[1994] FCA 1315; (1994) 29 IPR 479

Patents - amendment to patent specification - opportunity for opposition to amendment - failure by applicant to exercise that opportunity - whether applicant has right of appeal

Patents Act 1990 (Cth) s.104

Patents Regulations 1991 (Cth) Chapter 10.

Attorney-General of the Gambia v N'Jie (1961) AC 617

Commonwealth v Bank of New South Wales [1949] HCA 47; (1949) 79 CLR 497

Cooper Brooks (Wollongong) Pty Ltd v Federal Commissioner of Taxation (1981)

[1981] HCA 26; 147 CLR 297

Hanlon v Law Society (1981) AC 124

Solicitor for the first Respondent Australian Government Solicitor

Counsel for the second Respondent: Mr R C Macaw QC with Mr B J Hess

1. That the question to be decided separately pursuant to the order

of Northrop J on 21 March 1994 be answered: No.

2. That the applicant pay the respondents' costs of the separate

hearing, including reserved costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

HEEREY J The applicant seeks to appeal to this Court under s.104(7) of the Patents Act 1990 (Cth) (the Act) against a decision of the -Commissioner of Patents to allow an amendment to a patent specification. The Commissioner, and the patentee, say such an appeal is not competent because the applicant did not oppose the amendment under s.104(4).

2. This question has now been argued before me as a preliminary issue.

3. On 19 March 1993 the second respondent Dean Robert Butler was granted Australian Letters Patent 631413 entitled "Recovery of gold, silver and platinum group metals with various leachants". On 15 June 1993 Mr Butler's patent attorneys made application on his behalf to the Commissioner to amend the complete specification of the Letters Patent. On 14 July the Commissioner advised Mr Butler's Patent Attorneys that the request was as prescribed and that leave was granted to amend. The allowance of the amendment was advertised in the Australian Official Journal of Patents on 2 September. No notice of opposition was lodged with the Commissioner. On 28 January 1994 the Commissioner allowed the requested amendments.

4. The applicant on 18 February 1994 commenced this proceeding seeking to appeal against the decision of the Commissioner.

5. On 21 March Northrop J ordered under O.29 r.2 that there be a separate and preliminary hearing to decide whether the applicant may bring the present proceeding in circumstances where (i) the applicant did not oppose the allowing of the proposed amendment by the Commissioner; (ii) the amendment of the complete specification has been allowed by the Commissioner and (iii) the amendment of the complete specification has been made.

6. Section 104 of the Act provides:

"104. (1) An applicant for a patent or a patentee, may,

subject to this Act, and subject to and in accordance with the

regulations, ask the Commissioner for leave to amend the

relevant patent request or complete specification, or any

other filed document, for any purpose including either or both

of the following:

(a) removing a lawful ground of objection to the

request or specification, whether that objection

is raised in the course of an examination or

re-examination or otherwise;

(b) correcting a clerical error or an obvious mistake.

(2) Where an applicant or patentee asks for leave to

amend a patent request or complete specification, or any other

filed document, the Commissioner must consider and deal with

the request in accordance with the regulations.

(3) Subject to the regulations, the Commissioner may

allow an amendment subject to conditions.

(4) The Minister or any other person may, subject to

and in accordance with the regulations, oppose allowing an

amendment.

(5) The Commissioner must not allow an amendment that

is not allowable under section 102.

(6) On the allowance of an amendment, the amendment is

to be taken to have been made.

(7) An appeal lies to the Federal Court, against a

decision of the Commissioner allowing, or refusing to allow,

a requested amendment, other than a prescribed decision."

7. Detailed provisions in relation to amendments are contained in Chapter 10 of the Patents Regulations 1991 (the Regulations) including the following:

"10.5 (1) The Commissioner must grant leave to amend a patent

request, complete specification or another filed document, if:

(a) a report under subregulation 10.2 ('Commissioner

to consider and deal with requests for leave to

amend') is not an adverse report; and

(b) in the case of proposed amendments of a patent

request or complete specification made in

anticipation of, or response to, a report relating

to an examination or a notice relating to a

consideration of a complete application for a

petty patent under section 50 of the Act

('consider- ation and acceptance of patent

request: petty patent') - the Commissioner

reasonably believes that the amendment would

remove all lawful grounds of objection to the

patent request or specification.

