much to be said for the view that appeals to the Court from an interim decision made in the course of a pre-grant opposition will fragment the opposition and may be antithetical to a "swift and economical" disposition of the opposition. However, it is now well established that an interim decision of the Commissioner that upholds one or more grounds of opposition, but which allows the applicant to amend its application to overcome those successful grounds of opposition is an appellable decision for the purpose of s 60: see Broken Hill Pty Co Ltd v American Can Co [1980] VR 143 at 147-148; Mole Engineering at 348-350 per Mason J and 355-356 per Wilson J and Acushnet Co v Spalding Australia Pty Ltd (1990) 18 IPR 364 at 372-375.
[32] The statutory scheme providing for appeals against an interim decision of the Commissioner does not have the consequence that, if a party appeals against the final, but not an interim, decision the Court is bound by all findings of fact and conclusions of law made and applied by the Commissioner in the interim decision: see Acushnet at 376. It is well established that the Court's jurisdiction and powers on an appeal under s 60 are wide, and are not inhibited or fettered by findings of fact and conclusions of law made by the Commissioner or his delegate.
[33] The cases, however, do not appear to deal directly with the issue arising on the present motions namely, whether Iluka in its appeal against the final decision is entitled, without seeking leave to appeal out of time against the interim decision, to appeal against the interim decision and to rely upon grounds dealt with and decided by the interim decision. Put another way, the issue is whether Iluka is only entitled to appeal against the final decision to grant the patent applied for by Technological Resources as of right on grounds that are consequential upon or related to its opposition to the amendments made by Technological Resources to correct the deficiencies identified by the Delegate in the interim decision, and not on grounds that were only applicable to the interim decision.
[34] The answer to those questions depends on the proper construction of s 60 of the Act and, in particular, the consequences that attend a failure to appeal an interim decision. (emphasis added)
…
[50] In my view, in the context of the statutory scheme in respect of an opposition, the interim decision is to be taken as dealing with and generally deciding the grounds of novelty and fair basis under ss 18 and 40 which were stated to be Iluka's grounds of opposition, rather than only with the specific grounds of novelty and fair basis particularised, argued or pressed by Iluka at the hearing before the Delegate. In that regard it is relevant that the opposition is a proceeding between the applicant and the opponent in which the Commissioner is to adjudicate on whether the patent application should be granted (see s 61(1)). A patent is not to be granted if the invention is not novel or the claims are not fairly based on the specification (ss 18 and 40). In that context it is appropriate to view the interim and final decisions as relating to the grounds of opposition of novelty and fair basis generally, and as not restricted to novelty and fair basis as particularised, argued or pressed at the hearing. A narrow approach to the decisions (that is, deciding only the matters particularised, argued or pressed) is not consistent with their content, would tend to undermine the statutory objective of finality and expedition, is inconsistent with the approach to opposition proceedings taken in the English and Australian cases (and, in particular, with the view taken by Fullagar J (at 147-148) in BHP v American Can) about matters decided by an interim decision and is not mandated by the Act. Thus, prima facie, it does not appear to be open to Iluka, without leave, to rely upon the grounds of novelty or fair basis not pursued at the first hearing, the grounds of novelty or fair basis pursued at the first hearing, or any new novelty or fair basis grounds that were only applicable to the unamended application, as such grounds must be taken as having been decided by the interim decision.
[51] I have indicated above that "prima facie" Iluka cannot as of right rely upon grounds that must be taken to have been decided by the interim decision. I have used that expression as it may be arguable that some grounds now sought to be relied upon arise out of, or directly relate to, the amended specification and, as such, are not to be taken to have only been dealt with and decided by the interim decision. It should be noted, however, that senior counsel for Iluka conceded that the amendments narrowed the scope of the claims. Accordingly, subject to the issue of leave to appeal out of time, it is appropriate to afford the parties an opportunity to consider these reasons and, in particular, whether any of the grounds that I regard as prima facie not open to Iluka ought to be permitted as grounds of appeal against the final decision. (emphasis added)
41 In New England Biolabs Inc a Full Court of this Court held:
[43] It seems to us that far more important than looking for a statutory intention to remove a discretion that had existed under the Patents Act 1952, and before that, under the Patents Act 1903, is the recognition of the clear statutory intention, able to be seen in a number of provisions of the Patents Act 1903, but made manifest in the Patents Act 1952 and the Act, to put before the Court the same subject matter for decision that had been before the Commissioner, but to deploy the executive and judicial powers respectively in the making of decisions on that subject matter.
[44] The use of the word "appeal" by Parliament does not confer appellate jurisdiction. There is no doubt that the nature of the appeal provided for in s 104(7) of the Act is one such as to confer original jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: Jafferjee v Scarlett (1937) 57 CLR 115 at 119-120, 126; the Bayer case; and Kaiser Aluminum & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 142.
