7 In seeking review of the delegate's decision, the applicants make no criticism of what the delegate had to say about there being only two issues raised for his determination or about his conclusion on the first of those issues that was adverse to them.
8 The second issue was confined to the assertion made on behalf of the applicants that the matters raised in the second respondent's notice of opposition did nothing more than confirm that the failure of the applicants to pay the continuation fee on time was due to an error or omission within s 223(2)(a), ie, an error or omission sufficient to justify the grant of the extension of time sought. The gravamen of each of grounds of opposition 1 to 4 is that particularised failures by the applicant GST or those acting for it and which were said by the applicant in its extension of time claim to constitute errors or omissions within s 223(2)(a) are not adequately explained in the material relied on by the applicants to justify the extension of time sought. I respectfully agree with the comments of Jenkinson J on the cognate provision in the 1952 Act in Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1988) 13 IPR 569 at 583 - 584 to the effect that the statutory power to extend time can only properly be exercised where the person seeking the extension has made a full disclosure of all the circumstances relevant to the exercise of that discretionary power. As the delegate correctly observed, it was not appropriate, in the context of considering whether to dismiss summarily the second respondent's notice of opposition, to embark on a detailed factual enquiry as to whether there had been a material non-disclosure by the applicant in any of the respects the subject of these first four grounds of opposition. He was, for the reasons given, entitled to treat the respondents' allegations of non-disclosure as raising for investigation matters relevant to the exercise of the discretion conferred by s 223(2)(a) and to reject the limited argument put to him by the applicants on this part of the case. Accordingly, he did not commit any reviewable error in refusing to dismiss summarily the notice of opposition in relation to grounds of opposition 1 to 4.
9 While deliberate conduct of the kind the subject of ground 5 (and perhaps also of ground 6) of the notice of opposition may not necessarily be inconsistent with there being relevant "error or omission" within s 223(2)(a), the applicant did not, either in its brief written submissions to the delegate or in its extensive submissions to this Court, attempt to explain why the matters raised in grounds 5 and 6 compelled the conclusion that the respondents were here relying on errors or omissions within s 223(2)(a), ie, on matters that could only require summary dismissal at least of these two grounds in the notice of opposition. There is thus no justification for any finding that the delegate's decision so far as it covered these two grounds of opposition was infected with error.
10 The applicants, in their application for review, also raise a number of arguments, none of which was ventilated in the proceedings before the delegate (as they could all have been, if only the applicants had chosen to do that). One of these new matters was said to raise only a question of law, viz, whether s 227(4) is applicable, where the fee payable is a continuation fee. Others of these new matters would require this Court to undertake a factual inquiry of its own into matters not the subject of any argument or investigation before the delegate. Submissions were made claiming review on the ground of what I take to be an improper exercise of the dismissal power vested in the delegate, firstly, that, on the state of the fee account between the Commissioner and the applicant, the Commissioner could not properly assert that, as at the due date for payment, anything was outstanding in respect of the continuation fees in question and, secondly, that this Court should determine whether, by reason of information the delegate should be inferred to have with respect to litigation in the past between the applicant and the Commissioner concerning various of the applicants' patents, the delegate should have held that assertions the subject of one of the grounds of opposition relied on by the second respondent were "unverified, untrue, scandalous and could not" be acted upon by the delegate.
11 When the Commissioner has to determine an opposed application for an extension of time made under s 223(2) he is not thereby placed under an obligation to undertake a general investigation to see if there is any factual or legal basis that might justify the grant of the extension: he is entitled, if not required, to confine his consideration of the matter to the issue raised in the applicants' statement of grounds for the application provided in accordance with reg 22.11(1) and the opponent's grounds of opposition provided in accordance with reg 5.4(1)(a). The delegate was under no obligation to make unsolicited inquiry into the two factual matters the applicants have raised for the first time in this Court and his failure to do this cannot make his decision relevantly erroneous.
12 ADJR review is concerned only with whether administrative action is within the limits of the power under which that action is taken and with whether proper processes of decision-making have been followed, not with whether the correct or best decision has been made. See Attorney-General (NSW) v Quin (1990) 170 CLR 1 at 35 - 36, cited in Minister for Immigration and Ethnic Affairs v Wu Chan Liang (1996) 185 CLR 259 at 272. I also regard the invitation to embark upon the two factual inquiries I have referred to in order to determine whether the delegate ignored relevant considerations in exercising the power of summary determination as infringing the prohibition against turning a review of the decision provided for by the Administrative Decisions (Judicial Review) Act 1977 (Cth) into a reconsideration of the merits of the decision: the assumption implicit in the applicants' contention that the Court should investigate these two matters is that if facts may exist which would require a different decision from that made, that is sufficient to obtain review by the Court of the decision.
