Interim decisions in opposition proceedings are final on the issues determined, with appeal under s 60(5) being the only remedy available; the Commissioner has no power to order a re-hearing.
Later decisions that cite R v Smith; Ex parte Mole Engineering Pty Ltd
Decisions cited by R v Smith; Ex parte Mole Engineering Pty Ltd
THE QUEEN v. SMITH; Ex parte MOLE ENGINEERING PTY. LTD. [1981] HCA 25; (1981) 147 CLR 340
Patents
High Court of Australia
Gibbs C.J.(1), Mason(2), Murphy(3), Aickin(4) and Wilson(5) JJ.
CATCHWORDS
Patents - Application - Opposition - Hearing by Acting Deputy Commissioner - Interim decision that specification defective - Leave to amend specification - Applications for amendments - Retirement of hearing officer - Hearing of opposed amendment applications by different officer - Application for rehearing of grounds of opposition to unamended application - Whether competent - Patents Act 1951 (Cth), ss. 6 "The Commissioner", 10(2), 11, 59, 60 (5), 77, 78.
HEARING
1980, October 8; 1981, June 2. 2:6:1981DECISION
1981, June 2.MASON J. This is an application to make absolute an order nisi for prohibition made by Aickin J. prohibiting the Commissioner of Patents from re-hearing an application by Mobile Drilling Co. Inc. ("Mobile") for Australian Patent No. 451, 718 entitled "Drilling Apparatus". (at p342)
2. Notice of opposition to the application for a patent was lodged by the
prosecutor, Mole Engineering Pty. Ltd ("Mole"). A hearing
into the grounds of
opposition was conducted by Mr. P. F. Kildea, Acting Deputy Commissioner of
Patents. On 3 August 1977 he gave
a decision which was entitled "INTERIM
DECISION OF ACTING DEPUTY COMMISSIONER OF PATENTS". The last paragraph of the
decision was
expressed in these terms:
"I have found that the specification does not comply with the requirements
of s. 40 of the Act and that the invention claimed by
claim 1 was, at the
priority date, obvious. However, I believe that the specification can be
amended to claim novel and non-obvious
matter. Accordingly, I will allow the
applicant sixty days from the date of this decision within which to lodge a
request to amend
the specification". (at p343)
3. Pursuant to the suggestion made in this paragraph Mobile made applications
for amendments of the specification. The first application
was lodged on 27
September 1977; the second application was lodged on 4 October 1977. The
amendments related to claim 1. They were
designed to eliminate the aspects of
the claim which Mr. Kildea had relied upon to support his adverse findings.
Mole lodged notice
of opposition to the first amendment sought on the grounds
set forth in sub-ss. (1) and (4) of s. 78 of the Patents Act 1952, as
amended.
(at p343)
4. On 13 March 1980 Messrs. Spruson & Ferguson, patent attorneys for Mobile, wrote to the Commissioner, seeking a rehearing of the grounds of opposition to the unamended application before it proceeded with the amendments. In support of the request the patent attorneys urged that Mr. Kildea, who had retired, would not be available to hear the proceedings consequent upon the amendments, that his decision on the issue of obviousness in relation to claim 1 was wrong and that there were precedents for the re-hearing sought. (at p343)
5. On 25 March 1980 Mr. J. L. Roveta, the principal supervising examiner of the Hearings Section, replied to the letter of 13 March 1980, enclosing his decision on the hearing into the opposition to the amendments which had been sought. His decision was in favour of Mobile. However, in his letter Mr. Roveta stated that after consultation with the Commissioner, the Commissioner had agreed that Mobile should withdraw the amendments immediately, notify the opponents of that withdrawal, whereupon the Commissioner would direct that the application was to be re-heard in view of the situation that the original hearing officer would not be available to finalize the s. 59 opposition. (at p343)
6. On 28 March 1980 Mobile withdrew its amendments and sought a re-hearing of the original s. 59 opposition. Mole then objected to the course which the Commissioner proposed to follow and obtained the order nisi. The grounds on which the order nisi was granted are: (1) that s. 60 of the Act does not permit the Commissioner to grant a re-hearing after reaching an interim decision on a notice of opposition given under s. 59 when leave to amend the specification has been granted; (2) that s. 83 of the Act does not give the Commissioner power, after determining that an amendment should be allowed, to permit it to be withdrawn and to reach a further decision after re-hearing in respect of the original specification. Mole sought to argue a third ground which was expressed in these terms: (3) that nothing in the Act permits the Commissioner to grant a rehearing or reach a further decision, after reaching a decision under s. 60 on a notice of opposition given under s. 59, whether that initial decision is styled "interim" or not. (at p344)
7. Section 59 sets out the grounds on which the Attorney-General or a person
interested may, at any time within three months after
the date of the
advertisement of the acceptance of an application and complete specification,
or within such further period, not
exceeding three months, as the Commissioner
allows by notice in writing lodged at the Patents Office, oppose the grant of
a patent.
