D.G. Searle & Co v Drug Houses of Australia Pty Ltd [1984] FCA 122

Patents No's. 422,217 and 499,551. The order of the Supreme

Court was made pursuant to the power conferred by 0.5 r.1 of the Supreme Court (Industrial Property) Rules 1981. The

"1.(1) A caveat under section 91 of the Patents Act 1952, ... shall be filed ... within the time stated in the advertisement published in accordance with the Patents Regulations in relation to the petition ... as the tame within which the petition ... is to be lodged, or within such further time as the Court allows."

The appeal was due to come on for hearing before a Full Court of the Federal Court on 15 March 1984. By notice dated 8 March 1984, Drug Houses gave notice that when the appeal came on for hearing it would move the Court for an order dismissing the appeal as incompetent; see 0.52 r.18

Federal Court Rules. The issue raised by the motion was of

small compass, but it and another issue arising in connection

Under sub-section 148(1) Patents Act, an appeal lies to the Federal Court from an "order of a prescribed court exercising jurisdiction under this Act". The Supreme Court of Victoria is a prescribed court under that Act. In support of the motion, counsel for Drug Houses contended that the order appealed from was not an order of the Supreme Court "exercising jurisdiction under" the Patents Act, but was an

order of the Supreme Court exercising jurisdiction under 0.5

r.-l of the Supreme Court (Industrial Property) Rules in

relation to a matter of practice and procedure of the Supreme

To understand the contention, it is necessary to state briefly the relevant facts. On 7 July 1972, Letters Patent No. 422,217 dated as from 17 April 1967 were granted to Searle. Unless extended, the term of the Letters Patent would have expired on 17 April 1983. Searle desired to have the Letters Patent extended for a further term under s.90 Patents Act. Under sub-section 90(1) a patentee "may, after advertising, as prescribed, his intention to do so, present to a prescribed Court, at least six months before the expiration of the term of the patent, or within such further time as a prescribed court allows, a petition praying that his patent be extended for a further term". Under Reg. 37, Patent Regulations, a patentee intending to present a petition under s.90 Patents Act is required to advertise his intention to do so in the Official Journal. The advertisement must state "a time being not less than one month and not more than three months after the advertisement is published in the Official Journal, within which the

Under s.91 Patents Act a person interested may file

in the prescribed court a caveat against the extension and,

by s.92, on the hearing of the petition a person who has

filed a caveat shall be made a respondent to the petition.

Journal" mean the Official Journal referred to in s.175. Under that section, the Commissioner of Patents ("the

Commissioner") is required to issue periodically an Official Journal containing such matters as are prescribed or as the

Commissioner sees fit. There is no doubt that the Official

"Journal performs an essential and unique role in patent law.

Sections 930, 91 and 92 Patents Act and Patent Reg. 37 prescribe a timetable for notice of an application for an extension of term of patent to enable persons interested to become parties to the petititon to oppose the granting of the extension of term. Subject to what is said later, neither

the Patents Act nor the Patents Regulations prescribe a time

by which a person interested is required to file a caveat.

Logically, and apart from special circumstances such as those

in Sanofi v. Parke Davis Pty. Ltd. [No. 1] (1982) 149 C.L.R.

147; see also Sanofi v. Parke Davis Pty. Ltd. [No. 2] (1983)

49 A.L.R. 1; a caveat could be filed at any time before a petitzon is granted extending the term of the patent. As a matter of practice and procedure, it is logical that the

Court which has jurisdiction to hear and determine petitions under s.$0 Patents Act should make rules of court relating to

those petitions, including the times within which the caveats

should be filed. Order 5 r.1, Supreme Court (Industrial Property) Rules is such a rule and, subject to what is said later, I have no doubt the Judges of the Supreme Court had power to make that rule. Prior to 1 February 1977, petitions under s.90 Patents Act were required to be made to the High Court and the provisions of 0.66A, r.15(1) High Court Rules, were similar to the provasions of 0.5 r.1 of the Victorian

On 2 September- 1982, Searle advertised in the Official Journal its intention to present a petition to the Supreme Court of Victoria for an extension of term of its patent. The petition was presented to the Supreme Court on 15 October 1982, being within the period specified in the advertisement. Drug Houses, being a person interested under s.91 Patents Act, had not filed and served a caveat by 2 December 1982, being the latest time for so doing as specified in 0.5 r.1, Supreme Court (Industrial Property) Rules. By notice of motion dated 24 May 1983, Drug Houses applied to the Supreme Court under 0.5 r.1l for an order giving it further time within which to file a caveat under s.91 Patents Act. The motion was made pursuant to the power contained in 0.5 r.l. In fact, and as appears from the notice itself, the motion was made in the matter of the petition by Searle under s.90 Patents Act. The heading on

IN THE MATTER of Letters Patent dated as of the 17th day of April 1967 numbered 422,217 and granted to G. D. SEARLE & CO. of Chicago, Illinois _ - un the United States of America for an invention entitled 'Sweetening

IN THE MATTER of Letters Patent dated as of the 8th day of May 1970 numbered 499,551 and granted to G. D. SEARLE & CO. aforesaid for an invention entitled "Sweetening Compositions and Method'"

Application by Drug Houses for an extension of time in whach to file a caveat involved a matter of practice and procedure in the Supreme Court of Victoria, but the matter before the Supreme Court was the petition by Searle for the extension of term of a patent. Under sub-section 146(1) Patents Act, the Supreme Court "has jurisdiction to hear and determine" that petition. In hearing and determining that

jurisdiction under the Patents Act. That jurisdiction

extends to all matters connected with or incidental to the hearing and determination of the petition including applications to file a caveat under s.91 Patents Act out of tame, as prescribed by the Supreme Court {Industrial Property) Rules. In my opinion, in determining an application for leave to file a caveat out of time, the Supreme Court is exercising jurisdiction under the Patents