13 Moreover, it is well-established that s 16(1) the ADJR Act confers upon the Court a wide discretion whether or not to grant relief. This discretion extends not only to the form of relief where relief is appropriate but also to whether or not to grant relief, even where a basis for a relief is established: Lamb v Moss (1983) 76 FLR 296 at 312; Seymour v Attorney-General for the Commonwealth (1984) 4 FCR 498 and Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 338. Even if it were properly open to this Court to make the factual inquiries urged on it by the applicants, I would, in the exercise of this discretion, decline to do that here.
14 What is sought to be reviewed is a decision refusing summary dismissal of an opposition. Such a decision, while no doubt a decision to which the ADJR Act applies, is not determinative of the rights of either of the parties to the proceeding before the delegate. Notwithstanding the dismissal, the applicant is free to pursue its claim for the extension of time sought in the final hearing provided for by reg 5.12. The applicants have full opportunity in the final hearing to which they are entitled to pursue all the arguments they wish to raise against the sustainability of the notice of opposition, including those they have raised for the first time in this Court. Even if the continuing pendency before the Commissioner of the applicants' claim for the extension of time does not enliven the special discretion conferred on the Court by s 10(2)(b) the ADJR Act, I consider that the policy considerations underlying that provision and which were referred to in Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34 are of relevance in the circumstances of this case to the exercise of the more general discretion conferred on this Court by s 16(1) the ADJR Act. There is no reviewable error in the decision made on the only issues on which the applicants relied to seek summary dismissal by the delegate. There should be no encouragement to an applicant for summary determination in proceedings of the kind provided for by reg 5.5 to treat it merely as a step that has to be taken, without any need for careful thought about the arguments that can be advanced, before presentation of that party's full case in an application to review the delegate's decision refusing summary relief. These considerations are sufficient to justify the exercise of the general discretion to refuse relief without there being an investigation by this Court of the new grounds of challenge to the delegate's decision which would involve factual inquiry and which were raised by the applicant for the first time in this Court.
15 Different considerations might arise if the delegate could be shown to have made a decision infected with an error of law fundamental to the sustainability of the second respondent's opposition: that might well justify the grant of review under the Patents Act even though the delegate had not been required to consider the point and even though the decision in question was only one refusing summary relief.
16 One such point is said to be raised by the applicants in the proceedings before me. They contend that under the Patents Act and Regulations in force at the relevant time, ie, prior to the 1998 amendments, the delegate was bound in law to dismiss the opposition. The submission is that s 227(4) applies where the fee payable is a continuation fee pursuant to s 227(1) and reg 22.2(1); it was said to follow from this that the delegate was bound to dismiss the second respondent's opposition. But a continuation fee is not payable in respect of the doing of any act by any person other than the Commissioner, nor is it a fee payable in respect of the filing of a document: it is merely the fee which a patent applicant must pay from time to time during the pendency of the application to prevent s 142(2)(d) operating to extinguish the application. That s 227(4) did not apply to the payment of continuation fees is confirmed by s 227(5), to which s 227(4) is expressed to be subject, and reg 22.1(3), which govern how the Commissioner is to give a notification that will be sufficient for the purposes of s 227(5): the Commissioner can prevent s 227(4) operating in cases to which it applies by giving a notice of the non-payment of the fee within seven days after the filing of a document or the doing of the act for which the fee is payable. So far as continuation fees are concerned, however, there is no document to be filed nor any act to be done by anyone separate from the act of paying the fee itself. Section 227(4) is confined, so far as fees payable in respect of the filing of documents are concerned, to fees of the kind prescribed by Item 1 in Column 1 of Pt 2 of Sch 7 to the Regulations and, so far as fees payable in respect of the doing of acts by persons other than the Commissioner are concerned, to fees of the kind prescribed in Item 13 in Column 1 of that Schedule.