Section 60 (1) provides that where notice of opposition is given,
the opponent shall serve a copy of the notice on the applicant,
"and the
Commissioner shall, after hearing the applicant and the opponent, if desirous
of being heard, decide the case". Section
60 (2) provides:
"In so deciding the case the Commissioner may take into account a ground of
opposition specified in the last preceding section
whether relied upon by the
opponent or not."
The applicant and an opponent who in the opinion of the Appeal Tribunal is
entitled to be heard in opposition to the grant, may appeal
to that Tribunal
from a decision of the Commissioner under the section (s. 60 (5)). (at p344)
8. These provisions need to be read with the provisions in Pt VIII relating to the amendment of specifications. An applicant or patentee may by request in writing lodged at the Patents Office seek leave to amend his complete specification (s. 77 (1)). Section 78 provides that certain amendments are not allowable. Section 79 provides that an examiner shall ascertain and report whether the request for leave to amend is as prescribed and whether the amendment is allowable. The Commissioner may refuse the request for leave to amend (s. 81 (1)). An appeal lies to the Appeal Tribunal from such a refusal (s. 81 (2)). If the request is not refused, the Commissioner shall, unless the complete specification has not become open to public inspection, advertise particulars of the request in the Official Journal (s. 81 (3)). The Attorney-General or a person interested may, at any time within three months after the date of the advertisement, or within such further period not exceeding three months as the Commissioner allows, give notice to the Commissioner of opposition to the granting of the request on the ground that the amendment is not allowable under s. 78 (s. 82). The Commissioner shall, after hearing the person making the request and a person who has given notice of opposition, determine whether, and subject to what conditions (if any), the amendment ought to be allowed (s. 83 (1)). The applicant or the patentee and an opponent who in the opinion of the Appeal Tribunal is entitled to be heard in opposition to the request, may appeal to the Tribunal from a decision of the Commissioner under s. 83 (s. 84). (at p345)
9. Mole's case is that the decision made by Mr Kildea in opposition proceedings, under Pt V, though styled an "Interim Decision", was in truth a final decision. It was interim only in the sense that the applicant was given an opportunity to amend. Accordingly, there was no provision in the Act authorizing a re-hearing. (at p345)
10. On the other hand, Mobile contends that the practice of the Commissioner,
approved by the Court, is to the contrary and that
it is permissible for the
Commissioner to re-hear or to direct a rehearing of opposition proceedings.
Mobile asserts that the practice
is supported by two decisions - Ethyl Corp.
v. California Research Corp. (1970) Official Journal of Patents, Trade Marks
and Designs,
vol. 40, p. 562 and Sly v. United Development Corporation Pty.
Ltd. (No. 1) Official Journal of Patents, Trade Marks and Designs,
(1963) vol.
33, p. 1454. In Ethyl the officer who heard the opposition proceedings under
s. 59 died and was unable to give a decision.
The proceedings were completed
by another officer with the consent of the parties. In Sly the Deputy
Commissioner of Patents gave
an "Interim Decision" in opposition proceedings
allowing the applicant an opportunity to request an amendment. The amendment
was
applied for and opposed. The Deputy Commissioner died. The Commissioner
concluded that the opposition proceedings should be reheard.
This was done
with the consent of the parties. Although on appeal from the later decision
Sly v. United Development Corporation Pty.
