2.5 Consideration
68 I consider that the date from which the respondents are entitled to relief for infringement of the Patents is the date of their grant, for the following reasons.
69 First, the language of Part 1 of Chapter 11 of the Act supports this conclusion. Section 120(1) provides that the patentee or an exclusive licensee may start "infringement proceedings" in a prescribed court, or in another court having jurisdiction. As noted, an act of infringement will arise where an act is done in respect of the exclusive rights conferred pursuant to s 13. The term "infringement proceedings" is defined in the Dictionary to mean proceedings for infringement of "a patent", which means a patent as granted pursuant to either ss 61 or 62. The term "patentee" is defined to mean the person for the time being entered in the Register as the grantee or proprietor of a patent.
70 Subsection 120(1A) of the Act provides that infringement proceedings in respect of an innovation patent cannot be started unless the patent has been certified. There is no equivalent provision in relation to a standard patent.
71 Accordingly, whilst a patentee of a standard patent may commence proceedings upon the grant of the patent, the patentee of an innovation patent must not only have received the grant of the patent but also certification under s 101E of the Act.
72 Section 122(1) provides that the relief which a court may grant for infringement of a patent includes an injunction (subject to such terms, if any, as the Court thinks fit) and, at the option of the plaintiff, either damages or an account of profits. The words "for infringement of a patent" (emphasis added) signify that relief is available in respect of an act of infringement of a patent that conforms with the definition of that term. Namely, a standard or innovation patent that has had the benefit of a grant within ss 61 or 62.
73 Accordingly, the language of s 122(1) of the Act indicates that it is the grant of the standard patent that entitles the patentee to commence proceedings (s 120(1)), the grant and certification of the innovation patent that entitles the patentee of an innovation patent to commence proceedings for infringement (s 120(1A)) and the focus is upon "grant". The relief which may be obtained is for the infringement of the granted patent (s 122(1)).
74 Secondly, the statutory expression in s 122(1) "relief… for infringement of a patent" must be properly understood. Infringement arises when all of the features of the invention as claimed are taken; Meyers Taylor v Vicarr. Infringement is in relation to the claims, which define the monopoly, not the patent at large. This lends support for the appellants' contention that ss 13, 65, 68 and reg 6.3(7)(c) cannot be interpreted literally to give the patentee an enforceable monopoly in respect of an "invention". The rights to relief can arise only when claims have been brought into existence.
75 In this context, s 40(2) of the Act requires that a complete specification end with claims defining the invention. A divisional application filed pursuant to s 79B(1) of the Act must also contain claims. That application may adopt as the "date of the patent" the date of the filing of complete specification of its parent or grandparent (reg 6.3(7)(c)). However, the claims of that divisional patent may be different to the claims of the parent. The construction of ss 13, 65 and 68 of the Act adopted in Britax leads to the result that an act of infringement may arise before any claims defining the infringement have been brought into existence.
76 Thirdly, I accept the appellants' submission that the purpose of the combined operation of ss 13, 65, 68 and reg 6.3(7)(c) is to set limits to the window of time in which a patentee might obtain an enforceable right "subject" to the Act. This gives force to the opening words of s 13(1) by reference to the language of Chapter 11 and s 57. Several examples arise as to restrictions on the rights conferred pursuant to s 13. One is seen in the compulsory licence provision (s 133), which operates to derogate from or limit the exclusive rights conferred. Another is s 120(4), which provides a statutory limitation period, limiting the ability of a patentee (or exclusive licensee) to obtain relief in respect of infringing acts that occur during the term of the patent. Another arises in relation to s 57, to which I refer further below.
77 In my view, the language of s 122 provides a further example of a relevant restriction, which by implication is to limit the entitlement to relief for infringement of those rights to the date of grant. Section 122 is explicitly directed to the relief that a court may grant "for infringement of a patent". Section 13 is in general terms, and is not specifically directed to relief. In my view the more specific provision subordinates the general, in circumstances where the general explicitly is expressed to be "subject to" the balance of the Act.
78 Fourthly, the construction adopted in Britax leads to the result that a person may be liable for the infringement of claims of some patents granted on divisional applications from a time before those claims were drafted or published. The construction that I prefer leads to the conclusion that the right of a patentee for relief for an act of infringement will be preceded by the grant of the patent and the publication of the specification and claims, regardless of whether the patent is based on a divisional application. The facts of the present case demonstrate such a position. In my view this approach is consistent with policy.
