New England Biolabs Inc v F Hoffmann-La Roche AG

THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. The appellant pay the respondent's costs including its costs of the application for leave to appeal. 3. Within 7 days, the parties file any submissions as to the costs of the Commissioner of Patents. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

On Appeal from a Single Judge of the Federal Court of Australia

THE COURT: 1 In this matter the appellant (New England Biolabs, Inc) sought leave to appeal against orders made by a Judge of this Court deciding a preliminary issue under Order 29 of the Federal Court Rules. (See [2003] FCA 1460.) The issue decided by the primary judge is reflected in the question that his Honour posed in framing the order under Order 29: The question whether this Honourable Court has a discretion to refuse to allow an amendment request under s 104(1) of the Patents Act 1990 (Cth) in an appeal against a decision of the Commissioner of Patents under s 104(7) of the Patents Act 1990 (Cth) on the grounds set out in Exhibit 1A, be decided separately from and before any other question in the proceedings. 2 Exhibit 1A was a document which contained, amongst other things, assertions by the appellant that the respondent had engaged in serious misconduct by way of deliberate deception of the United States Patent Office and of the Patent Office in Australia. The question posed can be expressed as whether the Court has a discretion in the appeal under s 104(7) of the Patents Act 1990 (Cth) (the "Act") to take into account disentitling conduct of the applicant for amendment, not otherwise amounting to a ground of opposition under s 102 of the Act. 3 The primary judge's answer to the question framed by him was, "No". 4 As the decision of the primary judge was on a preliminary issue and by reason thereof the orders made were interlocutory, leave to appeal was required. Also, the decision under Order 29 was made in the exercise of the Court's jurisdiction to hear appeals from decisions of the Commissioner of Patents, and s 158(2) of the Act also required that leave be given. 5 The Court granted leave to appeal at the commencement of the hearing. Our reasons for that course were that the issue raised by the appeal is an important one, not dependent in any way upon any facts and not raising any matter contrary to any view of the Commissioner or her delegate or the primary judge on any technical question: cf Genetics Institute Inc v Kirin-Amgen (1999) 92 FCR 106 at [16] - [23] and Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273, 56 IPR 30. 6 As she was entitled to do under the Act, the Commissioner appeared on the appeal. 7 The dispute between the parties has a considerable history, both in this country and overseas. The relevant facts necessary to understand for the disposition of the appeal are in short compass and not, relevantly, in contest. That is not to say, however, that the respondent does not dispute the assertions in Exhibit 1A. The appeal does not call for any consideration of the accuracy of any of those assertions. The issue before the primary judge and before the Court on appeal is whether the Court could entertain an agitation of the matters of asserted misconduct of the respondent in coming to a decision as to whether to make orders on the appeal from the Commissioner. 8 The course of the matter before the primary judge to the point of the making of the order under Order 29 is contained in [1]-[10] of the primary judge's reasons which were as follows: [1] This proceeding is a further round in a dispute that was the subject of reasons that I published on 27 June 2001: see New England Biolabs Inc v Commissioner of Patents (2001) 110 FCR 357. The dispute concerns the question of whether the respondent, F Hoffman-La Roche AG ('Roche'), should be refused leave to amend, prior to grant of a patent, its complete specification, on the ground of the conduct of Roche prior to making its request for leave to amend. Amendment is opposed by the applicant, New England Biolabs, Inc ('NEB'), on the ground of alleged inequitable conduct on the part of Roche in connection with the prosecution of its patent application. NEB asserts that Roche, in order to advance the central assertion that its patent application related to a patentable invention, made a number of representations that Roche knew to be false and misleading. NEB asserts that such inequitable conduct was such as to disentitle Roche to the favourable exercise of any discretion to grant leave to amend as requested. [2] Roche is the assignee of patent application number 632857 ('the Application'). On 14 January 1993, the acceptance of the Application was advertised and, on 14 April 1993, NEB filed a notice of opposition. On 12 November 1997, a delegate of the Commissioner of Patents ('the Commissioner') made a decision upholding NEB's opposition in relation to certain claims in the complete specification but rejecting the opposition in relation to the balance of the claims. The delegate allowed Roche a period of 60 days to propose amendments to overcome problems identified in the claims that were successfully opposed. Roche, however, did not propose