Ltd. [1962] HCA 16; (1962) 106 CLR 633, at p 637
Menzies J. made no express comment on this procedure, he said:
"Before me, as before the Deputy Commissioner, it was urged in opposition
that even if the amendment fell within s. 71 and was
not prohibited by s. 78
and was not otherwise open to objection on its merit, the application should
nevertheless be refused because
in an earlier decision between the parties a
similar application had been refused and an appeal to this Court had been
allowed to
lapse. I agree with the Deputy Commissioner in thinking that the
earlier decision - which related to a number of amendments - does
not preclude
the allowing of the amendment now sought . . ." (at p346)
11. To appreciate the significance of this comment it is necessary to set out
the relevant part of the decision of the Deputy Commissioner
which is reported
in the Official Journal, vol. 33, at p. 1461. There the Deputy Commissioner
said:
"At the outset, Mr. Franki raised the point that the question as to whether
the amendment was allowable or not had already been
considered and decided
against the applicant by Mr. Petersson as the then Deputy Commissioner in his
decision dated 17th January
1958. Mr. Franki pointed out that the present
proposal was to amend claim 3 so as to make it identical with what was
proposed to
be claim 1 in the situation before Mr. Petersson. However, there
the similarity between the two situations ends, as Mr. Petersson
was
confronted with extensive amendments to the body of the specification
including the insertion of an amended consistory statement,
and the deletion
of the first two claims altogether. Conclusions reached by him were made
having regard to major amendments elsewhere
in the specification and did not
consitute a refusal to allow the form, per se, of claim 1."
In my opinion neither the Deputy Commissioner nor Menzies J. regarded the
decision of Mr. Petersson as involving a rejection of the
form of claim 1, per
se. (at p346)
12. Accordingly, neither Ethyl (1970) Official Journal, vol. 40, p. 562 nor Sly (1963) Official Journal, vol. 33, p. 1454 provides support for the practice contended for by Mobile. Each case rests on a decision made by the Commissioner which commanded the assent of the parties. (at p346)
13. Mobile then submits that the Act on its true interpretation enables the Commissioner to re-hear opposition proceedings unless and until a final decision is made by way of refusing or granting the application. It seeks to support this interpretation by contending that as it is the duty of the Commissioner to decide the case under s. 60, he has the power to supervise a hearing undertaken by another officer, even to the extent of re-hearing a particular proceeding at any time before an application for a patent is refused or granted and substituting his decision for that of the officer. (at p346)
14. The argument is based on s. 10 (1) and (2) of the Act. They provide:
"(1) There shall be a Commissioner of Patents, who shall, under the
Attorney-General, have the chief control of the Patent Office.
(2) There shall be a Deputy Commissioner of Patents, who shall, subject to
the control of the Commissioner of Patents, have all
the powers and functions
of the Commissioner of Patents under this Act, other than the powers of the
Commissioner under the next
succeeding section." (at p347)
15. The argument proceeds on the footing that sub-s. (2) enables the
Commissioner to control the Deputy in the exercise by the Deputy
of the powers
and functions of the Commissioner. I do not agree. The expression "subject to
the control of the Commissioner" relates
to the Deputy Commissioner "having",
as distinct from "exercising" the powers in question. It enables the
Commissioner to exclude
certain powers and functions from those generally
conferred by the subsection on the Deputy. (at p347)
16. Another relevant provision is the definition of "the Commissioner" in s. 6. Subject to any contrary intention this expression means "the Commissioner of Patents or the Deputy Commissioner of Patents holding office under this Act and includes an Assistant Commissioner of Patents, or a Supervising Examiner of Patents, exercising powers or functions delegated to him under this Act". (at p347)
17. This definition needs to be read together with the power of delegation
conferred on the Commissioner by s. 11. This section
provides:
"(1) The Commissioner of Patents may, in relation to a particular matter or
class of matters, by writing under his hand, delegate
all or any of his powers
or functions under this Act (except this power of delegation) to an Assistant
Commissioner of Patents, or
to a Supervising Examiner of Patents, so that the
delegated powers and functions may be exercised by the delegate with respect
to
the matter or class of matters specified in the instrument of delegation.
(2) A delegation under this section is revocable at will and no delegation
prevents the exercise of a power or function by the
Commissioner of Patents or
by the Deputy Commissioner of Patents." (at p347)
18. The significance of the definition is that when it is read in conjunction
with s. 60, it is for the Deputy Commissioner or an
Assistant Deputy
Commissioner or Supervising Examiner to whom the function has been delegated
under s. 11 (1) to "decide the case".
This responsibility is quite
inconsistent with the notion that the Commissioner could give directions to
the Deputy or to the delegate
as to how the case should be decided. The
Commissioner can, notwithstanding a delegation, hear and decide a case under
s. 60 (s.