(2) If the Commissioner grants leave to amend, he or

she must publish a notice of that fact in the Official

Journal, where:

(a) the patent request and complete specification to

which the leave to amend relates have been

accepted under section 49 ('acceptance of patent

request: standard patent') or 50 of the Act; and

(b) the proposed amendments are in respect of:

(i) the complete specification; or

(ii) the patent request or another filed

document and the proposed amendments would

materially alter the meaning or scope of

the request or document.

(3) The Minister or another person may oppose

allowance of an amendment if a notice is published under

subregulation (2).

(4) For the purposes of paragraph (2)(b), if:

(a) a request for leave is filed before a patent is

granted on an application under section 61 ('grant

of standard patent') or 62 ('grant and publication

of petty patent') of the Act; and

(b) the proposed amendments relate to the name or

address of an applicant for the patent;

the proposed amendments are not taken to materially alter the

meaning or scope of the patent request or other filed

document.

Allowance of amendments

10.6 (1) If, under subregulation 10.5(1) ('Commissioner to

grant leave to amend'), the Commissioner grants leave to amend

a patent request or complete specification and the request or

specification has not been accepted under section 49

('acceptance of patent request: standard patent') or 50

('consideration and acceptance of patent request: petty

patent') of the Act, he or she must, subject to any

conditions, allow the amendments forthwith.

(2) If the Commissioner grants leave to amend a patent

request or complete specification to which paragraph

10.5(1)(b) applies and:

(a) the proposed amendments do not relate to a matter

mentioned in section 5 of the Act ('associated

applications'); or

(b) the proposed amendments of the complete

specification would include matters mentioned in

paragraph 6(c) of the Act ('deposit

requirements');

the Commissioner must allow the amendments immediately before

acceptance.

(3) Subject to subregulation (4), if under

subregulation 10.5(1);

(a) the Commissioner grants leave to amend a patent

request or complete specification; and

(b) publishes a notice of that fact under

subregulation 10.5(2);

the commissioner must allow the proposed amendments:

(c) where a person has not opposed allowance of

the amendment; or

(d) subject to the terms of any decision of a

prescribed court, the Tribunal or the

Commissioner in respect of the opposition.

(4) If the Commissioner requires the patentee to file

a statement that, to the best of the knowledge of the

patentee, relevant proceedings are not pending, the patentee

must file the statement within 1 month."

8. In my opinion the right of appeal conferred by s.104(7) is only available to the applicant for the amendment or the Minister or a person who has opposed the amendment under s.104(4).

9. In a legal context, the notion of appeal ordinarily conveys the meaning that a person who has unsuccessfully contested the making of a decision seeks the reversal or variation of that decision from a higher court or tribunal. In litigation, "... an appeal is the formal proceeding by which an unsuccessful party seeks to have the formal Order of a court set aside or varied in his favour by an appellate court": Commonwealth v Bank of New South Wales [1949] HCA 47; (1949) 79 CLR 497 at 625. For present purposes the element of being "unsuccessful" is relevant. A person cannot be "unsuccessful" unless he or she has taken part in the process by which the decision complained of has been reached. In that sense "appeal" is to be contrasted with a right of challenge given to a "person aggrieved".