79 Disclosure of the invention to the public by the patentee is the consideration that the patentee gives for the grant by the crown of the monopoly. Lahore records at [5000]:
A patent is a temporary monopoly granted by the Crown to the patentee in return for the disclosure of the invention to the public in the patent specification. The term is derived from "Litterae Patentes" (letters patent), open letters so called because they were not sealed up but were exposed to view with the Great Seal attached to the bottom.
80 In No-Fume Ltd v Frank Pitchford & Co Ltd (1935) 52 RPC 231 at 243 in a passage cited with approval by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at [25], Romer LJ said:
[I]n other words, [it is essential] that the patentee should disclose his invention sufficiently to enable those who are skilled in the relevant art to utilise the invention after the patentee's monopoly has come to an end. Such disclosure is, indeed, the consideration that the patentee gives for the grant to him of a monopoly during the period that the patent would run. …
81 The dual purpose of the claims was succinctly summarised by Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79; (1988) 11 IPR 289 (Rehm) at 94-95 (where his Honour was addressing the Patents Act 1952 (Cth)) (emphasis added):
… As s 40 itself indicates, the task of the body of the specification is fully to describe the invention including the best method of performing it known to the applicant. The description primarily is addressed to "all and sundry who may wish to construct the device after the patent has expired": Ludlow Jute Co Ltd v Low (1953) 70 RPC 69 at [76]. The function of the claims is to define the invention and mark out the ambit of the patentees' monopoly, and primarily is addressed to potential rivals: see generally Fox H G, Canadian Law and Practice Relating to Letters Patents for Inventions, 4th ed, pp 165-6, 193-6.
82 In Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261; (2006) 68 IPR 254, Stone J said that:
18. … The patentee must define the invention with sufficient precision to permit the monopoly to be determined and allow the general public to identify from the words of the claims the conduct prohibited: British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650-651. The public are entitled to be able to design around the monopoly claimed in a patent and therefore they must be able to determine reliably the scope of the claims: Beloit Technologies Inc v Valmat Paper Machinery Inc [1895] 24 RPC 705 at 720.
See also; Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; (2011) 91 IPR 209 at [37] (not relevantly reversed on appeal); Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162; (2013) 100 IPR 285 at [231] per Jagot J; Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102; (2012) 204 FCR 494 at [43] per Keane CJ for similar statements.
83 The purpose of the claims is accordingly to define the invention, and mark out the ambit of the monopoly for the public, including trade rivals. This may notify rivals of the territory which is forbidden so that they can avoid or design around the scope of the monopoly. The significance of the complete specification becoming open to public inspection forms a necessary part of that purpose; until it becomes so open, trade rivals are unable to see the claims or to understand the scope of the monopoly asserted.
84 Fifthly, the continuation of this policy rationale on the part of the legislature is apparent from the language of s 57 of the Act.
85 The language of s 57(1) reflects an assumed state of affairs (emphasis added).
57 Effect of publication of complete specification
(1) After a complete specification relating to an application for a standard patent has become open to public inspection and until a patent is granted on the application, the applicant has the same rights as he or she would have had if a patent for the invention had been granted on the day when the specification became open for public inspection.
86 The balance of s 57 provides protection to potential infringers:
57 Effect of publication of complete specification
…
(3) Subsection (1) does not give the applicant a right to start proceedings in respect of the doing of an act unless:
(a) a patent is granted on the application; and
(b) the act would, if done after the grant of the patent, have constituted an infringement of a claim of the specification.
(4) It is a defence to proceedings under subsection (1) in respect of an act done:
(a) after the complete specification became open to public inspection; and
(b) before the patent request was accepted:
if the defendant proves that a patent could not validly have been granted to the applicant in respect of the claims (as framed when the act was done) that are alleged to have been infringed by the doing of the act.
87 Accordingly, the position under s 57 serves to give provisional retrospective entitlement to relief in respect of acts prior to grant, but only upon grant and only where the conditions of ss (3) and (4) are satisfied. A potential infringer has the opportunity to scrutinise the claims of the patent application once it becomes open for inspection. It may seek to work around the claims or conclude that the claims of the patent, if granted, would be invalid and accordingly proceed with its planned conduct. In each case, the policy considerations relevant to the drafting of claims are preserved by the operation of s 57.