11 (2)). But clearly once a decision has been made under s. 60 the
Commissioner cannot re-hear the proceeding and arrive at a different
conclusion. If he could do so, an impossible situation would arise, with no
statutory provision to indicate which of the two conflicting
decisions was to
prevail. (at p348)
19. Section 60 speaks of the Commissioner having to "decide" and of a "decision". It contemplates that there will be a hearing and a decision, a decision that is subject to appeal under s. 60 (5). It certainly does not contemplate that there will be two or more conflicting decisions. Under sub-s. (5) an appeal lies to the Appeal Tribunal from a decision given under s. 60 (1). It would make little sense, if notwithstanding this right of appeal, the Commissioner could re-hear an application and give a decision different from that which was the subject of the appeal. Considerations of expedition and finality tell very heavily against the interpretation that Mobile seeks to place on the section. (at p348)
20. It will be noted that s. 60 (5) enables an appeal to be brought from "a decision", rather than "the decision", of the Commissioner. The sub-section is quite consistent with the view that an appeal lies from a decision of the king givey by Mr. Kildea in the present case, one which upholds grounds of opposition but does not refuse the application because the objections may be overcome by amendment. The peculiarity of the statutory procedure is that Pt VIII provides for the consideration of amendments after the initial opposition proceedings have been heard and decided. What is more, Pt VIII provides for the lodging of notice of opposition to amendments and for a hearing of that opposition and a decision upon it with a consequent right of appeal. The Act therefore contemplates that there may be two decisions, one under Pt V and another under Pt VIII, each finally deciding an issue arising from a notice of opposition and that there will be a right of appeal from each decision. (at p348)
21. It is a natural consequence of the procedures under Pt V and Pt VIII that an officer who upholds objections to the grant of an application under Pt V will refrain from refusing the application where it appears that the objections may be cured by amendment. Then it is a practical and sensible course to allow the applicant time within which to lodge a request to amend the specification, as Mr. Kildea did in this instance. But his decision was nonetheless a final decision on the original unamended application - there was nothing provisional or tentative about the finding on the grounds of objection. It dealt with all the issues arising on the notice of opposition so far as they were capable of final determination. (at p349)
22. This view is supported by the judgment of Fullagar J. in Broken Hill Proprietary Co. Ltd. v. American Can Co. [1980] VicRp 17; (1980) VR 143 . There two companies lodged notice of opposition to a patent application by the respondent. The grounds of opposition included obviousness, want of novelty and failure to comply with s. 40. The opposition was heard by an Assistant Commissioner of Patents. The Commissioner delivered an "Interim Decision" holding that the complete specification did not comply with s. 40 in that the claims failed to sufficiently define the invention. However, he held that this defect could be overcome by relatively simple amendments which he identified with some particularity. He stated that the amendments, if applied for and allowed, would overcome all the grounds of objection. Fullagar J. held that, despite the description "Interim Decision" the Commissioner had actually decided as much of the opposition proceedings as was susceptible of decision at the time and had decided it once and for all. The effect of the decision was that the Commissioner had decided that the application would be refused unless the amendments were applied for and ultimately accepted. (at p349)
23. Fullagar J. said (1980) VR, at p 147 :
"First I notice that the right of appeal is given from 'a decision of the
Commissioner under this section'. In the result I find
that I do not need to
decide whether one should construe this expression in sub-s. (5) of s. 60 as
referring only to a decision of
the Commissioner whereby he does 'decide the
case' within the meaning of sub-s. (1). For the purposes of this case I shall
simply
assume that this is correct and that the expression in sub-s. (5)
refers only to some act whereby the Commissioner does 'decide the
case'. It is
in my opinion quite clear that the case which the Commissioner is bound by
statute ultimately to decide is the opposition
proceeding, but I see no reason
why the opposition proceeding should not be decided by several decisions
provided that each of them
can be said in a real sense to decide 'the case' as
presently constituted so far as that case is at the time susceptible of
present
decision." (at p349)
24. On four occasions Lloyd-Jacob J. has held that decisions styled "interim
decisions" upholding objections made in a notice of
opposition made in
opposition proceedings under s. 14 of the Patents Act 1949 (U.K.) (which is
not relevantly distinguishable from
ss. 59 and 60 of our Act) are final
decisions in the sense that they cannot be re-heard - see L. Oertling Ltd.'s
Application (1959)
RPC 148 ; Rose Bros. (Gainsborough) Ltd.'s Application
(Amendment) (1960) RPC 247 ; Klangfilm A.G.'s Application (1958) RPC 237 ;
E.