any amendments during that period. [3] Both parties appealed from the decision of the delegate in so far as it was contrary to the interests of the relevant party. On 28 April 2000, in giving a ruling on the admissibility of evidence in the course of the hearing of that appeal, I expressed my views as to the nature of opposition proceedings and an appeal under s 60 from a decision in opposition proceedings: see F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56. As a consequence of that expression of views, NEB discontinued its appeal. However, in connection with that discontinuance, NEB undertook to apply for revocation of any patent granted on the Application within three days of grant. [4] In the original notice of appeal, Roche had foreshadowed an application to the Court for orders directing amendment of the complete specification. However, in the course of a directions hearing following the discontinuance, I tentatively expressed the view that the Court may not have power to direct amendment. Roche, therefore, abandoned its application for orders directing amendment and, instead, filed a request for leave to amend under s 104 of the Patents Act 1990 (Cth) ('the Act'). That request is the subject of the dispute that is now before the Court. The question of an order for the sealing of a patent was deferred until the question of amendment under s 104 was finally dealt with. [5] A delegate of the Commissioner granted leave to amend on 20 October 2000 and the proposed amendment was advertised on 9 November 2000. NEB filed a notice of opposition to the amendments on 9 February 2001. NEB also took proceedings in this Court under the Administrative Decisions (Judicial Review) Act 1977 (Cth) seeking to impugn the Commissioner's decision to grant leave to amend on the ground that the Commissioner's delegate failed to have regard to the alleged inequitable conduct. [6] That proceeding was dealt with in my reasons of 27 June 2001 in which I concluded that the Commissioner had no discretion to refuse to grant leave to amend on the basis of the conduct of Roche prior to requesting leave. I concluded that the Commissioner had no discretion to decline to allow the amendments requested on the basis of the conduct of Roche trying to make its request for leave to amend. I, therefore, dismissed the application by NEB: see New England Biolabs Inc v Commissioner of Patents (2001) 110 FCR 357. [7] After the amendments were advertised for opposition, and were opposed by NEB, Roche proposed further amendments, which included withdrawal of certain of the earlier proposed amendments. On 11 November 2002, the Deputy Commissioner advised that, while he did not accept Roche's submission that the proposed amendments did not materially alter the request, he was prepared to proceed on a particular basis to expedite matters if both parties consented. [8] On 5 March 2003, leave was granted to amend in accordance with the amended proposals. That direction was the subject of advertisement on 6 March 2003. There being no further opposition filed, the Commissioner's delegate then proceeded to deal with the amended amendments. [9] Before dealing with NEB's contentions, it is desirable to say something about the scheme of the legislation. That scheme is set out in my reasons of 27 June 2001, to the extent that it was relevant to the decision I gave at that time. The question presently before the Court, however, raises different issues. NEB has appealed, pursuant to s 104(7) of the Act, against the Commissioner's decision allowing the amendments. Shortly stated, NEB contends that, notwithstanding the determination that I made concerning the discretion of the Commissioner in dealing with the amendment request, there is, nevertheless, a discretion in the Court to refuse leave to amend on the hearing of an appeal under s 104(7). [10] Because the evidence that would be adduced in relation to such a question would be extensive, the parties asked that the Court determine a preliminary question separately from and prior to the determination of all other questions that would be raised in the appeal. That question is whether this Court has a discretion to refuse to allow an amendment request under s 104(1) of the Act in an appeal against a decision of the Commissioner under s 104(7), on the grounds set out in NEB's detailed comments of 21 August 2000 to the Commissioner on Roche's proposed amendments. In those comments, NEB raised its assertions of inequitable conduct on the part of Roche. 9 The primary judge was hearing an "appeal" from the Commissioner under s 104(7) of the Act. To understand what was, and what was not, before the primary judge it is necessary to pay careful regard to the relevant provisions of the Act and their place in the legislative scheme for the review of decisions of the Commissioner of Patents. 10 Chapter 10 of the Act deals with amendments. Section 104 of the Act concerns amendments that are requested by an applicant for a patent or by a patentee. The section is concerned with what are sometimes called voluntary amendments, and which can be made at any time. Section 104 is in the following terms: (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. 