[45] Implicit, however, within the use of the word "appeal" and the phrase "appeal against the decision of the Commissioner", and without any other description of the controversy to be quelled by the exercise of judicial power, is the identification of the matter or controversy -- the subject matter of the deployment of the respective powers -- being the same in each case. The simplicity of the enunciation of what the Court is doing: hearing an appeal against a decision of an administrator by exercising for the first time the judicial power of the Commonwealth in the original jurisdiction leads one to conclude that the Court is dealing with the same subject matter as was dealt with by the Commissioner.
[46] To the extent that the Act and Regulations delimit the boundary of the subject matter for decision by the Commissioner by restricting the decision to certain criteria or grounds, or by limiting what is permitted to be raised by an opponent in the application, or by eliminating any element of discretion in the making of the decision, they plainly confine the controversy before the Commissioner. We are of the view that the notion of an appeal to the Court in this context evinces a Parliamentary intention that the same subject matter be dealt with by the Court as was dealt with by the Commissioner (but this time by the deployment of judicial power). Thus, in order to conclude that the Court has a wider task by reference to different or wider criteria than that undertaken by the Commissioner one would need to identify some factor either from the nature of the judicial power or from some statutory provision upon which to base such a conclusion.
[47] It was not said by the appellant that the exercise of the judicial power, of itself, gave the Court a discretion to refuse to grant leave to amend under s 104(7) of the Act in circumstances where the Commissioner had no such discretion under s 104(3). The different nature of the power (judicial rather than administrative) being exercised may lead to certain differences of procedure and approach, and will lead to a different character of decision with different attendant incidents. A discretion of the kind asserted by the appellant to reside in the Court in hearing an appeal under s 104(7) is not a necessary incident of judicial power; rather, if it exists, it is an incident of the task given to the Court (necessarily by statute) to be undertaken. That the judicial power is exercised to quell a controversy does not of itself introduce a general discretion affecting the question as to whether the controversy should be quelled one way or another. Rather, if a discretion resides in the Court to take into account certain matters in deciding whether to take one course or another, that is so because of the delimitation of the boundaries of the subject matter for decision by the Court -- that is, the delimitation of the task of the Court. These limits are to be found in the Act or some other relevant statute.
[48] Turning to the Act, the appellant first relies upon s 160. That section, however, is not directed to the limits or boundaries of the subject matter for decision. It clarifies and amplifies the power of the Court, but it is not directed to the widening of the subject matter of the appeal against a decision of the Commissioner. The same can be said in this context of ss 19, 22 and 23 of the Federal Court of Australia Act 1976 (Cth).
[49] The subject matter of any appeal against a decision of the Commissioner is limited by the Act and Regulations as is also the decision or function that was previously before the Commissioner (the "decision" against which the appeal is sought). This is not to give any restricted or restrictive interpretation to otherwise ample powers in s 106 of the Act or ss 19, 22 and 23 of the Federal Court of Australia Act: cf the numerous High Court decisions referred to in Hewlett Packard Australia Pty Ltd v GE Capital Finance Pty Ltd (2003) 135 FCR 206 at [187]. Rather, it is to recognise that the provision for an appeal to the Court against a decision of an administrator in this statutory context is to confer judicial power on the Court to hear and decide the same subject matter as was before the administrator, such subject matter having the same boundaries and limits as existed under the statute before the administrator. One boundary of the subject matter for decision was that the opponent (the appellant) was restricted to opposing amendments sought under s 104(1) to grounds found in s 102; another boundary was the statutory and regulatory regime which precluded the Commissioner looking beyond a group of factors which did not include a general discretion which could be informed by the asserted misconduct of the respondent (as applicant). These boundaries are not a limit or fetter on the exercise of the executive power by the Commissioner; nor are they a limit or fetter on the exercise of the judicial power of the Commonwealth by the Court. They are part of the identification of the controversy over rights, privileges and entitlements that are entirely creatures of statute. One incident of the right to ask for leave to amend and of the right of opposition thereto is that allowance of any amendment is to be decided by reference to limited criteria: cf R v Quinn.
[50] The appellant referred to a number of decisions of this Court in illustration of the asserted effect and significance of s 160: F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 dealing with the nature of evidence before the Court; Frederikshavn Vaerft A/S v Stena Rederi Aktiebolag (2002) 124 FCR 243 dealing with the substitution of the opponent; EI du Pont de Nemours & Co v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392 dealing with fresh grounds and particulars of opposition; Genetics Institute Inc v Kirin-Amgen Inc (1996) 67 FCR 527; and Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 dealing with the power to order amendments. None of these cases assists the appellant. That the Court relies on evidence different from the material before the Commissioner is only to be expected as a consequence of the judicial power being exercised. The substitution of an opponent is a procedural matter within the boundaries of the dispute, permitted before the Commissioner and within the scope of an ample power such as s 160(e). The raising of fresh grounds (within the statutory limits of the subject matter of the decision) merely reflects the original nature of the jurisdiction in the Court and the fact that the subject matter is being litigated for the first time in the exercise of judicial power. The direction by the Court that a patent be granted conditional on amendments which appear appropriate as was done by Heerey J in Genetics Institute occurred in an appeal under s 60(4) of the Act being an appeal (as his Honour said at 529) from a decision which could include a direction that amendments be made. In Merck & Co Inc v Sankyo Co Ltd Lockhart J was dealing with s 60(5) of the Patents Act 1952. (emphasis added)
42 The observation that the evidence presented on the question may give rise to a case completely different from the case which was suggested before the Deputy Commissioner has been observed and repeated in a number of subsequent decisions: see Iluka. It is the original jurisdiction of the Court which is being exercised.