The petition is-a proceeding under the Patents Act within the meaning of sub-section 146(1) of that Act and the application for leave to file a caveat against the granting of the prayer in that petition is a matter connected with or incidental to that petition. In sub-sections 146{1) and 148(1) the word "under" in the phrases "under this Act" connotes "in pursuance of" or "under the authority of"; compare the reasoning of Bowen C.J. and Lockhart J. in

Australian National University v. Burns (1982) 43 A.L.R. 25

at pp.31-2. In Parkes Rural Distributions Pty Ltd v. Glasson

(1983) 48 A.L.R. 601, a Full Court of the Federal Court had to determine whether a decision had been made "under an

enactment" within the meaning of the Administrative Decisions

(Judicial Review) Act 1977 where the decision had been made

Commonwealth Act, but where the certificate evidencing the

decision was issued under a State Act which was not an

enactment under the Judicial Review Act. In a joint

judgment, Bowen C.J. and Northrop J. said at p.609:

"In s 5 Judicial Review Act the word 'under' when used in the phrase 'under an enactment' connotes 'in pursuance of' or 'under the authority of'; Australian National University v. Burns (1982) 43 ALR 25 per Bowen CJ and Lockhart J at 3l.

On the facts of the present case, the decision ef the respondent was made under the Commonwealth Act and the scheme and thus was made under an enactment within the Judicial Review Act. In making the decision the respondent acted in pursuance of the scheme

which had been formulated by the Minister pursuant to the Commonwealth Act. It is true

that the respondent was authorized by an appointment under the State Act, but that is beside the point. The respondent was acting in pursuance of the scheme being an instrument

under the Judiczral Review Act. The power conferred by the State Act was a necessary power in order to implement the Commcnwealth

Act. To say that the decision was also made under the Petroleum Products Subsidy Act 1965

The same principles shovld be applied to the resolution of the motion by-Drug Houses. To say that the order appealed from was made under the Supreme Court (Industrial Property) Rules does not deny the proposition that the order was made by the Supreme Court "exercising jurisdiction under" the Patents Act. Accordingly, in my opinion, the Federal Court has jurisdiction to hear and determine the appeal: see paragraph 24(1){c) Federal Court

The wider issue raised by the motion concerns the validity of 0.5 r.1 Supreme Court (Industrial Property) Rules. Prior to 15 May 1979, the Patents Act contained no provisions prescribing the time within which a caveat under

s.91 should be filed. By s.71 Jurisdiction of Courts

(Miscellaneous Amendments) Act 1979, which section came into

Operation on 15 May 1979, sub-section 146(4) was inserted in the Patents Act. That sub-section, as amended by s.184.

Statute Law (Misceilaneous Amendments) Act (No. 1) 1982, as

and in relation to the practice and procedure of prescribed courts in an action or proceeding under this Act, including provision prescribing the time within which any action

or proceeding may be instituted or any other act or thing may be done, and providing for

To date no regulations have been made prescribing the time within which a caveat under s.91 must be filed. In the absence of regulations being made under sub-secticn 146(4) Patents Act, I find it difficult to see how that sub-section would have prevented the Judges of the Supreme

Court from making the Supreme Court (Industrial Property)

Rules, insofar as they relate to caveats under s.9l. Those

rules relate to matters of practice and procedure in the

Supreme Court. Drug Houses applied to the Supreme Court

under those rules and the application was granted. Searle appeals from the order granting that application. It would

make a mockery of the law if, in all the circumstances of

this case, the Judges of the Supreme Court had no power to regulate the practice and procedure of matters coming within its yurisdiction, whether Federal or not. If relevant regulations are made under s.146(4) Patents Act, those regulations might apply instead of the Supreme Court Rules.

nature concerning a matter of practice and procedure. The order does not effectively determine any substantive rights. {In those carcumstances, an appellate court should be

extremely reluctant to interfere; see Adam P. Brown Male

Fashions Pty. Ltd. v. Philip Morris Inc. (1981) 148 C.L.R. 170 per Murphy J. at p.180. In the same case, Gibbs C.Jd., Aickin, Wilson and Brennan JJ. in a joint judgment said at

"There is no reason to doubt that the disputed decision of Smithers J. concerned a matter of practice and procedure. The essence of such a matter is described in terms which are sufficient for present purposes in Salmond on Jurisprudence 10 ed. (1947), p.476:

'Substantive law is concerned with the ends which the administration of justice seeks; procedural law deals with the

means and instruments by which those ends are to be attained. The latter regulates the conduct and relations of courts and litigants in respect of the latigation itself; the former determines their conduct and relations in respect of the matters litigated.'

matter of practice and procedure. See McHarg v. Universal Stock Exchange Ltd. ([1895] 3 Q.B. Sl, at p-82); Maunaster for the Army v.

Parbury Henty and Co. Pty. Ltd. ((1945) 70 C.L.R. 459, at p.489); White v. White ([1947] V.L.R. 434, at p.438).

Nor is there any serious dispute between the parties that appellate courts exercise particular caution in reviewing decisions pertaining to practice and procedure. Counsel for Brown urged that specific cumulative bars operate to guide appellate courts in the discharge of that task. Not only must there be error of principle, but the decision appealed from must work a substantial injustice to one of the parties. The opposing view is that such criteria are to be expressed disjunctively. Cases can be cited in support of both views: for example, on the one hand, Niemann v. Electronic Industries Ltd. (L1978] VLR. 431, at p.440); on the other hand, De Mestre v. A.D. Hunter Pty. Ltd. ((1952) 77 W.N. (N.S.W.) 143, at p.146). For ourselves, we believe it to be unnecessary and indeed unwise to lay down rigid and exhaustive criteria. The circumstances of different cases are infinitely various. We would merely repeat, with approval, the oft-cited statement of Sir Frederick Jordan in In re the Will of F. B. Gilbert (dec.) ((1946) 46 S-RY (N-S.W.) 318, at p.323):

a material difference between an exercise of discretion on a point of practice or procedure and an exercise of discretion which determines substantive rights. In the former class of case, if a tight rein were not kept upon anterference with the orders of Judges of first instance, the result would be disastrous to the proper administration of justice. The disposal of cases could be delayed interminably, and costs

heaped up indefinately, if a litigant with a long purse or a IJlitigious aisposition could, at will, in effect transfer all exercises of discretion in interlocutory applications from a Judge in Chambers to a Court of Appeal.'