11 Section 104(5) picks up what is not an allowable amendment under s 102 of the Act, which latter provision is in the following terms: (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. (2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment: (a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or (b) the specification would not comply with subsection 40(2) or (3). (2A) For the purposes of subsection (2), relevant time means: (a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted; or (b) in relation to an amendment proposed to a complete specification relating to an innovation patent - after the Commissioner has made decisions under paragraphs 101E(a) and (aa) in respect of the patent. (2B) An amendment to a patent request relating to an innovation patent applicationis not allowable if: (a) the patent application was provided for in section 79C; and (b) the effect of the proposed amendment would be to convert the application from an application for an innovation patent to an application for a standard patent. (2C) An amendment of a complete specification relating to a patent is not allowable if: (a) the patentee or the patentee's predecessor in title failed to ensure the provision to the Commissioner of the information required by subsection 45(3) or section 101D in relation to the patent; and (b) the effect of the proposed amendment would be to remove a lawful ground of objection under paragraph 18(1)(b) or 18(1A)(b) to the specification arising from the existence of some or all of the information not provided. (3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification. 12 As can be seen from s 104(2) and (3) the Commissioner is required to consider and deal with the request in accordance with the regulations and she may allow the amendment with conditions, but subject to the regulations. How the Commissioner must consider and deal with the application and her power to allow an amendment sought under s 104(1) is regulated by regulations 10.1 to 10.6. 13 Under regulation 10.2(1) the Commissioner must report on certain matters, being: (a) the request for leave to amend and the statement of proposed amendments do not comply with regulation 10.1 and Schedule 3; and (b) any proposed amendment of a complete specification is not allowable under section 102 or 103 of the Act; and (c) the proposed amendments are not allowable under regulation 10.3 or, if made, would not otherwise be allowable under the Act or these Regulations. Regulation 10.2 also provides for the report to be given to the applicant or patentee and to any opponent and for the opportunity for further material to be provided and steps to be taken. Regulation 10.3 provides for circumstances where amendments are not allowable. Regulation 10.4 provides for certain circumstances where the Commissioner must refuse the request for leave to amend. Regulation 10.5 provides for circumstances where the Commissioner must grant leave to amend. The effect of regulation 10.5 is that unless the proposed amendments were not allowable under s 102 or not allowable under regulation 10.3 or otherwise not allowable under the Act or regulations the Commissioner must grant leave to amend. 14 The issues raised by the appellant in Exhibit 1A are not matters which by s 102 or by regulation 10.3 or by the Act or regulations otherwise would make the application not allowable. 15 As can be seen from s 104(4) the regulations also have a part to play in identifying what an opponent can do. Regulation 5.3(4) provides as follows: A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act. 16 From this legislative scheme, it can be seen that the Act and regulations identify a universe of facts from which the Commissioner must or must not allow the amendment. Nowhere in the Act or regulations is there a provision for the Commissioner to exercise a discretion of such width or generality as would permit the consideration of the type of asserted misconduct in Exhibit 1A. In earlier proceedings before the primary judge (New England Biolabs, Inc v Commissioner of Patents [2001] FCA 787; 110 FCR 357) his Honour concluded that the Commissioner's power in granting leave to amend, once a report under regulation 10.2(1) which was not adverse had been made, was not subject to a general discretion that allowed her to take into account matters such as those asserted in Exhibit 1A. No appeal was taken by the appellant against the orders of the primary judge in that case. The appellant did not press, and indeed, expressly before the primary judge, abandoned questions for separate determination in these proceedings that would have raised the issue. The appeal before us proceeded on the basis of the correctness of the conclusion of the primary judge in that case. Thus, in argument before this Court, it was accepted by the appellant that the matters contained in Exhibit 1A could play no part in the exercise of the Commissioner's discretion under s 104(3) of the Act. The primary contention of the appellant was, however, that it did not follow from that conclusion that the Court was similarly restricted. 