88 Section 57 also tends to confirm that the construction advanced by the appellants is preferable. The assumption within the language of s 57(1) is that but for the exception provided therein, no relief for infringement is available prior to grant. Where retrospective relief is permitted prior to the date of grant, the protections identified in ss (3) and (4) are available.
89 Sixthly, on the construction adopted in Britax, a patentee of a divisional standard patent would be able to secure relief in respect of a period prior to publication if based on a parent or grandparent. Section 57 does not, by its terms, prevent a patentee of a standard patent granted on a divisional application from obtaining relief prior to the date upon which the application first became open to public inspection. This would provide such a patentee with greater rights for a patent based on a divisional application. If such additional rights were contemplated, I would expect that the Act would have more explicitly provided for that circumstance. No policy rationale is apparent for such an approach. I consider this anomaly to be an indication that the result of the construction adopted in Britax is not intended.
90 Seventhly, s 57 does not apply to innovation patents at all (whether granted on divisional applications or otherwise). In Britax, the Court relied on the fact that the amendments that introduced into the Act the innovation patent did not include a reference to innovation patents within s 57. Section 57(2) had provided an equivalent provision for petty patents, so that a patentee was able to sue in respect of acts of infringement upon the specification becoming open to public inspection. Section 57(2) was removed with the introduction of the innovation patent system. The Court found that by deciding not to include innovation patents within s 57, Parliament had deliberately decided that the date in respect of which an act of infringement could be the subject of suit was the date of the patent.
91 In this regard Middleton J drew upon the Revised Explanatory Memorandum to the Patents Amendment (Innovation Patents) Bill 2000 (Cth). The Revised Explanatory Memorandum said, in respect of that change (emphasis added):
Item 28 - Subsection 57(2)
46. This item repeals subsection 57(2) of the Patents Act consequential to the repeal of the petty patent system. The subsection deals with the publication of petty patents prior to grant. This provision will not apply to innovation patents because innovation patents will only be published after grant.
92 In my view, contrary to his Honour's finding, the final sentence of that paragraph supports the view that I have taken. As noted above, an innovation patent is accepted swiftly after a "formalities check" and then the complete specification is granted and made open to public inspection in the one step. No pre-grant opposition is available. There is no need for the exception provided by s 57. Substantive consideration of the specification only takes place upon certification. By contrast, a standard patent is not accepted by the Commissioner of Patents until after it has undergone a substantive examination, and then may be subject to potentially lengthy grant opposition. Under the Act before it was amended, a petty patent was also subject to a substantive examination before acceptance (former s 50). The Revised Explanatory Memorandum records (at 1, 5) that in deciding to abolish the petty patent the legislature had elected to remove the step of substantive examination before grant so as to speed up the progression of a second tier patent to grant.
93 Section 57 provides a means by which the patentee upon a granted patent may seek relief dating from the date when the complete specification became open for public inspection, once the patent is granted. Given the substantive changes made to the system by abolishing petty patents and introducing innovation patents in their stead, the ameliorative effects of s 57 were not required for innovation patents. In my view the premise of the conclusion in Britax is that, in the absence of s 57, the right to relief for infringement accrues from the date of the commencement of the term of the patent. For the reasons set out above, that view is not, with respect, supported by the language of Part 1 of Chapter 11 of the Act.
94 Further, in Britax the Court rejected a submission that its construction would give to divisional applications more extensive rights than their respective parent applications (at [21]).
95 However, the interpretation adopted in Britax reflects a dramatic shift in the policy underlying the grant of substantive rights pursuant to the Act. It leads to the unattractive result that the owner of a divisional innovation patent may file a divisional application upon a much older standard patent and then sue for acts of infringement that took place well before the invention was defined in any claims. I would expect such a policy shift to have been clearly forecast in the language of the Act and in the secondary materials. No such shift is signalled in either.
96 Finally, the appellants raise the operation of s 129A as another example of an anomalous result. They submit that the Britax construction yields the result that the patentee may sue for infringing acts committed prior to certification but may not threaten infringement proceedings in respect of those acts prior to certification. I consider that this provides a further example of a consequence of the construction adopted in Britax which produces an anomalous result that is avoided by the construction that I have preferred.
97 Accordingly, I respectfully disagree with the conclusion reached in Britax and find that the relevant date for determining infringement of an innovation patent under the Act is the date of grant for the patent in suit.