See also, Brambles Holdings Ltd. v. Trade Practices Commission ((1979) 40 F.L.R. 364, at p-365); Dougherty v- Chandler (1946) 46 S.R. (N.S.W.) 370, at p.374). It is safe to say that the question of injustice flowing from the order appealed from will generally be a relevant and necessary consideration."

Searle from the order appealed is not great. None of its substantive rights are affected. As a result of the order, upon filing the caveat, Drug Houses becomes a party to the petition by Searle. It is noted that in the absence of 0.5 xr.l Supreme Court (Industrial Property) Rules, Drug Houses would not have been required to file that caveat within any prescribed time. The learned Judge who heard the application had this in mind. He said this showed that the "legislature intends that subject to proper control by the Court interested persons who wish to oppose extension shall

be given an opportunity to be heard". I agree with that

The Commissioner was represented at the commencement of the hearing of the appeal and a_e short

"The Commissioner does not wish to put any detailed argument in this matter. The Commissioner's opinion is that the public anterest would be best served by the granting

of the extension sought by Drug Houses of Australia Pty Limited of the caveat. The

hearing is better conducted when the party who has more knowledge of the commercial circumstances of the case is present, and accordingly that 1s the reason for supporting the application by Drug Houses of Australia. The Commissioner also wishes to inform the court that when the substantial matter comes for hearing that he will be represented at that hearing."

Counsel for Searle contended that Searle would suffer injustice as a result of the order since the hearing of the petition could be delayed and, on the assumption that the prayer in the petition was granted, the protection afforded by the Letters Patent wouid have been suspended for a longer period. In all the circumstances of the case, no

In challenging the order appealed from, counsel for Searle relied upon two main grounds. The first was that the learned Judge had applied the wrong test in holding that ignorance of Australian law in relation to extension of term of a patent was a sufficient cause for failing to file a caveat within the time specified in the Supreme Court (Industrial Property) Rules. Implicit in this ground was a proposition that persons interested should take all proper steps to maintain a search of the Official Journal and that a

failure so to do resulting in the time for filing a caveat

expiring before the caveat was filed should never be a valid reason for grantang further time in which to file a caveat. The second ground was that on the evidence before him, the learned Judge should not have found that Drug Houses did not know the Australian law in relation to extension of term of a patent and thus its failure to file a caveat within the specified time was not a sufficient reason to grant the

grant further time is unfettered. The power is conferred in

wide terms, namely to file the caveat "within such further time as the Court allows". The Court should be slow to impose Limitations, fetters or restrictions on an unfettered power. Secondly, substantive rights have not been affected by the order made. Reference has been made already to this. Counsel for Searle drew attention to a number of sections of the Patents Act under which substantive rights are affected by the publication of information in the Official Journal. The importance of the publication of material in the Official Journal 1s recognized, but in the present case no substantive rights are affected and a reference to those sections does

In support of his first contention counsel relied on the authority of the Privy Council decision reported in Re

Hopkinson's Patent (1896) 13 R.P.Cc. 114. In that case,

eleven caveats against a petition for extension of term of a

patent had been filed within the time specified by rules. Those caveators were objecting to an extension of term. In

addition, the Crown would appear at the hearing of the petition. Another person interested applied to the Privy Council for further time within which to file a caveat. The only reason given for failure to file the caveat within time

was that the person interested did not see the advertisement.

On behalf of the Privy Council, Lord Watson said at p.115:

"Lord Watson.- - Then you do not show any reason why 1t should be allowed. All the

persons interested ought to have seen it. If their Lordships admitted this application simply because parties choose to shut their eyes and do not examine into the matter at the time, it might be very serious.

Graham [counsel for the person interested].- Then the time will not be extended, my Lord?

Lord Watson.~ Not if you have no explanation and simply say you did not see the notice."

see for example Maschinenfabrik Augsburg-Nurnberg A.G.'s

Patent (1930) 47 R.P.C. 193 per Luxmoore J. at pp.199-200.

There is no principle of law that ignorance of Australian law or a failure to see an advertisement in the Official Journal is a complete bar to the granting of leave to file a caveat after the expiration of the time specified

by 0.5 x.1 Supreme Court (Industrial Property) Rules. This

approach is supported by the absence in the Patents Act or

the Patents Regulations of any time Limitations within which

There are conflicts between the material in the affidavit of Mr. Klieber, the Managing Director of Drug Houses, and his oral evidence given before the learned Judge. Likewise, on the evidence as a whole, there is a possibility that the knowledge of another officer of Drug Houses shouid have been attributed to Drug Houses, namely knowledge of the Australian law. Nevertheless, the Judge who made the order saw Mr. Klieber giving his evidence and stated reasons why ne accepted the facts found that it waS not until 12 May 1983 that Mr. Kiieber first became aware that an application couié¢ be made. to extend an Australian patent and that Searle had made. such an application. That finding was open to the learned Judge and this Court should not interfere with that finding. Likewise, the finding by the Judge relating to the

costs in the manner indicated in the judgment of the other

Respondent CORAM: Northrop, Sheppard and Neaves Ji. ATE: 14 May 1984

SHEPPARD AND NEAVES JJ. : This appeal is brought against the grant of an extension of time by the Supreme Court of

Victoria (King J.) in 'thich the respondent might file

caveat against an extension of the term of a patent held by the appellant. The respondent has challenged the competency of the avpeal. Both the objection to competency and the appeal itself were heard at the same time.

An application for the extension of the term of the letters patent has been made by the appellant pursuant to s. 90 of the Patents Act 1952 ("the Act") and is pending in the

Supreme Court of Victoria. The responcgent, pursuant to the

. extension of time which has been granted, has filed a caveat.