17 To appreciate the argument of the appellant it is necessary to have regard to the following additional provisions of the Act. Section 105 concerns amendments directed by the Court in "relevant proceedings in relation to a patent", a phrase defined in the dictionary in Schedule 1 to the Act as: …court proceedings: (a) for infringement of the patent; or (b) for revocation of the patent; or (c) in which the validity of the patent, or of a claim, is in dispute. In such proceedings, the Court has a wide discretion. Section 105 is in the following terms: (1) In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent, the patent request or the complete specification in the manner specified in the order. (2) An order may be made subject to such terms (if any) as to costs, advertisements or otherwise, as the court thinks fit. (3) The patentee must give notice of an application for an order to the Commissioner, who is entitled to appear and be heard, and must appear if the court directs. (4) A court is not to direct an amendment that is not allowable under section 102. (5) The patentee must file a copy of an order within the prescribed period. (6) On the filing of a copy of an order, the patent, patent request or complete specification is to be taken to have been amended in the manner specified in the order 18 Chapter 16 of the Act deals with jurisdiction and powers of courts. Section 104(7), set out above, provides for an "appeal" to this Court. There are a number of other such provisions providing for "appeals" to the Court against decisions of the Commissioner: see ss 35, 36, 42, 49, 50, 51, 60, 69, 81, 82, 101, 104, 106, 107 and 108 of the Act. 19 In Chapter 16 of the Act, the following provisions should be noted: s 154 Jurisdiction of Federal Court (1) The Federal Court has jurisdiction with respect to matters arising under this Act. (2) The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution. (3) A prosecution for an offence against this Act must not be started in the Federal Court. s 156 Exercise of jurisdiction The jurisdiction of a prescribed court under section 154 or 155 is to be exercised by a single judge. s 158 Appeals … (2) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner. … s 160 Powers of Federal Court On hearing an appeal against a decision or direction of the Commissioner, the Federal Court may do any one or more of the following: (a) admit further evidence orally, or on affidavit or otherwise; (b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Commissioner; (c) order an issue of fact to be tried as it directs; (d) affirm, reverse or vary the Commissioner's decision or direction; (e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; (f) order a party to pay costs to another party. 20 The primary submission of the appellant was that ss 104(7) and 160, when read together, enable the Court, when hearing the appeal, to take into account considerations wider than those that the Commissioner takes into account. Specifically, it was said that the width and generality of the powers expressed in s 160, especially s 160(e), mean that the discretion exercised by the Court in an appeal as to whether leave should be given for the amendment is sufficiently wide to permit the Court to have regard to matters of the nature asserted in Exhibit 1A. In support of this submission, reference was made to four considerations in particular: (a) the scheme and working of the legislation; (b) the nature of an appeal pursuant to section 104(7) of the Act and the broad powers conferred on the Court in such an appeal; (c) the well established discretion of the Court to refuse to allow amendments under other provisions of the Act and provisions of previous legislation; and (d) constitutional and other considerations precluding the imposition of any fetter on the Court's discretion. We will deal with these matters, but not in precisely the same organisational structure as put forward by the appellant. 21 The primary judge expressed the view that in circumstances where the current legislative scheme is not ambiguous as to its effect then reference to the earlier forms of the legislation is of no assistance in construing determining the effect of the current legislative scheme. With respect, that does not give adequate recognition to the role of legal and historical context, including a provision's legislative history, in the approach to statutory interpretation: CIC Insurance Ltd v Bankstown Football Club Ltd (1997) 187 CLR 384, 408; Newcastle City Council v GIO General Ltd (1997) 191 CLR 85, 112; and Network Ten Pty Ltd v TCN Channel Nine Pty Ltd (2004) 205 ALR 1, 4. 22 Though the approach of the primary judge may be seen, in this respect only, to have been in error, we agree with the conclusion reached by his Honour as to the answer to the separate question posed. In our view, especially with an understanding of the historical and constitutional context, the scheme and wording of the Act is to be seen as giving to the Court the same task as is given to the Commissioner, though one task is to be undertaken by an application of the judicial power of the Commonwealth under s 71 of the Constitution, and the other by the executive power, being ultimately derived from s 61 of the Constitution. 