I. Du Ponte de Nemours Inc.'s Application (1962) RPC 228 . In Oertling (1959)
RPC, at p 148 , Lloyd-Jacob J. said:
"An interim decision, no less than a final decision, conclusively determines
the position of the ComptrollerGeneral in relation
to such matters as the
decision may specify. It is the means whereby the Comptroller notifies the
parties of his decision in relation
to so much of the dispute as is
susceptible of present determination and his decision also as to the manner in
which the remaining
matters in dispute may be dealt with. If, in relation to
any matter so decided, a party is not satisfied with the Comptroller-General's
ruling, his dissatisfiaction cannot become effective in expression unless and
until the ruling is reversed or modified on appeal."
(at p350)
25. Mobile relied on cases such as In the Matter of Robertson's Application
(1929) 47 RPC 215 and In re Davidson's Patents (1921)
1 Ch 69 which indicate
that under provisions such as s. 60 (5) an appeal would lie from an
interlocutory decision or a decision which
does not finally dispose of the
application. Assuming this to be so, it does not throw light on the question
now under consideration.
(at p350)
26. In the result I would make the order nisi for prohibition absolute. (at p350)
MURPHY J. I agree with Mason and Wilson JJ. Prohibition should issue. (at p350)
AICKIN J. I have had the advantage of reading the reasons for judgment prepared by my brother Mason and those prepared by my brother Wilson. I agree with their reasons and their conclusion and there is nothing I can usefully add. (at p350)
WILSON J. The prosecutor is the opponent to Australian Patent Application
No. 451,718 made by the respondent Mobile Drilling Co.
Inc. ("Mobile
Drilling"). Following the filing of a notice of opposition on 17 February 1975
a hearing was conducted by Mr. Kildea,
the then Acting Deputy Commissioner of
Patents, on 28 March 1977. On 3 August 1977, Mr. Kildea issued to the parties
a document styled
"Interim Decision of the Acting Deputy Commissioner of
Patents". The decision was to the effect that one of the claims failed for
obviousness. In accordance with usual Patent Office practice Mr. Kildea
indicated that if the claim and specification was amended
in certain respects
which he enumerated, the Patent Office would be likely to give favourable
consideration to a grant in the form
as amended. Thereafter the respondent
lodged the suggested amendments with the Patent Office. Again the prosecutor
opposed the grant
of a patent. A hearing of the opposition was conducted by
Mr. J. L. Roveta, Principal Supervising Examiner, Hearing Section, of the
Patents Office on 17 October 1979. Before Mr. Roveta's decision was published,
the patent attorneys for Mobile Drilling wrote to
the Commissioner of Patents
on 13 March 1980 seeking a reconsideration of the original application without
the amendments. A reason
for seeking a re-hearing of the original claim
appears to have been the fact that Mr. Kildea was no longer with the Patents
Office
and would not be the officer responsible for considering the s. 77
amendment application. The following extract from the letter of
the patent
attorneys, however, makes it clear that it was the merits of Mr. Kildea's
interim decision which it was sought to challenge.
"The gist of the original decision of Mr. Kildea's was to the effect that
claim 1 was obvious but that the remainder of the claims
of the application
were not obvious. The applicant desires to have a reconsideration effected by
the hearing officer now responsible
for this case of that decision of Mr.
Kildea's. The applicant is of the view that on the question of obviousness of
claim 1 of the
application there was a balance of evidence and that on the
basis of decided cases . . . Mr. Kildea's decision that claim 1 was obvious
is
insupportable."
On 25 March 1980, Mr. Roveta wrote to the patent attorneys for Mobile Drilling
enclosing his decision. That decision itself allowed
the amended patent
specification in respect of the claim. Mr. Roveta's letter further advised
that with respect to the request made
for a re-hearing,
". . . the Commissioner has been consulted and has agreed on the following
procedure:
(i) The decision is to be issued as is usual;
(ii) The amendments will not be allowed for a period of 28 days following the
date of issuance of the decision - this is the period
in which the opponent
could appeal;
(iii) You should withdraw the amendments officially immediately, before any
appeal is lodged, and obviously before the end of the
28 day period to which I
have referred above. You should send a copy of your notice of withdrawal to
the opponents;
(iv) Upon receipt of your notice of withdrawal, the Commissioner will
officially notify the opponents thereof, and direct that this
application is
to be reheard in view of the situation that the original hearing officer will
not be available to finalise the section
59 opposition;
(v) A suitable time and place for the rehearing will then be determined."
