originating process means an application commencing a proceeding, and includes a cross-claim in the proceeding against a person who was not previously a party to the proceeding."
13 There is a similar definition of "originating process" in O 1 r 4. The word, "proceeding", is defined in s 4 of the Federal Court of Australia Act 1976 (Cth) as follows:
"proceeding means a proceeding in a court, whether between parties or not, and includes an incidental proceeding in the course of, or in connexion with, a proceeding, and also includes an appeal."
14 An application under O 15A r 6 is a proceeding in the Court, and the application itself commences the proceeding. I follow the decision of French J (as his Honour then was) on this point in Carnegie Corporation Limited v Pursuit Dynamics Plc (2007) 162 FCR 375 ("Carnegie Corporation") at 387-388 [48]-[53].
15 The requirement in O 8 r 3(2)(a) (ie, that the Court has jurisdiction in the proceeding) is satisfied whether the "proceeding" is considered to be the application under O 15A or the possible proceeding for infringement of the applicant's patent. Either way, this Court has jurisdiction in the proceeding.
16 The next requirement is that the proceeding be of a kind mentioned in O 8 r 2. As I have said, the particular items which the applicant relies on for the purposes of meeting this requirement are set out above. It will be apparent from those items that the applicant's submission is that, in characterising the proceeding, I should have regard not only to the application under O 15A r 6, but also to the possible proceeding for infringement of the applicant's patent. On the hearing of the application, I questioned counsel for the applicant as to whether that was the proper approach. The prima facie case requirement seemed to be firmly linked and only linked to the application under O 15A r 6. Furthermore, this being an ex parte application, the applicant quite properly drew my attention to the decision of French J in Carnegie Corporation. In that case his Honour said (at 389 [56]-[57]):
"The applicants in this case assert, for the purposes of O 8 r 2, that their application for preliminary discovery is to be regarded as an originating process in a proceeding which consists of or includes one or more of the following kinds of proceeding set out in O 8 r 2:
1. Proceeding based on a cause of action arising in Australia.
2. Proceeding based on a breach of contract in Australia.
3. Proceeding in relation to a contract that is made on behalf of the person to be served by or through an agent who carries on business in Australia.
4. Proceeding based on a breach of a provision of an Act committed in Australia.
5. Proceeding based on a breach of a provision of an Act (wherever occurring) seeking relief in relation to damage suffered wholly or partly in Australia.
6. Proceeding in which the subject matter, so far as it concerns the person to be served, is property in Australia.
In my opinion the proceedings contemplated by the items on which the applicants rely in O 8 r 2 do not include proceedings by way of an application for preliminary discovery. Such proceedings are directed to determine who should be sued and alternatively whether some ascertained person should be served. The proceedings contemplated by the items relied upon in this case, in my opinion, involve originating processes seeking relief in such proceedings. They refer to, in my opinion, claims for substantive relief dependent upon the establishment of the causes of action identified or defined in those items. The applicants' submissions appeared to be posited upon the assumption that the relevant proceedings are those which they might ultimately bring under the TPAand for breach of contract. But those are not the proceedings which have been commenced in this Court."
17 With respect, I think that a broader approach may be taken to the question of whether the proceeding is of a kind mentioned in O 8 r 2. That broader approach involves taking into account, when assessing the nature of the proceeding, the possible proceeding which must be identified by the applicant for the purpose of satisfying O 15A r 6(a). For the reasons which follow, I do not think it is appropriate to draw a clear line between the application under O 15A r 6 and the possible proceeding.
18 First, the nature of an application under O 15A r 6 must be considered. This Court only has jurisdiction with respect to a "matter" within s 77(i) of the Constitution. The Full Court of this Court has held that O 15A r 3 (identity discovery) and O 15A r 6 (information discovery) are valid and give rise to a matter within s 77(i) of the Constitution: Hooper v Kirella Pty Ltd; Transfield Pty Ltd v Airservices Australia(1999) 96 FCR 1. A party who is able to bring himself within O 15A r 6 is a party who asserts a claim resting on an immediate right or liability which has arisen out of events which have occurred. The fact that the party does not have sufficient information to enable it to make a decision on whether or not to commence proceedings does not mean (assuming a federal element) that it does not assert a claim which is capable of determination in this Court. There is a justicable controversy between the parties and an order under O 15A r 6 enables the claimant to pursue his claim for substantive relief in this Court. Another way of putting the point is that an application under O 15A r 6 (and O 15A r 3) is incidental to a justicable controversy being the claim for substantive relief.
19 Secondly, the very nature of an application under O 15A r 6 directs attention to the possible proceeding which may follow the application. That is because one of the elements of such an application is that, as a matter of objective fact, there must be reasonable cause to believe that the applicant has or may have the right to obtain relief in the Court in relation to the possible proceeding.
20 Thirdly, the words "based on" in a number of items in O 8 r 2 are wide words which, although they may not dictate a broader approach, certainly allow for it.
21 Finally, it seems that the broader approach was taken by Beaumont J in Western Bulk Carriers (Australia) Pty Ltd v Cosco Bulk Carrier Co Ltd [2002] FCA 1520, although I recognise that the particular point now under consideration does not appear to have been argued before his Honour.
22 When the application under O 15A r 6 and the applicant's possible proceeding for the infringement of an Australian patent in Australia are considered together, it is clear that the proceeding is of a kind mentioned in O 8 r 2.
23 The next requirement is that the applicant has a prima facie case for the relief claimed in the proceeding. It seems that the words in O 8 r 3(c) do specifically direct attention to the relief sought under O 15A r 6. I do not propose to recite the evidence directed to this requirement. It is set out in the affidavits put before me. I am satisfied that the applicant does have a prima facie case for relief under O 15A r 6.
24 I am satisfied that the requirements of O 8 r 3 and r 2 are satisfied. Even so, I have a discretion to refuse leave to serve if that is appropriate in the circumstances. This is a case where the same application under O 15A r 6 has been brought against two parties, one of whom has been properly served within Australia. If I could be satisfied that the merits of the application and the relief which might follow are the same against both respondents then that might be a reason to exercise the discretion against granting leave to serve. In other words, if there was no prospect of the applicant obtaining relief, or greater relief from the first respondent than it could obtain from the second respondent, then that might be a discretionary reason to refuse leave to serve. However, I am not certain of that being the case on the evidence before me and I would not refuse leave to serve on this ground.