In s. 6 "prescribed court" is defined to mean the Supreme

A patentee of a standard patent tho considers that he has been inadequately remunerated by his patent may, after advertising, as peescribed, his intention to do so, present toa prescribed court, at least 6 months before the expiration of the term of the patent, or within such further period as a presc¢cibed court allows, a petition praying that his patent be extended fora further term.

A person interested msy file in the prescribed court a caveat against the extension and shall serve a copy of the caveat on the Commissioner."

The provision pursuant to which the application for

On the hearing of the petition, a person who has filed a caveat shall

be made a party respondent to the petition, and the Commissioner shall be entitled to aprear and be heard, and shall appear if so directed by the prescribed court."

Supreme Court of Victoria. For their power to make these Rules the judges did not rely upon any provision of the Act but upon their general rule making power which is conferred

by s. 25 of the Supreme Court Act 1958 (Vic.). A number of

the rules, including Order 5 rule 1, were taken from comparable High Court Rules regulating proceedings under the Act. Nevertheless there is a question as to the validity of the rule. This was not argued fully before us nor, so far as we can see, before King d., although he does say that counsel for the respondent did submit that the rule was invalid. Since we reserved our decision we have received certain written submissions on the question which we have taken

It 15 our opinion that the question of the validaty cf the rule needs to be resolved because it goes to the Jurisdiction of the primary dudge to deal with the application for extension of time which was made to him. If the rule were invalid, he should have refused to extend time

because there was no time which required extension. In that case the appeal from his Honour's order would raise only hypothetical questions for decision.

The comparable High Court Rules are to be found in Order 66A of the Rules of that Court entitled "Proceedings under the Patents Act 1952 - 1954." Order 66A was inserted into the High Court Rules in 1955 (S.R. 1955 No. 25). Order 66A rule 15 provides, so far as 1t is relevant, that a caveat

under s. 91 of the Act shall be filed within the time stated

in the advertisement published in accordance with the Patents Requlations in relation to the petition as the time within which the petition is to be lodceed, or within such further time as the Court allows. Order 5 rule 1 of the Victorian Rules is in identical terms.

The High Court Rules were made pursuant to s. 86 of the Judiciary Act 1903. The relevant form of that section, that is, its form when the Rules were made in 1955, was such as to confer upon the Justices of the High Court power to make rules for a number of purposes, including the requlation of the procedure, pleading and practice in the High Court in civil or criminal matters and the regulation generally of all matters of practice and procedure in the High Court.

Supreme Court Act 1958 (Victoria) discloses that the rule

making power of the Justices of the High Court was not, so

far as is relevant for present purposes, more extensive qua

questions of practice and procedure in the High Court than is that of the Judges of the Supreme Court of Victoria in relation to matters of practice and procedure in that Court. In other words, subject to what needs to be said concerning sub-sec. 146(4) of the Act later to be mentioned, if the Justices of the High Court had power to make rule 15 of Order 66A, the Judges of the Supreme Court of Victoria had power to make Order 5 rule 1 of the Industrial Property Rules here in question.

We have said what we have not unmindful of the opening

words of a. 25 of the Supreme Court Act. Relevantly, these

provide that the Judges of the Court may make Rules of Court for carrying the Supreme Court Act or any amendment thereof into effect. Those words, of themselves, are probably nov wide enovch to confer power to make rules in respect of jurisdiction with which the Court is invested under the Act here in question. But the section goes on to say,

"and in particular for all or any of the following matters, that 1s to say:- ..."

There follows a mumber of paragraphs dealing with particular matters. Paragraph (b) is, "for regulating the pleading practice and procedure of the Court in its various jurisdictions and the initiating of actions and proceedings therein." Regard must be had to the words "in particular" in the opening words of the section but they do not provide, in our opinion, any reason for giving the terms of the section any narrow construction. We see no reason why the Court invested with federal jurzsdiction, as the Supreme Court of Victoria is, and having the-extensive rule making power which it has, should not make rules regulating the pleading, practice and procedure in relation to that jurisdiction. Unless there 1S some legislative indication to the contrary, it is highly desirable that the Court have such a power because it provides a degree of certainty to parties concerned in litigating matters within the Court's invested jurisdiction.

In our respectful opinion the Justices of the High Court

clearly had power to make Order 6SA rule 15. Our reasons for that conclusion are as follows. At first sight it may be thought odd that the High Court, pursuant to a power to make rules in relation to practice and procedure, should have power to make a rule limiting the time for the doing of an act, (that is, the filing of the caveat), when the statute which provides for the doing of the act does not itself impose any limitation as to time nor empower expressly the making of rules which themselves might impose that limitation. It 1s to be emphasised that the act in question is not a procedural step carried out in the ordinary course of litigation, such as the entry of an appearance, the failing of a pleading or the giving of a notice for discovery, but a step which is a condition precedent to the entitlement of a person to object to the extension of the term of a patent. As we understand ss. 90. 91 and 92 of the Act, a person 'vill not be allowed to object unless he becomes a party. He may

only become a party if he has filed a caveat. If he does not

file his caveat within the time limited by the rule, he wili lose his right to object unless he obtains an extension of time pursuant to the provisions of the rule. A consideration

of the decision of the High Court in Sanofi ov. Parke Davzs

Pty. Limited (1983) 49 A.L.R. 1 does net lead us to conclude that the position is otherwise. Sanofi's case was a decision upon s. 90 of the Act which expressly provides that a court may allow an extension of time for filing a petition for the

extension of the term of a patent. The only question was

et cee rae ree ee ee eee ae eae cee - -<e ee eee He ee eee

whether the application for extension of time could be made after the exoiration of the term of the patent itself.

What has been said so far might suggest that the rule was invalid. But there are other considerations. it is first necessary to look at the relevant provisions of the regulations made under the Act which are referred to in the rule. Regulation 37 provides that a patentee who intends to present a petition to a prescribed court under s. 390 of the Act shall advertise his intention to do so in the Official Journal. The advertisement shall include an address for service 1n Australia and shall state a time, "being not less than one month and not more than three months after the advertisement is published in the Official Journal within which the petition is to be lodged." That is the time to which reference 1s made in the rule. It follows that the effect of the rule is to require the filing of the caveat no later than the date when, according to the advertisement, the patentee intends to present his petition.