23 The appeal under s 104(7) is not an exercise of appellate jurisdiction; it is an exercise of the original jurisdiction of the Court exercising for the first time the judicial power of the Commonwealth. To state as much, however, does not answer the question as to the subject matter of that exercise of original jurisdiction. 24 From 1926 and the decision of the High Court in British Imperial Oil v Federal Commissioner of Taxation (1926) 38 CLR 153 (the Second BIO case) and the advice of the Privy Council in 1930 to dismiss the appeal therefrom in Shell Co of Australia Ltd v Federal Commissioner of Taxation (1930) 44 CLR 530 (the Shell case) it has been recognised that there are powers or decisions provided for by statute which are of a character or nature that are amenable to being exercised either by an administrator exercising the executive power or by a judge exercising the judicial power of the Commonwealth. 25 In the Second BIO case at 175-77 Isaacs J divided governmental decision-making functions broadly into three classes: functions only capable of being assigned to the judicial arm of government; functions only being able to be assigned to the executive arm of government; and functions which can be assigned to either, or both. Isaacs J recognised that the self-same function, that is, one expressed in identical language, might be exercised by the executive or the judiciary, and be the exercise of executive power by the former and judicial power by the latter. The function was different in each case because a different type of power was being wielded in the resolution of the similarly expressed questions. Thus, Isaacs J said at 177: The character of the function often takes its colour largely from the primary character of the functionary, and depends also on how the decision is made binding and how enforced. 26 The importance of the identity of the repository of the power in the characterisation of the power being exercised was reiterated in R v Spicer; Ex parte Australian Builders' Labourers' Federation (1957) 100 CLR 277, 305 (per Kitto J); Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Limited (1959) 101 CLR 652 (the Bayer case) at 658-660 (per Dixon CJ with whom McTiernan J, Kitto J, Menzies J and Windeyer J agreed); R v Quinn; Ex parte Consolidated Food Corporation (1977) 138 CLR 1, 7-9 (per Jacobs J with whom Stephen J and Mason J concurred and with whom Barwick CJ, Gibbs J and Murphy J were in substantial agreement); R v Hegarty; Ex parte City of Salisbury (1981) 147 CLR 617, 628 (per Mason J); Re Ranger Uranium Mines (1987) 163 CLR 656, 665 (per Mason CJ, Wilson J, Brennan J, Deane J, Dawson J, Toohey J and Gaudron J); and Precision Data Holdings Ltd v Wills (1991) 173 CLR 167, 189 (per Mason CJ, Brennan J, Deane J, Dawson J, Toohey J, Gaudron J and McHugh J). 27 This recognition of the ability of Parliament to give the same task ostensibly to different branches of government solidified in Constitutional theory the legislative practice which was present in a number of statutes shortly after Federation of providing for a power or function to be exercised by an administrator, or alternatively, or thereafter, by a court. 28 For instance, in Division 1 of Part IV under s 46 of the Patents Act 1903 (Cth) the Commissioner could accept, or refuse to accept, the application and specification. Section 46 was in the following terms: 46 If the Commissioner is satisfied that no objection exists to the specification on the ground that the invention is already patented in the Commonwealth or in any State or is already the subject of any prior application for a patent in the Commonwealth or in any State he shall in the absence of any other lawful ground of objection accept the application and specification without any condition, but if he is not so satisfied he may either - (a) accept the application and specification on condition that a reference to such prior specifications as he thinks fit be made thereon by way of notice to the public; or (b) refuse to accept the application and specification. 29 Section 47 of the Patents Act 1903 provided for an "appeal" to the High Court or Supreme Court from any such decision in the following terms: 47. (1) An appeal shall lie to the High Court or the Supreme Court from any decision of the Commissioner under the preceding section. (2) The Court shall hear the applicant and the Commissioner and shall decide whether and subject to what conditions, if any, the application and specification shall be accepted. 30 It is to be noted that not only was there an "appeal", but the provision identified the subject matter of the task of the court in substantially similar, though not identical, terms. 31 Opposition after advertisement or acceptance was provided for in Division 2 of Part IV of the Patents Act 1903. Section 57 provided for a decision by the Commissioner as follows: 57. Where such notice is given the Commissioner shall give notice of the opposition to the applicant, and shall at the time and in the manner prescribed hear and decide the case. 32 Section 58 and 59 of the Patents Act 1903 provided for an appeal to, and the hearing of an appeal by, the High Court or Supreme Court in the following terms: 58. Any party aggrieved by the decision of the Commissioner may in the time and in the manner prescribed appeal to the High Court or the Supreme Court. 