10. In Attorney-General of the Gambia v N'Jie (1961) AC 617 the Privy Council had to consider an appeal by the Attorney-General against a decision of the West African Court of Appeal setting aside an order striking off the respondent from the roll of legal practitioners. The respondent argued that the Attorney-General was not a "person aggrieved" for the purposes of the Order in Council which conferred a right of appeal to the Privy Council. The Privy Council said (at 634)

"In support of this preliminary point Mr Gratiaen referred to

the judgment of James LJ in Ex parte Sidebotham, (1884) 14

ChD 458, 465 where he said: A 'person aggrieved' must be a

man who has suffered a 'legal grievance, a man against whom a

decision has been pronounced which has wrongfully deprived him

of something, or wrongfully refused him something, or

wrongfully affected his title to something.' If this

definition were to be regarded as exhaustive, it would mean

that the only person who could be aggrieved would be a person

who was a party to a lis, a controversy inter partes, and had

had a decision given against him. The Attorney-General does

not come within this definition, because, as their Lordships

have already pointed out, in these disciplinary proceedings

there is no suit between parties, but only action taken by the

judge, ex mero motu or at the instance of the Attorney-General

or someone else, against a delinquent practitioner.

But the definition of James L.J is not to be regarded as

exhaustive. Lord Esher M.R. pointed that out in Ex parte

Official Receiver, In re Reed, Bowen and Co (1887) 19 QBD 174,

178. The words 'person aggrieved' are of wide import and

should not be subjected to a restrictive interpretation. They

do not include, of course, a mere busybody who is interfering

in things which do not concern him; but they do include a

person who has a genuine grievance because an order has been

made which prejudicially affects his interests."

11. A right of "appeal" however would usually be considered as extending only to "... a person who was a party to a lis, a controversy inter partes, and had had a decision given against him."

12. In the present case, the term "appeal" is in my opinion used in the ordinary sense. The Act and Regulations establish a quite detailed regime concerning amendments to patent requests, specifications and other filed documents. This is one of the exceptional occasions when regulations can be used as an aid to the construction of an Act of Parliament. The Act "provides a framework built on contemporaneously prepared regulations": Hanlon v Law Society (1981) AC 124 at 193 per Lord Lowry.

13. Before the relevant decision of the Commissioner is made there is provision for the giving of notice and for the hearing of opponents. Opponents become parties to the decision: see s.104(4). Thus the legislation contemplates an applicant for an amendment, an opponent, and the Minister as being potentially persons who may wish to complain about the decision. The natural meaning of the word "appeal" suggests such persons are intended to have a right of recourse to the Court but that such a right is not to be extended to the community at large, even to persons such as the present applicant who might have a legitimate commercial interest in the amendment. Their opportunity to oppose is given at the publication stage.

14. Counsel for the applicant on the one hand, and counsel for the Commissioner and the second respondent on the other, each contended that their respective construction was fairer and, more consistent with the scheme of the Act than their opponents.

15. The applicant argued for example that an objective to be spelled out of the Act is that "bad patents should not go to grant" and thus the maximum opportunity should be allowed to those who seek to expose defects. The respondents' arguments included the contention that if the applicant were right, opposition to amendment would become "optional" and the Court on appeal would not have the benefit of the Commissioner's reasons after a contested hearing.

16. With respect, however, I think that such arguments tend to lose sight of the primacy of language in any question of statutory interpretation. It may be possible to reach a conclusion that one construction would lead to a more convenient operation than the other, but it could not be said that either of the competing constructions would result in something absurd, extraordinary, capricious or irrational. The exercise is not a matter of this Court selecting the most convenient meaning. I think the present case falls within the latter of the two hypotheses discussed by Mason and Wilson JJ in Cooper Brooks (Wollongong) Pty Ltd v Federal Commissioner of Taxation [1981] HCA 26; (1981) 147 CLR 297 at 321:

"Quite obviously questions of degree arise. If the choice is

between two strongly competing interpretations, as we have

said, the advantage may lie with that which produces the

fairer and more convenient operation so long as it conforms to

the legislative intention. If, however, one interpretation

has a powerful advantage in ordinary meaning and grammatical

sense, it will only be displaced if its operation is perceived

to be unintended."

17. For the reasons I have already mentioned, I do not think as a matter of language the competing contentions are finely balanced. The ordinary meaning of the word "appeal" fits the construction argued by the respondents.

18. There will be an order that the question to be decided separately pursuant to the order of Northrop J on 21 March 1994 be answered: No.

19. There will be an order that the applicant pay the respondents' costs of the separate hearing, including reserved costs.