17 In the course of argument, a question was also raised as to whether there was not apparent, on the face of the decision, an error of law vitiating it in so far as the delegate indicated that he dealt with the case on the basis that the continuation fee which the applicant had failed to pay was due on the anniversary of the filing of the parent application, when instead, reg 13.3(1), s 65(b) and reg 6.3(f) together operate to make the continuation fee payable from what may be a different date, viz, the date of filing of the complete specification in which the invention that is the subject of the divisional application was first disclosed. However, it is unnecessary to express any conclusion on the proper reading of these provisions: even if it is possible for the date of a divisional patent application to be, by force of reg 6.3(f), a date other than the date of filing of the parent patent application (with which, by force of s 29(4), a complete specification must be filed), it is perfectly possible that the invention the subject of divisional patent application 32815/95 was first disclosed when the complete specification accompanying the parent application 85236/91 was filed on 30 August 1991. The delegate's statement therefore may well be factually correct and involve no error of law. If the applicant wished to contend otherwise, it bore at least an evidentiary onus in that regard. It made no attempt either before the delegate or in this Court to discharge that onus.
18 Having refused to dismiss the notice of opposition summarily under reg 5.5, the delegate then made an order for costs in favour of the second respondent in reliance on s 210(d) and reg 22.8.
19 Section 210(d) empowers the Commissioner to award costs against a party to proceedings before the Commissioner. Regulation 22.8 establishes, among other things, a procedure for quantifying, by reference to scheduled items, costs, expenses and allowances and to taxation by an employee of the Commissioner in accordance with those scheduled items. Regulation 22.8(4) provides for the taxation to be subject to a review by the Commissioner.
20 The decision of the delegate to make an award of costs in favour of the second respondent was challenged by the applicant on a number of bases.
21 The proposition that no costs are provided for in respect of a request to dismiss a notice of opposition pursuant to s 5.5(1)(a) for the purposes of s 210(d), so no order for costs can be made, is manifestly untenable: the applicants themselves qualify this proposition by accepting that costs can be awarded in proceedings under reg 5.5(1)(a) in the event that they succeed in persuading the Commissioner to dismiss the second respondent's opposition to their application for extension of time. No rational explanation was proffered for why, this being so, the Commissioner's power to award costs did not extend to dismissal of a request for dismissal of an opposition. Power to dismiss the applicants' request is necessarily implicit in reg 5.5(3) in so far as it confers power not only to dismiss the opposition but also to refuse to do that.
22 Further, the filing of a notice of opposition to an application for extension of time to pay a continuation fee brought under s 223, the making of a request under reg 5.5(1)(a) for summary dismissal of that opposition and the making by the Commissioner of a determination on the request is a proceeding before the Commissioner within the meaning of that term in s 210(d). Section 210(d) confines the Commissioner's power with respect to costs to awarding costs "for the purposes of this Act" and to awarding costs "against a party to proceedings before the Commissioner". This suggests that costs can only be awarded under the section where there is a contest between at least two persons about whether the Commissioner should take action which the Patents Act authorises him to take.
23 The Patents Act and Regulations make provision for the exercise by the Commissioner, at the request of certain persons, of various powers with respect to patents only after hearing persons with an interest in opposing the exercise of those powers. See also s 216(1). I regard the expression "proceedings before the Commissioner" in s 210(d) as a reference to a matter comprising a determination by the Commissioner with respect to the exercise or non-exercise of a power conferred on him by the Patents Act which he is permitted to make only after hearing the persons with opposing interests in the exercise of the power.
24 The contest between the second respondent in opposing the grant of an extension of time under the Patents Act sought by the applicant, which is regulated by Ch 5 of the Patents Regulations and is resolved by the decision of the Commissioner's delegate, in my opinion, comprises "proceedings before the Commissioner" within the meaning of that term in s 210(d). Support for this view is also provided by reg 5.10(1)(a), which applies to "proceedings to which this Chapter applies", ie, the matters in reg 5.1, and which include the determination by the Commissioner in respect of a notice of opposition to an application for extension of time: see reg 5.1(a)(iv).
25 The applicants finally contend that the costs power in s 210(d) is beyond the legislative power of the Commonwealth as an impermissible conferral of judicial power upon the Commissioner. The Commonwealth appeared on the hearing by the Solicitor-General and junior counsel to contest this proposition.
26 I reject the applicants' contention.
27 In Brandy v Human Rights and Equal Opportunity Commission (1995) 183 CLR 245, it was said at 267: