Australian Paper Manufacturers Ltd v Cil Inc

[1981] HCA 64

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(Judgment by: Stephen J)

Australian Paper Manufacturers Ltd
vCil Inc

Court:

Judges:
Stephen JMason J
Murphy J
Wilson J
Brennan J

Legislative References:
Patents Act 1952 - s 160(2); s 141
Patents Act 1903 - s 121

Case References:
A B Scaniainventor v Commissioner of Patents - (1981) 36 ALR 101
ARC Engineering Co Pty Ltd v Rendan Holdings Ltd - (1943) 68 CLR 221

Hearing date: 15 October 1981
Judgment date: 1 December 1981

Canberra

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Judgment by:
Stephen J

In this appeal the question is whether the power of the Commissioner of Patents to extend times for doing acts or taking steps, conferred by s 160(2) of the Patents Act 1952 (Cth), may be exercised in relation to the period of 12 months which is referred to in s 141(1) of the Act.

Section 160(2) is in itself an unremarkable provision, enabling the Commissioner to extend time in specified cases; it reads:--

(2) Where, by reason of --

(a)

an error or omission on the part of the person concerned or of his agent or attorney; or

(b)

circumstances beyond the control of the person concerned,

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.

Section 141(1) entitles a person who has already applied for a patent in an overseas Convention country to have the priority date of the claims in his Australian patent backdated to the date of his overseas application if he makes his Australian application within 12 months; it reads:--

141. (1) Where an application for protection in respect of an invention (in this Part referred to as 'the basic application') has been made in a Convention country and a person, being a person referred to in section 34, who--

(a)

is the applicant in the Convention country;

(b)

is the assignee of the applicant in the Convention country;

(c)

is the legal representative of the applicant in the Convention country or of his assignee; or

(d)

has the consent of the applicant in the Convention country or of a person who is his assignee or legal representative,

makes an application, or 2 or more of such persons make a joint application, for a standard patent or a petty patent within 12 months after the date on which the basic application was made, the priority date of a claim of the complete specification or of the claim of the petty patent specification, as the case may be, being a claim fairly based on matter disclosed in the basic application, is the date of making of the basic application.

Compliance with the 12 month time-limit in s 141(1) is no pre-requisite to a successful Convention application for an Australian patent; such an application may be made at any time after the making of the basic application in the overseas Convention country. But the important advantage of a backdated Australian priority date will be denied to an applicant who fails to observe the time-limit of 12 months.

In these features of s 141(1) lies the reason for the divergence of views which have led ultimately to the present appeal. Because the time-limit does not operate to debar late applicants but only deprives them of the advantage of an earlier priority date, it has been said that s 141(1) involves no requirement as to time such as the Commissioner can relieve against. As I have thus stated it, the proposition does less than justice either to the carefully reasoned judgment of King J in the Victorian Supreme Court or, for that matter, to the appellant's argument before us; but it does, I think, identify the substance of the ground upon which his Honour held s 160(2) to be inapplicable to s 141(1). An appeal taken to the Federal Court of Australia was successful; in allowing the appeal that court followed its then very recent decision in A B Scaniainventor v Commissioner of Patents (1981) 36 ALR 101 which it correctly regarded as decisive of the question. The opponent to registration now appeals to this court.

There are no authorities directly in point and although in argument reliance was naturally placed upon indications of legislative intent to be gleaned from other provisions of the Act it is to the words of the two sub-sections that attention must primarily be directed. The critical question is whether s 141(1) involves what s 160(2) describes as "an act or step in relation to an application for a patent ... required to be done or taken within a certain time". This question may be analysed as asking whether s 141(1) involves an act or step.

(a)

which is "in relation to an application for a patent",

(b)

which can be described as to be done or taken "within a certain time", and

(c)

which can be said to be "required to be done or taken" within that time.

Paragraph (a) must be answered "Yes". Part XVI of the Act, entitled "International Arrangements", contains ss 140 to 145 and makes provision for Convention applications for Australian patents. The procedure to be followed by applicants for such patents appears in s 143 and involves the lodging in the Patents Office of a written application together with other accompanying documents. It is this act or step of lodging documents in the Patents Office to which s 141(1) refers when it speaks of the making of an application for an Australian patent and that act or step is clearly enough one "in relation to an application for a patent". It therefore satisfies para (a) of my analysis. It was argued that there must exist a lodged application before there can be said to be any act or step "in relation to an application for a patent"; in other words, lodging of the application must precede any act or step to which s 160(2) can apply. But this is to give to "application" in s 160(2) an excessively narrow meaning. I regard it as referring not merely to the documentation called for by s 143 but rather to the whole process of seeking patent protection in Australia. The context supplied by s 160(2), where "application" appears in association with "proceedings under the Act", supports this view. On this view it follows that the very first act by way of application for a patent will itself be an "act or step in relation to an application" within the meaning of s 160(2).