59. The High Court or the Supreme Court may hear the applicant and any opponent who in its opinion is entitled to be heard in opposition to the grant, and may determine whether the grant ought or ought not to be made. 33 Division 4 of Part IV of the Patents Act 1903 provided for amendment of specifications. Section 75 and 76 provided for decision on amendment by the Commissioner and thereafter by the High Court or Supreme Court in the following terms: 75. The Commissioner shall hear the person making the request and, if he appears, the person so giving notice, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed, subject however to an appeal to the High Court or the Supreme Court. 76. Where notice of opposition is given and the person giving such notice has appeared before the Commissioner, the High Court or the Supreme Court may hear the person making the request and the person so giving notice and being in the opinion of the Court entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. 34 Section 81 of the Patents Act 1903 provided for amendment by the Court of the specification in an action for infringement and revocation in the following terms: 81. In an action for infringement of a patent and in a proceeding for revocation of a patent the Court Justice or Judge may at any time order that the patentee shall, subject to such terms as to costs or otherwise as the Court Justice or Judge may impose, be at liberty to apply under the last preceding section for leave to amend his specification by way of disclaimer and may direct that in the mean-time the trial or hearing of the action be postponed. 35 Division 6A of the Patents Act 1903 comprised only of s 85A (inserted by the Patents Act 1909 (Cth)) dealt with restoration of lapsed patents. The respective roles of the Commissioner and the Court were set out in s 85A(5) to (7) in the following terms: (5) After the expiration of the prescribed period the Commissioner shall hear the case and issue an order either restoring the patent or dismissing the application: Provided that in every order under this section restoring a patent, such provisions as are prescribed shall be inserted for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had been announced as void in the official journal of the Patent Office. (6) Any party aggrieved by the decision of the Commissioner may, in the time and in the manner prescribed, appeal to the High Court or the Supreme Court. (7) The High Court or the Supreme Court may hear the applicant and any opponent who in its opinion is entitled to be heard in opposition to the application, and may determine whether the patent ought to be restored or the application dismissed. 36 A not dissimilar regime applied under the Trade Marks Act 1905 (Cth): see ss 33, 34, 35, 42, 43, 44, 45, and under the Designs Act 1906 (Cth) see ss 23, 24 and 25. 37 The Patents Act 1952 (Cth) simplified the wording of the appeal structure. In various sections of the Patents Act 1952, in provisions dealing with powers or functions of the Commissioner, an appeal was said to lie to the Appeal Tribunal (which was defined as the High Court) and later to this Court "from a" decision or other act of the Commissioner: eg s 49(4) (and from 1969, s 49(6)), s 50(6), s 52(3) (and later, s 52(8)), s 60(5), s 63(4), s 77(5) (and later, s 84), s 81(4) (and later, s 81(2)) and s 98(6). 38 A similar simplification of language took place in the Trade Marks Act 1955 (Cth): eg s 19(3), s 20(2), s 21(5), s 42(4), s 43(4), s 46, s 70(3), s 71(2) and s 81. 39 The Act continued to employ the simple formula of providing an "appeal", now to this Court: eg ss 35(3), 36(5), 42(7), 60(4), 75(4), 81(4), 82(3), 100A(3), 101(4), 101F(4), 101J(5), 104(7) and 109. A change of wording occured. The phrase "appeal from a decision" or act was changed to "appeal against a decision". 40 The appellant relies upon one particular aspect of the forms of the previous legislation. It points to cases under the Patents Act 1903 and the Patents Act 1952 which recognised a general discretion in both the Commissioner and the Court to take into account the conduct of the appellant in deciding whether or not to grant leave to amend the specification. Reference was made in connection with applications for leave to amend under the Patents Act 1903 to the comments of O'Connor J as to the generality of the discretion of the Commissioner and the Court under ss 71 and 78 of the Patents Act 1903 in Minerals Separation Limited v Potter's Sulphide Ore Treatment Limited (1909) 8 CLR 779, 800, to the comments of Starke J about the same matters and the relevance of the conduct of the patentee in Weiss v Lufft (1941) 65 CLR 528, 531-32 and to the comments of Menzies J in Sly v United Development Corporation Pty Limited (1962) 106 CLR 633, 640-41. Reference was also made to Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning v Commissioner of Patents (1971) 124 CLR 654, 663 and F Hoffman-La Roche & Co AG v Commissioner of Patents (1971) 123 CLR 529, 543. 