On 28 March 1980 by letter Mobile Drilling's attorneys formally withdrew the
s. 77 amendments in respect of claim one and requested
that the re-hearing of
the original s. 59 opposition be set down as soon as possible. On 5 August
1980 the prosecutor advised the
Commissioner of Patents of its objection to
the proposed rehearing. (at p352)
2. Before considering the prosecutor's submissions it is convenient to set
out the relevant provisions of the Patents Act 1952 as
amended.
"6. In this Act, unless contrary intention appears -
. . .
'the Commissioner' means the Commissioner of Patents or the Deputy
Commissioner of Patents holding office under this Act and includes
an
Assistant Commissioner of Patents, or a Supervising Examiner of Patents,
exercising powers or functions delegated to him under
this Act;
10. (1) There shall be a Commissioner of Patents, who shall, under the
Attorney-General, have the chief control of the Patent Office.
(2) There shall be a Deputy Commissioner of Patents, who shall, subject to
the control of the Commissioner of Patents, have all
the powers and functions
of the Commissioner of Patents under this Act, other than the powers of the
Commissioner under the next
succeeding section.
(3) Where, under this Act, the exercise of a power or function by the
Commissioner, or the operation of a provision of this Act,
is dependent upon
the opinion, belief or state of mind of the Commissioner in relation to a
matter, that power or function may be
exercised by the Deputy Commissioner of
Patents, or that provision may operate, as the case may be, upon the opinion,
belief or state
of mind of the Deputy Commissioner of Patents in relation to
that matter.
(4) There shall be one or more Assistant Commissioners of Patents.Patents as are necessary.
(5) There shall be so many Supervising Examiners of Patents and Examiners of
3. Mr. Heydon, who appeared on behalf of the prosecutor, submitted that s. 60
(5) grants a right of appeal to either the applicant
or opponent but that it
did not contain any power for a re-hearing by the Commissioner himself. It was
his submission that both in
Australia and the United Kingdom the practice was
for certain decisions of the Commissioner to be styled "interim decisions",
meaning
that they were "interim" in the sense that an opportunity would be
given to amend. In all other respects they were final. They decided
completely
the issues so far as the rejection of part of an application or a
specification was concerned. Mr. Heydon's second submission
was that even if
the decision of Mr. Kildea was "interim" in the sense that it was not a final
decision which pre-empted a re-hearing
of the matter, that nonetheless Mr.
Roveta's letter of 25 March 1980 enclosing his decision allowing the amendment
was a final decision
from which no re-hearing could be allowed. (at p354)
4. On the other hand, Mr. Campbell, for Mobile Drilling, submitted that Mr. Kildea's decision was an "interim" decision in the sense that it had no stamp of finality about it and given the fact that it had been made by the Acting Deputy Commissioner of Patents it was quite within the powers of the Commissioner (see s. 10 (2)) to exert his control over the decision of the Acting Deputy Commissioner and order a re-hearing of the initial opposition. (at p354)
5. Mr. Heydon relied on a series of decisions of the Patents Appeal Tribunal
in the United Kingdom, touching the status of an interim
decision. In L.
Oertling Ltd.'s Application (1959) RPC 148 there was a finding by the
Superintending Examiner, expressed as an interim
decision, that although
opposition to a certain patent succeeded on the grounds of prior user and
insufficient and unfair description,
sealing of the patent on the application
would nonetheless be considered if certain amendments were offered. The
opponent appealed.
Lloyd-Jacob J. said (1959) RPC, at pp 148-149 :
"In the course of the argument, it emerged that some practitioners feel
doubt and uncertainty when deciding how best to proceed
after an interim
decision is given. This should not continue. An interim decision, no less than
a final decision, conclusively determines
the position of the
Comptroller-General in relation to such matters as the decision may specify.
It is the means whereby the Comptroller
notifies the parties of his decision
in relation to so much of the dispute as is susceptible of present
determination and his decision
also as to the manner in which the remaining
matters in dispute may be dealt with. If, in relation to any matter so
decided, a party
is not satisfied with the Comptroller-General's ruling, his
dissatisfaction cannot become effective in expression unless and until
the
ruling is reversed or modified on appeal. Such party must therefore enter
notice of appeal in due ime if he desires to question
the propriety of a
ruling. The decision may contain a number of rulings, and the objector may
desire to adopt some and repudiate
others or possibly repudiate only one."