Against that background one has to take into account what it is that a potential objector may do. Pursuant to s. 91, he may file a caveat against the extension of term which is proposed to be sought. One méaning of the word caveat, according to the Shorter Oxford Dictionary, is a notice given by some party to the proper officer not to take a certain step until the party has been heard in opposition. There are

many instances in which legislation provides for the filing

legislation and legislation concerning the grant of probate

of wills. The nature of a caveat against the grant of probate of

the will of a testator was explained by Lindley L.J. in Moran v. Place £18963] P. 214. His Lordship said (pp. 216-7):-

",..A caveat is not a notice to anv opponent in particular. It is a notice to the registrar or officer of the Court not to let anything be done by anybody in the matter of the will, or the goods of the deceased, without notice to the person who lodges the caveat. It is impossible to iook at it as commencing any litigation - it merely requests the registrar to tell the caveator if anybody stirs in this matter. That caveat having been entered and there being

an address so that the person entering 1t can be found, the next thine is that

somebody does begin to stir in the matter. That is the present plaintiff, who is the executor of the will and wishes to prove it. When a caveat has been entered the person who wishes to prove the will has to warn the person who entered the caveat. and if such person, i.e. the caveator, intends to make any real objection, he enters an appearance. Then, if the litigation does on, the person who wants to prove the will issues a writ and serves it on the caveator. Then, and not before, there is litigation between the person propounding the will on the one side, and the person opposing it on the other."

His Lordship said what he did in the context of practice and procedure in relation to an opposed application fora grank of probate. But what he said about the nature of a caveat is, in our opinion, of general application. The legislature in enacting s. 91 must thus be taken to have intended the caveat there provided for to be of the same

general nature as caveats in other fields. In thase

circumstances it was only natural that the Justices of the

High Court should take the view that the proper time within which a caveat should be filed was the period which would elapse between the date of the advertisement by the patentee and the time specified therein as the time within which he proposed to file his petition. Particularly because of the provisions of s. 92, the intention was probably that the caveat would be filed prior to the petition, but this might not in fact turn out to be the pasition. Under rea. 37 the caveator may file his caveat at any time within the period specified in the advertisement. Often this will be after the date upon which the petition is filed, there being no reason why a petitioner should await the expiration of the period limited in his advertisement before filing his petition. But that consideration does not change the essential nature of the caveat for which s. 91 of the Act provides, nor make the observations of Lindley L.J. in Moran v. Place (supra) any the less epplicable. Not until both the petition and the caveat are filed will the caveator, pursuant to the provisions of s. 92, become "a party respondent to the petition." In those circumstances it seems to us that the Justices of the High Court, in making rule 15 of Order 6GA, were doing no more than giving effect to the intention of the legislature. To allow for the case where a caveat was not filed before the expiration of the period specified for the filing of a petition, provision was made whereby the Courc

It may be observed in passing that a similar view as

that adopted by the Justices of the High Court was earlier taken by the Privy Council when 1t made rules pursuant to the

Patents, Designs and Trade Marks Act 1883 (U.K.). The

provisions of sub-secs. (1) and (2) of s. 25 of that Act are similar to those of ss. 90 and 91 of the Act here. Sub-section (6) of s. 25 conferred upon her Majesty in Council power to make rules of procedure and practice for regulating proceedings under the section. The Privy Council did make rules from time to time. For example, rule IV of

the 1898 rules (for which see Frost, A Treatise on the Law

and Practice relating to Letters Patent for Inventions, 3rd

Ed., Vol. II, p. 336), provided that a pacty intending toa oppose a petition under s. 25 of the Act must enter a caveat before the day on which the petitioner applied for a time to be fixed for hearing the application. The rule 1s not to the

saine effect as the High Court rule but, like the High Court

rule, it imposes a limitation as to time which is not to be

lt remains to consider whether sub-sec. 146(4) of the Act, which came into force in 1979 before the Industrial Property Rules were made in 1981, operated to remove the power the Judges of the Supreme Court of Victoria would otherwise have had to make Order 5 rule 1. Before we set out the sub-section it 1s necessary to refer to some of the history of s. 146 of the Act.

Substantial amendments to the Patents Act were made by

the Patents Amendment Act 1976. Less significant amendments

ee eines ween eee ne meere ee eee -e soe ee ee en ee

were also made by the Administrative Changes (Consequential

Provisions) Act 1976. The general purpose of the amendments

made by the Patents Amendment Act was to vest jurisdiction in the Supreme Courts of the States and Territories to determine

Matters arising under the Act. To this end Part XVII of the Act was repealed and a new Part substituted. The former Part XVII was headed "The Appeal Tribunai". By s. 146 the Hian Court had been constituted as the Appeal Tribunal for the purposes of the Act. Section 146 in its new form provided that every prescribed court was to have jurisdiction to hear and determine proceedings that, under the Act, might be instituted in a worescribed court. Further provisions were made in new sections 147 - 150 as to the practice and procedure which was to be followed and making this Court the appellate court from judgments or orders of prescribed courts. The prescribed courts were, as mentioned, the Supreme Courts of the States and Territories.

Further amendments were made to the Patents Act in 1979

by the Patents Amendment Act 1979 and the Jurisdiction of

Courts (Miscellaneous Amendments) Act 1979 ("the Jurisdiction

of Courts Act"). Section 71 of the latter Act amended s. 146 of the Act by adding a new sub-section, sub~-sec. (4). After this amendment s. 146 read as follows:-

"146. (1) Subject to sub-section (2), every prescribed court has jurisdiction to hear and determine proceedings that, under this Act, may be instituted in a prescribed court.

(2) A prescribed court, being the Supreme Court of a Territory, does

not have jurisdiction to hear and determine a proceeding referred to in sub-section (1) unless, at the time of the institution of the proceeding, the person instituting

the proceeding, being an individual, is resident in the Territory, or, being a corporation, has its principal place of business in the

(3) The jurisdiction of a prescribed court under this section shall be exercised by a single Judge.