41 It was submitted that even though the exercise of the function of the Commissioner under s 104 of the Act can be seen not to contain any element of general discretion, in particular one wide enough to take into account the asserted misconduct of the applicant (the respondent to the appeal), there was no evinced intention of the Parliament for there to be any cutting back of the discretion which was previously available in the exercise by the Court of the power in question. 42 This consideration, together with the width of the Court's powers under s 160 and the width of the discretion under s 105, formed the foundation of the appellant's submission that although the Commissioner had no discretion of a kind to enable the conduct of the respondent to be taken into account, the Court did. 43 It seems to us that far more important than looking for a statutory intention to remove a discretion that had existed under the Patents Act 1952 and before that under the Patents Act 1903 is the recognition of the clear statutory intention, able to be seen in a number of provisions of the Patents Act 1903, but made manifest in the Patents Act 1952 and the Act, to put before the Court the same subject matter for decision that had been before the Commissioner, but to deploy the executive and judicial powers respectively in the making of decisions on that subject matter. 44 The use of the word "appeal" by Parliament does not confer appellate jurisdiction. There is no doubt that the nature of the appeal provided for in s 104(7) of the Act is one such as to confer original jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: Jafferjee v Scarlett (1937) 57 CLR 115, 119-20, 126; the Bayer case; and Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136, 142. 45 Implicit, however, within the use of the word "appeal" and the phrase "appeal against the decision of the Commissioner", and without any other description of the controversy to be quelled by the exercise of judicial power, is the identification of the matter or controversy - the subject matter of the deployment of the respective powers - being the same in each case. The simplicity of the enunciation of what the Court is doing: hearing an appeal against a decision of an administrator by exercising for the first time the judicial power of the Commonwealth in the original jurisdiction leads one to conclude that the Court is dealing with the same subject matter as was dealt with by the Commissioner. 46 To the extent that the Act and regulations delimit the boundary of the subject matter for decision by the Commissioner by restricting the decision to certain criteria or grounds, or by limiting what is permitted to be raised by an opponent in the application, or by eliminating any element of discretion in the making of the decision, they plainly confine the controversy before the Commissioner. We are of the view that the notion of an appeal to the Court in this context evinces a Parliamentary intention that the same subject matter be dealt with by the Court as was dealt with by the Commissioner (but this time by the deployment of judicial power).Thus, in order to conclude that the Court has a wider task by reference to different or wider criteria than that undertaken by the Commissioner one would need to identify some factor either from the nature of the judicial power or from some statutory provision upon which to base such a conclusion. 47 It was not said by the appellant that the exercise of the judicial power, of itself, gave the Court a discretion to refuse to grant leave to amend under s 104(7) of the Act in circumstances where the Commissioner had no such discretion under s 104(3). The different nature of the power (judicial rather than administrative) being exercised may lead to certain differences of procedure and approach, and will lead to a different character of decision with different attendant incidents. A discretion of the kind asserted by the appellant to reside in the Court in hearing an appeal under s 104(7) is not a necessary incident of judicial power; rather, if it exists, it is an incident of the task given to the Court (necessarily by statute) to be undertaken. That the judicial power is exercised to quell a controversy does not of itself introduce a general discretion affecting the question as to whether the controversy should be quelled one way or another. Rather, if a discretion resides in the Court to take into account certain matters in deciding whether to take one course or another, that is so because of the delimitation of the boundaries of the subject matter for decision by the Court - that is, the delimitation of the task of the Court. These limits are to be found in the Act or some other relevant statute. 48 Turning to the Act, the appellant first relies upon s 160. That section, however, is not directed to the limits or boundaries of the subject matter for decision. It clarifies and amplifies the power of the Court, but it is not directed to the widening of the subject matter of the appeal against a decision of the Commissioner. The same can be said in this context of ss 19, 22 and 23 of the Federal Court of Australia Act 1976 (Cth). 49 The subject matter of any appeal against a decision of the Commissioner is limited by the Act and regulations as is also the decision or function that was previously before the Commissioner (the "decision" against which the appeal is sought). This is not to give any restricted or restrictive interpretation to otherwise ample powers in s 106 of the Act or ss 19, 22 and 23 of the Federal Court of Australia Act: cf the numerous High Court decisions referred to in Hewlett Packard v G E Capital [2003] FCAFC 256; 203 ALR 51 at [187]. Rather, it is to recognise that the provision for an appeal to the Court against a decision of an administrator in this statutory context is to confer judicial power on the Court to hear and decide the same subject matter as was before the administrator, such subject matter having the same boundaries and limits as existed under the statute before the administrator. One boundary of the subject matter for decision was that the opponent (the appellant) was restricted to opposing amendments sought under s 104 (1) to grounds found in s 102; another boundary was the statutory and regulatory regime which precluded the Commissioner looking beyond a group of factors which did not include a general discretion which could be informed by the asserted misconduct of the respondent (as applicant). These boundaries are not a limit or fetter on the exercise of the executive power by the Commissioner; nor are they a limit or fetter on the exercise of the judicial power of the Commonwealth by the Court. They are part of the identification of the controversy over rights, privileges and entitlements that are entirely creatures of statute. One incident of the right to ask for leave to amend and of the right of opposition thereto is that allowance of any amendment is to be decided by reference to limited criteria: cf R v Quinn at pp 5 and 12. 50 The appellant referred to a number of decisions of this Court in illustration of the asserted effect and significance of s 160: F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at [38] dealing with the nature of evidence before the Court; Frederikshavn Vaerft A/G v Stena Rederi Aktiebolag (2002) 124 FCR 243 dealing with the substitution of the opponent; EI Du Pont De Nemours and Company v ICI Chemicals & Polymers Limited (2003) 128 FCR 392 dealing with fresh grounds and particulars of opposition; Genetics Institute Inc v Kirin-Amgen Inc (1996) 67 FCR 527; and Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 dealing with the power to order amendments. None of these cases assists the appellant. That the Court relies on evidence different from the material before the Commissioner is only to be expected as a consequence of the judicial power being exercised. The substitution of an opponent is a procedural matter within the boundaries of the dispute, permitted before the Commissioner and within the scope of an ample power such as s 160(e). The raising of fresh grounds (within the statutory limits of the subject matter of the decision) merely reflects the original nature of the jurisdiction in the Court and the fact that the subject matter is being litigated for the first time in the exercise of judicial power. The direction by the Court that a patent be granted conditional on amendments which appear appropriate as was done by Heerey J in Genetics Institute occurred in an appeal under s 60(4) of the Act being an appeal (as his Honour said at p 529) from a decision which could include a direction that amendments be made. In Merck & Co Inc v Sankyo Co Ltd Lockhart J was dealing with s 60(5) of the Patents Act 1952. 51 The appellant also points to s 105 of the Act. This power is found, however, not in a provision dealing with voluntary amendments, or with an appeal from a decision of the Commissioner, but as a statutory incident of the exercise of judicial power in the examination of the scope and validity of the patent. There is no reason to confine the function of the Court under s 105; nor has the Parliament purported to do so. Reference to s 105 does not assist in understanding the statutory structure of appeals of the kind provided for under s 104(7) of the Act. The width of the discretion under s 105 (as to which, see ICI Chemicals & Polymers Ltd v Lubrizol Corp (1999) AIPC 91-521 at pp 40,020-40,021 and Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 3) (1997) AIPC 91-366 at p 39,789) does not assist in understanding the subject matter of the appeal in s 104(7). 52 On the view we have taken of the proper construction and interpretation of the Act the question of regulation 5.3(4) (regulating an opponent's ground of opposition) being invalid as contrary to s 160 or as an unconstitutional fetter on the free exercise of conferred judicial power does not arise. 53 For the above reasons we conclude that the primary judge was correct in answering the question framed, "No". 54 The appeal in respect of which leave was granted on 9 August 2004 should be dismissed with costs, such costs to include the costs of the application for leave, though we will invite submissions from the parties on the question of the costs of the Commissioner. I certify that the preceding fifty-four (54) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Kiefel, Allsop & Crennan.