43 The present Appeal which is an appeal against the decision of the Commissioner in an Opposition to the grant of a standard patent under s 60(4) of the Patents Act enables the Court to consider any ground on which the grant of a patent may be imposed with a fair potential to establish that the prospective patent would be invalid (EI du Pont de Nemours & Company v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392 (at [25])). The du Pont case makes it clear that the Court is not limited to the grounds of invalidity pursued before the Commissioner.
44 In argument before me, much attention has been focussed on the decision of New England Biolabs Inc. In that case a patent opponent appealed a decision to amend pursuant to s 104(7) of the Patents Act. It argued in favour of the Court exercising its discretion to refuse leave to amend on the hearing of the s 104(7) appeal against the decision to amend. In refusing the appeal, the Full Federal Court determined that the structure of the legislation was intended to give the Court the same task as is given to the Commissioner. In the case of an appeal against an amendment, it was clear that the Court was dealing with the same subject matter as was dealt with by the Commissioner. The Court concluded that, to the extent that the Patents Act and Regulations limited the boundary of the subject matter by restricting the Commissioner's decision to certain criteria or grounds, or by eliminating any discretion, they confined the controversy before the Commissioner. It distinguished, however, subject matter from evidence.
45 Bradken has accepted that although a 'completely different' case may be presented on the hearing de novo appeal, this does not mean that Bradken in its Appeal can go beyond the subject matter that was the subject matter of the Final Determination. However, the evidence which may be adduced in support of it may be quite different. I accept this submission. There is a public interest in all material properly available at the time of the Appeal, rather than simply the material that was relied upon in the course of the opposition process before the Commissioner being considered by Court hearing the Appeal.
46 I also accept the submission from Bradken that the effect of the Lynx amendment was that the First Application and the First Decision were replaced by the Second Decision (Mole Engineering).
47 The logical effect of this is that all aspects of the First Decision fall away. As the First Decision was substituted by the Second Decision, from which there can be no appeal, there is no longer a First Decision to be the subject of appeal or cross-appeal. As Bradken has pointed out, if the Second Decision had been unsuccessful, for Lynx the position would be different and the parties would proceed to appeal and to cross-appeal from the First Decision. That is not the case. Equally, it is not apparent to me that Lynx will suffer any prejudice in any material sense because in the Second Cross-Appeal, the grounds of appeal replicate in their entirety the grounds of the First Cross-Appeal advanced by Lynx. Therefore, just as Bradken may put a different case but on the same subject matter in the Appeal from the Final Determination, Lynx can do precisely the same.
48 Lynx advanced certain arguments said to be relevant to prejudice it would suffer if Bradken were permitted to put its different case on the same subject matter. In particular, the concern expressed by Lynx was the new material going to prior art. I cannot accept that prejudice would be occasioned in circumstances where all possible material in support of the Second Appeal were, on the one hand, advanced by Bradken and, in response, Lynx would advance everything it had originally sought to advance in the First Cross-Appeal.
49 One of the grounds of prejudice advanced appears to be that Lynx would lose its entitlement to have the Appeal granted on the original claims. It may be that, as Bradken has argued, that was the choice of Lynx in moving on from the original claims and proceeding by way of amendment which had the effect of substituting the original claims, in other words, by pursuing the Second Decision rather than pressing its own Appeal from the First Decision (for example, the First Cross-Appeal).
50 But that does not have to be decided at present. It may be the subject of legal argument on the Second Cross-Appeal but it will not preclude Lynx from framing its Cross-Appeal in a manner that advances the claims in its (original) First Application.
51 If the legal argument for Lynx is correct then it will remain correct on the hearing of the Second Appeal. In the meantime, the present structure preserves an entitlement for Bradken to present new evidence but on the same subject matter (although Lynx says Bradken cannot, at law, do this) and at the same time, through the Second Cross-Appeal, permit Lynx to advance its First Cross-Appeal in its entirety. (Although Bradken appears to submit that this is not open as a matter of law).
52 My view is that neither of the legal arguments is sufficiently certain to warrant, in effect, a striking out of any part of the Second Appeal or Cross-Appeal.
53 A complaint was made as to a substantial waste of costs but, again, I found it difficult to identify how this could not be remedied, if appropriate. Lynx would not be precluded from the benefit of the broadest judicial discretion in relation to costs if the circumstance requires.