(4) The regulations may make provision for and in relation to the

practice and procedure of prescribed courts in proceedings under this Act, including

provision prescribing the time within which any proceeding may be instituted or any other act or thing may be done, and providing for the extension of any such time."

thus in that form when the Victorian rules were made in 1981.

For completeness we should mention that yet further

amendments were made to s. 146 by s. 184 of the Statute Law

(Miscellaneous Amendments) Act (No. 1) 1982. Sub-sec.

No requlations have been made under sub-sec. 146(4) whether

and in relation to the practice and procedure of prescribed courts in an action or proceeding under this Act, including provision prescribing the time within which any 'action or proceeding may be instituted or any other act or thing may be done, and providing for the extension of any such time."

The question is whether the legislature, by enacting sub-sec. 146(4), has evinced an intention to deprive the prescribed courts of power they otherwise had to make rules prescribing the time within which, inter alia, caveats may be filed.

As mentioned, the new sub-section was added into the Act by the Jurisdiction of Courts Act. That Act made extensive provisions investing the Supreme Courts of the States and Territories with jurisdiction to deal with matters under a variety of Acts ancluding the Act here in question. In many cases specific provision was made for the rules of court which were to apply in the proceedings in the Supreme Courts. Usually, it was provided that the High Court Rules, as in force under the Judiciary Act 1903 immediately before the date of the commencement of each of the relevant provisions,

were to apply, so far as practicable, in like manner as they

applied previously to like proceedings in the High Court.

Provisions of this kind are to be found in s. 23 in relation

to appeals under the Estate Duty-Assessment Act 1914, s. 31

in relation to proceedings under the Export Incentive Grants

Act 1971, s. 40 in relation to appeals under the Gift Duty Assessment Act 1941 and in a number of other sections.

There is no comparable provision in Part X of the Act providing for amendments of the Act here under consideration. In our opinion that provides some indication that it was intended that the rules of a prescribed court, in this case

the Supreme Court of Victoria, were to apply so far as they

could be applied rather than the Rules of the High Court.

This would suggest to us that the legislature intended that the prescribed courts should retain their rule making power as to practice and procedure in patent matters. But thac power would remain subject to any regulations made pursuant to sub-sec. 146(4) in relation to the matters specified therein.

It follows, in ouc opinion, that the rule making power of the Judges of the Supreme Court of Victoria, in so far as it extended to make a rule such as Order 5 rule l, was not impaired or affected by the enactment of sub-sec. 146(4). What would affect it would be the making of requliations, but that is not something which has yet come about.

In our consideration of the problem we have taken into account the question whether any operation should be accorded toe s. 109 of the Constitution but 1n our opinion there will be no ingonsistency for the purpose of this section unless regulations are made on this subject matter.

We have also given consideration to the fact that it is undesirable that there be any unevenness as amongst the prescribed courts in relation to a matter so fundamental as the time for the filing of a caveat pursuant to s. 91 of the Act. We have not made an exhaustive search but we have ascertained that there is no rule comparable to Order 5 rule 1 ain force in New South Wales or the Australian Capitai Territory, with the result that in that State and Territory

there is no time limit fixed for the filing of a caveat.

Having reflected on the metter, however, we do not think that

this goes to the validity of Order 5 rule 1. But we do think

that it points to the desirability, if not the necessity, of

regulations being made pursuant to sub-sec. 146(4) of the Act so as to bring about uniformity on this matter throughout Australia.

We therefore conclude that the rule pursuant to which the application was made was a valid rule. The next question is whether the appeal is competent. Sub-section 148(1) of the Act provides that an appeal lies to this Court "froma judgment or order of «a prescribed court exercising federal jurisdiction under this Act." The source of the power to

support sub-sec. 148(1) of the Act is s. 77(i) of the

Constitution, that provision encompassing appellate as well

as original jurisdiction; Cockle v. Isaksen, (1957) 93 C.L.R. 155 at p. 163. The content of the jurisdiction which may be conferred on this Court 1s expressed in ss. 75 and 76 of the Constitution in terms of "mattecs", the relevant provision for present purposes peing s. 76(ii) - "any matter arising under any laws made by the Parliament."

Sub-section 148(1) 1s not itself expressed ain terms of

"matters" but in terms of a judgment or order of a prescribed

court exercising jurisdiction under the Act. To ascertain in what circumstances a prescribed court may exercise jurisdiction under the Act it is necessary to turn to sub-sec. 146(1). That sub-section provides that, subject to

sub-sec. (2) - which is not material for present purposes -

every prescribed court has jurisdiction "with respect to matters arising under this Act in respect of which actions or

proceedings may, under this Act, be instituted in a prescribed court."

A matter arises under a law made by the Parliament "if the right or duty in question in the matter owes its existence to Federal law or depends upon Federal law for its enforcement, thether or not the determination of the controversy involves the interpretation (or validity) of the

law"; R. Vv. Commonwealth Court of Conciliation and

Arbitration; Ex parte Barrett (1945) 70 C.L.R. 141 per Latham

C.d. at p. 154. The claim by the respondent that its patent should be extended for a further term is a claim which devends for its existence on s. 90 of the Act and, as such, involves a matter arising under a lay made by the Parliament. The section also provides for proceedings under the Act for

such extension to be instituted in a prescribed Court. Thus the adjudication of that claim involves the Supreme Court of Victoria in the exercise of federal jurisdiction with which it is invested by sub-sec. 146(1) of the Act.

Where a person interested wishes to oppose the granting of the extension sought, he may file a caveat pursuant to s. 91 of the Act. The application by an interested person to extend the time within which to file a caveat is not, in our

view, to be treated independently of the proceedings for

extension of the term of the patent. The filing of sucha

caveat is a step taken in those proceedings. The caveator

becomes a party to those proceedings (s. 92). The claim by the caveator forms part of the "matter" with respect to which the prescribed court has federal jurisdiction invested in it by virtue of the provisions to which we have referred.