See also Klangfilm A.G.'s Application (1958) RPC 237, at p 245 . (at p355)
6. In Rose Bros. (Gainsborough) Ltd.'s Application (Amendment) (1960) RPC 247
, Lloyd-Jacob J. returned to the subject. He referred
to some earlier cases,
and continued (1960) RPC, at p 253 :
"In each specific attention had been directed to what I imagine is
thoroughly well known to all practitioners in this branch of
the law, that a
decision issued by an officer of the Comptroller-General, whatever the heading
of it, is what it expresses itself
to be, namely, a decision, and that, to the
extent that any findings are therein set out, those represent the view of the
Comptroller-General
upon which both parties to the proceedings must thereafter
proceed."
See also E. I. Du Pont de Nemours Inc.'s Application (1962) RPC 228 . (at
p355)
7. The position in England as expounded by Lloyd-Jacob J. in this series of cases is that, although a negative decision may be capable of salvation by amendment, that decision is final with respect to the issues which it determines. If a party wishes to challenge the merits of an interim decision he must do so by appeal. If he wishes to abide by the interim decision and nonetheless save the specification by complying with the amendments suggested in the interim decision then he must proceed to draft amendments which are consistent with the decision and submit the same. Having filed such amendments a decision will thereafter follow which itself is capable of appeal. But on such an appeal it will be too late to challenge the matters canvassed and decided in the interim decision. (at p356)
8. In Broken Hill Proprietary Co. Ltd. v. American Can Co. [1980] VicRp 17; (1980) VR 143
Fullagar J. in the Supreme Court of Victoria had occasion
to consider the
specific question whether an appeal under
s. 60 (5) of the Act lay from an
interim decision. In the course of his
judgment his Honour said (1980) VR, at
p 147 :
"It is in my opinion quite clear that the case which the Commissioner is
bound by statute ultimately to decide is the opposition
proceeding, but I see
no reason why the opposition proceeding should not be decided by several
decisions provided that each of them
can be said in a real sense to decide
'the case' as presently constituted so far as that case is at the time
susceptible of present
decision.
If the Commissioner decides so much of the opposition proceeding as is
susceptible of decision at the time, and at the same time
decides what things
may be done in the future conduct of the opposition proceedings, I am of
opinion that this constitutes 'a decision
of the Commissioner under this
section' within the meaning of sub-s. (5) on any view, because I think it is
indeed a deciding of
'the case' as it presently subsists as a matter or
proceeding capable of present resolution. It does in my view decide the case
so
far as the case is at that time fully constituted." (at p356)
9. Fullagar J. declined to confine s. 60 (5) to a "final" decision. He
referred to the decision of Lloyd-Jacob J. in L. Oertling
Ltd.'s Application
(1959) RPC 148 , saying (1980) VR, at p 149 :
"I respectfully agree with it and with the reasoning which I apprehend
underlies it, and I do not think that any differences in
language between s.
40 (sic) of the Patents Act 1949 (UK) on the one hand and s. 60 of the Patents
Act 1952 (Cth) on the other hand,
are differences of any significance for any
present purposes." (at p356)
10. Mr. Campbell submitted that the English decisions could be distinguished
because s. 14 of the Patents Act 1949 (U.K.) was different
from s. 60 (5) of
the Act. However, like Fullagar J., I do not think that there is any material
distinction between the provisions.
In my view it should be regarded as well
established that an appeal lies from an interim decision. (at p356)
11. But the real question for determination in this case is whether,
notwithstanding that there has been such a decision, there
remains a power in
the Commissioner to order that the application be re-heard. Mr. Campbell
relied principally upon the power of
the Commissioner pursuant to s. 10 (2) of
the Act to control a Deputy Commissioner in the exercise of the powers and
functions of
the Commissioner. He referred to a number of authorities to
support his contention that in ordering a re-hearing the Commissioner
was
doing no more than to exert his control under the Act. It was argued that in
Sly v. United Development Corporation Pty. Ltd.
