Sanofi v Parke Davis Pty Ltd

Sanofi v Parke Davis Pty Ltd - [1983] HCA 32 - HCA 1982 case summary — Zoe

[20]

I must look at the language of the two Sections. Section 18, sub-sec. (1) of the Act of 1907 is in these terms: - "A patentee may, after advertising in manner provided by Rules of the Supreme Court his intention to do so, present a petition to the Court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent." There is a punctum temporis, six months before the expiration of the patent, before which the petition has to be presented, and there is a period of six months from that punctum temporis down to the expiration of the patent. The language of Section 7, sub-sec. (1) of the Act of 1919 is curiously inappropriate to that state of things. The words to be inserted are: - "Provided that the Court may in its discretion extend such period within which such a petition may be presented." There is no period which was to be extended. There was a period of time prior to which a petition had to be presented. But I think looking at the language the true meaning of "extend such period" is "enlarge the time," and that the words must be read "Provided that the Court may in its discretion enlarge the time within which such a petition may be presented." That is to say, it may allow the petition to be presented after the punctum temporis, six months before the expiration of the patent. So much for his Lordship's treatment of the problem presented by the reference in the proviso to a period of time. However, it is relevant to continue with a further citation from the judgment. Continuing, Sargant J. said: If that is so, is there any sufficient reason for putting a limit on the discretion of the Court, and saying that the Court is debarred in its discretion from enlarging that time beyond the date of the expiration of the patent? The only suggestion, when once that construction has been put upon the language, is that the patentee is no longer a patentee. I do not think that that is sufficient. He was a patentee, his rights are in respect of that which was a patent, and, in my opinion, having regard to the object of Section 7, which obviously is to protect patentees who lost, or omitted to exercise, their rights owing to the state of war that had been existing, and looking to the fact that the whole matter is within the discretion of the Court, I see no sufficient reason for limiting that power to enlarge the time, to a power to enlarge it merely up to the date of the expiration of the patent. In my judgment it is left to the discretion of the Court to enlarge the time to any extent that the Court in its discretion may think fit. It is clear from this passage that his Lordship was influenced, in his construction of s. 7 of the 1919 Act, by the effect on patents of the war which had then only recently concluded. Nevertheless, his construction was followed consistently thereafter in the United Kingdom, in some cases long after the effects of the war had receded: see, e.g., In the Matter of Petersen's Patent [9] ; In the Matter of Horstmann, Horstmann & Edgar's Patent [10] ; In the Matter of the Patents of Neufeldt and Kuhnke G.m.b.H. [11] ; In the Matter of Ruths' Patent [12] ; In the Matter of Meldahl's Patents [13] . It would seem that the United Kingdom legislature acknowledged the force of this line of authority when in the Patents Act 1949 U.K., it included in the form of a parenthesis an express limitation in the phrase "at such later time (not being later than the expiration of the said term) as the court may allow" (s. 23(2)). By way of contrast, s. 24(3) of the same Act dealing with extension of the term of a patent on the ground of war loss makes it plain that the same phrase without the parenthesis would allow the application to be made after the expiry of the term of the patent. Similarly, we would think there are strong reasons for attributing the same meaning to the phrase "such later time" which appears in s. 95(5) of the Australian Act in connexion with applications for extension due to war loss. 1. (1920) 37 R.P.C. 52. 2. (1920) 37 R.P.C., at p. 54. 3. (1921) 38 R.P.C. 267, at p. 275. 4. (1928) 46 R.P.C. 1. 5. (1930) 47 R.P.C. 553, at p. 563. 6. (1931) 48 R.P.C. 553, at p. 554. 7. (1950) 67 R.P.C. 81.

[21]

Mr. Handley relies upon the distinction that Pt IX consistently draws between the power of the court to extend the term of a patent and its power to grant a new patent, suggesting that the choice between the two alternatives depends upon whether or not at the time when the court exercises its discretion in relation to a petition under s. 90(1) the term of the patent has expired. If the term has not expired, then the appropriate order is one extending the term; on the other hand, if as in many if not most cases will be the norm the term has expired the court would properly order the grant of a new patent. On the basis of these considerations, Mr. Handley argues that it is significant that the court is not empowered to extend the time within which a petition praying for the grant of a new patent may be presented. The only petition which in these circumstances the Act recognizes is one praying that the patent be extended for a further term, thereby giving rise to the implication that the original term of the patent must still be current at the time of the presentation of that petition. If viewed in isolation as a matter of language, the argument is logically persuasive. Yet it falters when viewed in the context of established principles of patent law. In In re Robinson's Patent [14] , Isaacs J. made a detailed review of the legislative history and practice in the United Kingdom from which he concluded that notwithstanding that the term of a patent had expired the subsequent action, even though in the form of a new grant, was uniformly described as a prolongation or extension of the original term. He cited from the decision of Bovill v. Finch [15] , the sentence: "Every new grant, therefore, is a graft only on the original grant, and has no existence apart from the parent grant", (a sentence which was also referred to by Dixon J. in Ex parte Celotex Corporation; In re Shaw's Patents [16] ). Isaacs J. then turned to s. 84 of the Patents Act 1903-1909 Cth, and found the same principle embodied therein. He said [17] :

[27]

Parke Davis also relies on the marked change in wording between s. 84(7) of the 1903-1950 Act and s. 90(1) of the Act. The former provision removes any doubt by expressly declaring the power of the court "either before or after the expiration of the term of a patent" to extend the period within which proceedings may be taken for the extension of the term of the patent. The latter provision deals in the one sub-section with both the presentation of a petition praying that the patent be extended for a further term and the power of the court to extend the time within which that petition may be presented. The two provisions are structurally different. Assuming that no change of legislative intention was sought to be expressed there would have been some difficulty in incorporating in s. 90(1) the same phrase as appeared in s. 84(7). It would have required a further set of words in the form of a parenthesis or a separate sub-section. The change of structure may well have diverted the attention of the draftsman from the precise wording of s. 84(7). In evaluating the submission, the present provision is also to be contrasted with the change in practice which was effected in England by s. 23(2) of the 1949 Act. As we have already observed, the practice had been established by the decision of Sargant J. in In the Matter of Brown's Patent [22] and followed consistently thereafter. However, s. 23(2) provides for an application for the extension of the term of a patent to be made "not more than twelve nor less than six months before the expiration of the term of the patent or at such later time (not being later than the expiration of the said term) as the court may allow." Presented, therefore, with two clear but contrasting expressions of legislative intent, the draftsman of s. 90(1) chose to follow neither. Mr. Lyons, counsel for Sanofi, seeks to argue that no change of legislative intention should be read into s. 90(1) because the Act was enacted following the preparation of a report by a committee chaired by Mr. Justice Dean of the Supreme Court of Victoria and that the report made no mention of a change in direction in this regard. In our opinion, the Court should not seek to obtain from that report any direct assistance in the construction of s. 90(1) of the Act. The central principle governing the resort by the Court to materials such as these is well established. They may be relied upon to show the mischief to which the statute was directed as distinct from the remedy which was intended: Black-Clawson Ltd. v. Papierwerke A.G. [23] ; Wacal Developments Pty. Ltd. v. Realty Developments Pty. Ltd. [24] . In any event, as we understand his submission, all that Mr. Lyons seeks to establish from the Dean Committee Report is the negative proposition that no "mischief" arising from the operation of s. 84(7) of the 1903-1950 Act for which a remedy should be devised was reported by the committee. So much may be acknowledged. It follows from what we have said that we are unable to discern the existence of a change in direction on the part of the legislature merely from the fact of the different wording of the two provisions.

[30]

It remains to consider what is perhaps the major thrust of Mr. Handley's submissions, a thrust which reflects the consideration which weighed heavily with the majority in the Federal Court. We refer to the broad consideration derived from a view of the purpose and object underlying the Act. Their Honours expressed that purpose in terms of the encouragement of inventors by granting a monopoly for an invention which on the expiry of the monopoly was to be fully available to the public unless for reasons of inadequate remuneration a court extended its term. Speaking of the right to petition for an extension of the term of a patent, their Honours considered that if it were left unrestricted it would seriously encroach upon the interests of the public which the Act otherwise sought to secure. They thought it would also mean an undetermined de facto extension of the monopoly, since no commercial concern would consider the expenditure of capital moneys in connexion with exploitation of the invention while the patent remained under threat of extension. With all respect to their Honours, we think that such a conclusion is inconsistent with the history of the legislation. It is to be remembered that Australian practice since the introduction of reg. 8 in 1914 would appear to have been uniform and to have allowed a petition praying for the extension of the term of a patent to be presented after the term had expired. That construction of reg. 8 was adopted by Isaacs J. in In re Robinson's Patent [25] . There followed in 1921 the addition of sub-s. (7) to s. 84 of the 1903 Act. There is no suggestion that when the 1952 Act came into operation there was any change in the practice. There are several unreported decisions of single justices of this Court during the currency of the present Act which have confirmed the existence of that practice: In re General Tire & Rubber Co.'s Patent, per Windeyer J., 19 October 1966; In re Hanson-Van Winkle-Munning Co.'s Patent, per Barwick C.J., 25 February 1970; In re Stamicarbon N.V.'s Patent, per Walsh J., 22 March 1971 [26] ). The transcripts relating to each of these decisions were tendered in the course of argument and serve to indicate that the question of the proper construction of s. 90(1) was raised on each occasion. Counsel for Sanofi were given leave to file submissions by way of reply and in the course of those submissions reference is made to a further four occasions during 1954 and 1955 when justices of this Court after the expiry of the term of a patent extended the time within which a petition praying for the extension of that patent could be presented. Fullagar J. notes in the present case that the decision of Walsh J. in Stamicarbon has been followed by several judges of the Supreme Court of Victoria. He adds that the construction for which Sanofi contends was supported by counsel for the Commissioner. In the light of this practice implemented consistently in Australia for nearly eighty years, we can only assume that it is not inimical to the true purpose or object underlying patent legislation.

[60]

An interlocutory order or rule from which there has been no appeal does not operate so as to bar or prejudice the Court in its appellate jurisdiction from giving such decision upon an appeal as is just. Jessel M.R., in reference to a similar English rule, expressed the opinion that it was "only intended to prevent the right of appeal from being interfered with by the existence of an interlocutory order which incidentally involved a decision of the point" (White v. Witt [53] ). The rule has no application here, for the point argued on the appeals to both the Federal Court and to this Court was the point of power to make an order extending the term of a patent. There is no interlocutory order which involved a decision on that point. The question of conditions is a separate one, having to do with the manner in which the power is exercised rather than with the existence of the power. Neither appeal related to the conditions upon which the power should be exercised. However, the difficulty which Parke Davis faces is not merely procedural. The procedural difficulty could be cured with this Court's consent by filing out of time a notice of appeal against the Federal Court's refusal of leave to appeal against the conditions imposed by the Supreme Court. The substantial difficulty Parke Davis faces is that there was no material canvassed before this Court to show that the Federal Court's refusal to entertain an appeal against the conditions which the Supreme Court imposed was in error. For reasons which I have given, there may be some support for the view that the Celotex conditions were insufficient properly to protect Parke Davis' interests, but there may well have been other considerations which led the Federal Court to refuse leave to appeal on this ground. As I cannot be satisfied that, having regard to the course of the litigation, the justice of the case requires a further judicial consideration of the question of conditions to be contained in the new grant, I would simply allow the appeal and restore the order of Fullagar J. and order that Parke Davis pay the costs of Sanofi and the Commissioner in the Federal Court and in this Court. 1. (1877) 5 Ch. D. 589, at p. 590.

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