In our opinion the Supreme Court of Victoria, in making an order giving leave to file a caveat within a period fixed by that Court, was exercising federal jurisdiction in a "matter" arising under the Act. We are also of opinion that an appeal from that order is an appeal falling within the terms of sub-sec. 148(1) of the Act and is an appeal involving a "matter" arising under the Act in relation to Which this Court has jurisdiction conferred upon it by that sub-section. The appeal is, therefore, competent.

It remains to consider the substance of the matters argued on the appeal. It is first necessary to set out some of the factual background. The letters patent, the term of

which the appellant seeks to have extended, were granted to

the appellant on 7 July 1972. On 21 October 1974 further

letters patent were granted to the appellant as a patent of

addition to the original letters patent. The original letters patent were for an invention entitled "Sweetening Agents". The addition was for an invention entitled "Sweetening Compositions and Method". The grant of the original patent was dated as from 17 April 1967. Unless extended the term of the patent therefore expired on 17 April 1983.

Since the grant of the letters patent the appellant has

manufactured and marketed a low calorie sweetener knotm as

aspartame which is the subject of the application for extension of term.

On 15 October 1982 the appellant filed a petition seeking an extension of the term of the patent pursuant to the provisions of s. 90 of the Act. The petition had been advertised pursuant to reg. 37 of the regulations made under the Act on 2 September 1982. In the advertisement the appellant specified three months as the period within which the petition was to be filed. Thus 2 December 1982 was the last day upon which the respondent might file a caveat against the extension which was sought unless it obtained an extension of time pucsuant to Order 5 rule 1 of the Vactorian Rules. The respondent did not make application in that behalf until 24 May 1983 when, by notice of motion f1led on

that day, it sought an order that the time for filing a

The notice of motion was supported by an affidavit swocn by a Dr. H.W. Klieber. He is the managing director of the respondent. He gave some general evidence concerning the respondent's intention and ability to market aspartame. It is unnecessary to refer to the detail of this evidence. Dr. Klieber also said that on 12 May 1983 he attended the offices of a potential supplier of the active ingredient used for the manufacture of aspartame. The supplier carried on business ain Milan in Italy. He said that he was there advised for the

first time that the petition for the extension of term had

were ee eee er ee - - . "2 use -- o- ene a eens en ee eee

been filed on 15 October 1982. He continued:- "Prior to that date, I was not aware that it was possible to obtain an extension of Australian patents. Between 1966 and 1982 my experience of patents had been restricted to German and European patents of which no extension is possible. Accordingly, it had not occurred to me to seek advice as to whether the petitioner herein was entitled to petition the Court for the extension of any patents it may have relating to Aspartame nor as to any entitlement either I

Dr. Klieber said that he was also told by the potential supplier in Italy that it was possible for interested companies to file a caveat opposing a4 petition but that the time for the filing of such a caveat had expired. On 13 May 1983 he telexed the respondent in Australia directing it to seek advice from a firm of patent attorneys. On 17 May 1983 he returned to Austrailia and consulted the respondent's solicitors. They confirmed that it would be necessary for an application to be made to the Supreme Court of Victoria for an extension of time in which to file the caveat. Instructions were given for this to be done and the notice of motion, as earlier mentioned, was filed on 24 May 1983.

Dr. Klieber gave oral evidence. In his evidence in chief he referred to discussions he had had with senior employees of the respondent concerning the introduction by the respondent of aspartame. His evidence continued:-

"And during those discussions, were you at any time made aware that there was a possibility of a patent heid by Searle, being extended? --- Yes.

I had this knowledge already from Germany for, say, maybe one year before or something like that."

It 1s to be observed that that evidence is in apparent conflict with the evidence given by Dr. Klieber in the paragraph of his affidavit earlier quoted.

Dr. Klieber was cross-examined upon the question of his knowledge of whether a patentee could, under Australian law, make an application for the extension of the termof a patent. We do not set out the whole of this cross-examination but his answers are in accordance with what he said in his affidavit and not in accordance with what he said in his evidence 1n chief. The cross-examiner did nov refer him to his evidence in chief when asking his questions.

Dr. Kiieber was cross-examined about the senior staff of the respondent. He mentioned a Mr. Evers who was said to be the general manager of the respondent and also one of its Girectors. Later, Dr. Klieber conceded that he had discussed with Mr. Evers the question whether Mr. Evers knew of the possibility of obtaining an extension of the term of a patent in Australia. Dr. Klieber said he had discussed this with Mr. Evers for the first time a week before he gave his evidence. Dr. Klieber said that Mr. Evers knew that such an application was possible and had known that to be the position in 1982. Mr. Evers was not called as a witness.

Three affidavits were filed on behalf of the appellant.

None of the deponents was cross-examined. It is not relevant

Before his Honour and before us it was submitted that Dr. Klieber's evidence that he did not know until 12 May 1983 that an extension of the term of a patent could be applied for, should be rejected or, aiternatively, at the least the Court should not be satisfied that he did not know. The evidence principally relied upon for this submission was Dr. Klieber's evidence in chief in which he appears to have conceded that he knew of the possibility of a patent being extended for a year or so beforehand. Also relied on was De. Klieber's evidence that Mr. Evers knew in 1982 that an application for the extension of the term of letters patent might be applied for. It was said.that 1t was most unlikely that Mr. Evers would not have mentioned this to Dr. Klieber much earlier than was conceded in his evidence. That should

have persuaded his Honour to accept at its face value Dr.