Paragraph (b) must also be answered "Yes"; the act or step of making formal application for a patent is one which, if it is to fall within s 141(1), must be done or taken "within 12 months after" the making of the basic application overseas.

There remains para (c); is the act or step of making formal application one which is, by s 141(1), "required to be done or taken" within 12 months? The answer to this must also, I think, be "Yes". It is a condition precedent to the benefit which the sub-section confers that the application must be made within the time-limit which it imposes. This is a requirement of the sub-section and may accurately be described as being "required" by it. Whenever the doing of some act is linked with a period within which it is to be done it can with perfect accuracy be described as being required to be done within that period; the particular consequence attaching to a failure to do the act within the specified period is irrelevant to the aptness and propriety of the use of the word "required" to link and explain the connexion between the act and the time-limit. Legislation may provide that an act may only be done, if at all, within some prescribed period, the doing of it later being either prohibited or being declared to be ineffective and a nullity; or again, where the provision in question confers a benefit, the doing of the act within the period may be a condition of obtaining the benefit. But in either case the word "required" will aptly describe the nature of the link between the doing of the act and the time for the doing of it. In the case of provisions of a quite different nature, prohibiting the doing of a particular act within a given time, the concept of affirmative requirements may be inapt; but so long as the provision is either permissive of the doing of an act or else confers a benefit or right as a result of doing it, being in either case linked with a period within which it is to be done, "required" can aptly be used.

A somewhat different approach to the question posed by para (c) of my analysis calls for the same affirmative answer to that question. If the seeking and obtaining of the advantage offered to Convention applicants by s 141(1) is regarded as in itself a "step in relation to an application for a patent", which is at least an arguable view, then the fact that timeous application is a pre-condition of the obtaining of the advantage indicates that it is indeed a step "required to be done or taken within a certain time" within the meaning of s 160(2).

However, analysing it as I have, s 141(1) does as a matter of language involve the very situation for which s 160(2) legislates; it provides for an act or step, the initial making of formal application for an Australian patent, which relates to an application for a patent and which may properly be described as required to be done or taken within a certain time, in this instance within 12 months. In those circumstances it would require quite compelling contextual or other considerations for s 160(2) nevertheless to be held inapplicable to s 141(1). Despite the attractive arguments of counsel for the appellant, no such consideration seems to me to exist.

I have already, in the course of considering the meaning of s 160(2), dealt with two of the principal submissions urged on the appellant's behalf: that an act can only be said to be "required" to be done within a particular time if, on the expiration of that time, it can no longer be done; and that application must first be made for a patent before s 160(2) can begin to apply, the initial making of the application therefore not itself answering the description of an act or step "in relation to an application". The appellant also submitted that s 160(2) could only be made to apply to s 141(1) if some words such as "or within such further time as the Commissioner may allow under s 160" were to be read into it. However, my analysis of s 160(2) in its application to other provisions of the Act, including s 141(1), involves no reading of additional words into s 141(1) in order to attract the effective operation of s 160(2). Then, it was said that to apply it to s 141(1) involved a considerable departure from the ordinary meaning of words; however, once "required" is perceived as apt to describe the case of conduct which is made a pre-condition to the obtaining of a right or benefit, s 160(2) will, on its face and without any distortion of language, readily and quite naturally apply to s 141(1).

It was also submitted that if, because of the existence of ambiguity, it became appropriate to have regard to the terms of the Paris Convention of 1883, its terms supported the appellant's interpretation of s 160(2). I see no such ambiguity as would make it necessary to have recourse to that Convention as an aid to interpretation. However, had I taken an opposite view, I would in any event, like the members of the Federal Court, have derived little assistance from the terms of the Convention.

Although, as I have said, there is no direct authority upon the interaction of s 160(2) with s 141(1), the case of ARC Engineering Co Pty Ltd v Rendan Holdings Ltd (1943) 68 CLR 221, relied upon by the respondent, does cast some light on the point in issue. That case involved a Convention application made pursuant to s 121 of the Patents Act 1903, which was in substantially different form to the present s 141(1). In the course of his judgment Latham CJ, with whose judgment the other members of the court agreed, adopted what had been said by Sir John Simon in Re Coutant (1928) 48 RPC 1 as reflecting the legislative intent involved in the enactment of s 121. Although expressed in different terms, s 121, like the present s 141(1), was concerned with the backdating of the priority date of Australian applications based upon prior overseas applications. The legislative intent was said to be that an applicant who had made prior applications in a foreign country should be put "in the same position as though he had applied in this country by an identical application at the same date", a foreign applicant receiving the same treatment when "applying under the International Convention as he would have obtained if he had made a simultaneous and identical application here" (at p 225). Despite different wording, the general legislative intent seems to me to have remained constant and to now animate s 141(1); it is best given effect in the present case by treating s 160(2) as applicable to s 141(1) just as it is applicable to other sections of the Act relating to purely domestic applications.

I would dismiss this appeal.