[1962] HCA 16; (1962) 106 CLR 633 Menzies J.
approved the re-hearing of an interim decision. Menzies J. said (1962) 106
CLR, at
p 637 :
"Before me, as before the Deputy Commissioner, it was urged in opposition
that even if the amendment fell within s. 71 and was
not prohibited by s. 78
and was not otherwise open to objection on its merit, the application should
nevertheless be refused because
in an earlier decision between the parties a
similar application had been refused and an appeal to this Court had been
allowed to
lapse. I agree with the Deputy Commissioner in thinking that the
earlier decision - which related to a number of amendments - does
not preclude
the allowing of the amendment now sought and I need say no more about this
aspect of the case." (at p357)
12. At first glance these words may appear to provide some ground of support
for Mr. Campbell's proposition. However, they need
to be seen in the context
of the somewhat complicated history of the case. The original application for
a patent had been opposed.
By an interim decision the Deputy Commissioner gave
the applicant leave to amend the specification under s. 71. A request to amend
was subsequently lodged and once again a notice of opposition filed. At that
point the Deputy Commissioner who had made the interim
decision died and the
Deputy Commissioner succeeding him directed that the opposition to grant be
re-heard. The applicant proceeded
with the application to amend before the
opposition to grant was re-heard but the application was refused. An appeal to
the High
Court from that refusal was instituted but allowed to lapse. The
re-hearing of the original opposition then took place and by an
interim
decision dated 23rd January 1959 the Deputy Commissioner gave the applicant
sixty days in which to amend his application.
Thereafter an amendment was
submitted and once again opposed and on 23 August 1961 the Deputy Commissioner
refused to permit the
amendment, resulting in the appeal heard by Menzies J.
The amendment which was the subject of the appeal had been one of a large
group of amendments which had been refused in the earlier proceedings. In the
result, Menzies J. embarked on the hearing of an appeal,
and ultimately
allowed the amendment following a consideration of its merits, notwithstanding
that it had formed part of a large
group of amendments which had been rejected
in the earlier proceedings. The fact that there had been a re-hearing of the
original
application appears to have been accepted as a step in the history of
the matter, with no attention being given to the question of
the propriety of
such a step. On this view of the case, it offers no support for the
proposition advanced by the respondent. (at
p358)
13. A re-hearing was also granted by the Commissioner following the death of the hearing officer in the case Ethyl Corp. v. California Research Corp. (1970) Official Journal of Patents, Trade Marks and Designs, vol. 40, p. 562. However, such a course was only adopted after the advice of each party had been sought as to how the matter was to proceed and after each had expressed no objection to the matter being determined in this way. (at p358)
14. In my opinion the Commissioner has no authority, in the exercise of his powers under s. 10 (2), to order a re-hearing of an opposition to the grant of a patent following an interim decision. The control referred to therein is of an administrative nature, touching the over-all direction of the work of the Office, and in particular the allocation of work. It does not contemplate a right to interfere in the exercise by a Deputy Commissioner of the power, pursuant to s. 60, to "decide the case". In my opinion, specific words would be required to found a power to order a re-hearing. It would be a large and important power, the exercise of which would necessarily have the effect of removing, otherwise than by appeal, an effective and operative decision. The exercise of such a power would also be inexpendient in denying finality and causing added complexity in the administration of the Act. I can understand that there may be some administrative inconvenience if a Deputy Commissioner who has conducted opposition proceedings and published an interim decision dies or is otherwise unavailable to handle any subsequent developments, but the inherent finality of the decision ensures that, subject to appeal, it provides a firm base on which another officer can proceed in the exercise of the powers and functions of the Commissioner. (at p358)
15. In the present case, it is clear from the letter seeking a re-hearing that Mobile Drilling wished to contest the merits of the interim decision. But by choosing to proceed with the amendments which were proposed in that decision instead of launching an appeal Mobile Drilling affirmed it. (at p359)
16. Reference was made by Mr. Campbell to the case of Hargans v. Commissioner of Patents [1932] HCA 60; (1932) 48 CLR 609 , but in that case the Court was dealing with very different circumstances and different statutory provisions, and the decision does not assist the respondent. (at p359)
17. Having reached this decision it is not necessary for me to consider the secondary argument advanced by the prosecutor to the effect that the delivery of reasons by Mr. Roveta on 25 March 1980 allowing the amendments sought by Mobile Drilling constituted a final decision, thereby providing a further obstacle to the grant of a re-hearing of the original application. (at p359)
18. I would make absolute the order nisi for prohibition. (at p359)
ORDER
Order nisi for a writ of prohibition made absolute.Order that the respondent Mobile Drilling Co. Inc. pay the prosecutor's costs of the application, including reserved costs.