Klieber's evidence in chief that he knew a year or so

beforehand that extensions of terms of patents might be

"In his affidavit he (Dr. Klieber) says that it was not until he attended the office of a potential supplier on 12th May 1983 that he was advised for the first time that the petitioner's petition had been filed, on 15th October 1982. He then says that before that date he was not aware that it was possible to obtain_ an extension ot Australian patents. However, on pages 6 and 7 of the transcript of his evidence, he says that he had known of the possibility of the petitioner's patents being extended for maybe a year before his discussions with members of the applicant's staff after lst September 1982. Then, on page 29 of the transcript, he reasserts his ignorance

ee me ee ok te ee Smeal oe nee ele Ie Me ae ek ene ee ee ee ee

• before 12th May 1983 of the possibility of extending the petitioner's patents and his surprise on that day on learning of it. Although a competent witness Dr. Klieber still has some difficulty in expressing himself in English and in understanding it, and I do not think that he intended to make the apparent concession which one finds on pages 6 and 7 of the transcript. I shall therefore take it that his evidence is that it was not until 12th May 1983 that he became aware that an application could be made to extend an Australian patent, and that the petitioner had made such an application."

His Honour said that it was not easy to understand why Mr. Evers did not tell Dr. Klieber that the appellant could apply for an extension of its patent during the discussion which they had in relation to the marketing of aspartame in

",..but I think that the truth of Dr. Klieber's explanation is supported by the speed with which he acted once he had Giscovered the true position. On 13th May 1983 the day after he was informed by a

potential supplier that the petition had been filed, he telexed the applicant to seek advice from patent attorneys in Australia. On 17th May he returned to Australia and consulted the applicant's Sydney solicitors, who advised him of the need for the

application before me. De. Klieber then gave instructions for all necessary steps to

be taken, and on 20th May Counsel was retained in Melbourne to settle the Notice of Motion before me, which was filed on 24th May". Notwithstanding the difficulty which confronted counsel for the appellant, he submitted that his Honour's findings were, upon the basis of the various matters relied on,

clearly erroneous. In our opinion this submission should be

rejected. The findings are of primary facts. His Honour had

the advantage, denied to us, of seeing Dr. Klieber in the witness box and making an appreciation of such difficulties as he had with the English language. Furthermore, Dr. Klieber's apparently inconsistent answers given in his evidence in chief were not put to him in cross-examination. In all those circumstances it would be quite wrong, in our opinion, for this Court to disturb his Honour's findings. We would reject the submission that we should do so.

In reaching our conclusion we have taken into account the fact that Mr. Evers was not called and ought to be regarded as being within the respondent's camp. But the application is an interlocutory one, and the knowledge Mr. Evers had emerged only in the course of Dr. Kiieber's cross-examination. In all those circumstances we think it was open to his Honour not to draw inferences adverse to the respondent simply by reason of the fact that Mr. Evers was not called in the respondent's case. Really, the matter, in the end, gets down to what his Honour thought of Dr. Klieber as a witness. For the reasons he gave he thought his evidence should be accepted. In our opinion he did not fall into error in taking that course.

Upon the basis that his Honour's findings of fact would not be disturbed, counsel for the appellant made two further submissions. The first of these was that the knowledge Mr. Evers had should have been found by his Honour to be the respondent's knowledge. Mr. Evers was a director and the

general manager of the respondent. But Dr. Klieber was its

managing director. The totality of the evidence indicated that he was the principal person in charge of the company's affairs. There was no elucidation of what Mr. Evers' duties were. In our opinion his Honour was not in error in concluding that Mr. Evers' knowledge was not that of the respondent.

It remains to deal with a submission which was put to the forefront of the appellant's argument. It was that a person in the position of the respondent has an obligation to Maintain a search of the Official Journal provided for in s. 175 of the Act. Counsel made a detailed analysis of various of the sections of the Act requiring notice to be placed in the Official Journal and submitted that whether the respondent, through Dr. Klieber, knew of it or not, it had an obligation to maintain a watch so that it might be aware when

a caveat should be filed. We cannot find this submission

specifically dealt with by his Honour and wonder whether 1t

was put to him in the same terms as it was put to us. It would seem that something of a similar kind was, however, put

"Dr. Emmerson, (counsel for the appellant), also submitted that the applicant should have made earlier enquiries of an Australian . patent attorney. Dr. Klieber said that he derived his belief that the Searle patents were due to expire in April 1983 from German suppliers; he saw no need to enquire further and it seems that his confidence in this information was justified as far as it went. I think it is understandable that he did not enquire further. Dr. Emmerson has urged that Dr. Klieber's error was a mistake as to the law, as it was, but I think that nevertheless I can inthe exercise of ny

Counsel sought to support his submission by reference to

the decision of the Privy Council in In the Matter of

Hopkinson's Patent (1896) 13 R.P.C. 114. All we would say about that case is that it is a case upon its owm facts and not one which lays down a principle of law. That was how 1t

was regarded by Luxmoore J. (as he was) in In the Matter of

the Patents of Maschinenfabrik Augsbura-Nurnberg A.G. who, in relation to a similar application, simply said (p. 200):- "I do not think that Hopkinson's Patent is applicable here. I thank that this isa case in which I ought to exercise my discretion to grant leave." |

In the course of his submissions counsel emphasised the lengthy delay which has taken place, a period of over five months having elapsed since the date limited by Order 5 rule 1 for the making of the application for extension of time. We agree that that is a matter which ought to be taken into account as no doubt it was by his Honour.

Also to be taken into account is the prejudice which will be suffered by the appellant as the result of the grant of the extension of time. No evidence of prejudice was given and no matter was relied upon by counsel for the appellant in this respect except that the hearing of the application for the extension of term might become more lengthy and complex than might otherwise have been the case.

Again, this is a matter to be weighed in the balance but

it could not be determinative of the outcome of the

We have considered his Honour's judgment as a whole and taken into account the various matters relied upon by counsel for the appellant. Having done so, we do not find in what his Honour said or in the decision which he has made any indication that the exercise of his discretion miscarried or was otherwise erroneous.

In the result we would dismiss the notice of motion challenging the competency of the appeal and the appeal itself. As earlier mentioned both the notice of motion and the appeal were heard together. The time occupied by the hearing was of the order of one day. In the circumstances we think justice will be done if the appellant is ordered to pay ninety per cent of the respondent's costs. That is the order

| certify that this andthe 25 preceding pages are a true copy af the reasons ior judgment herein of The Honourable