Australian Paper Manufacturers Ltd v Cil Inc

[1981] HCA 64

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(Decision by: Brennan J)

Australian Paper Manufacturers Ltd
vCil Inc

Court:

Judges: Stephen J
Mason 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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Decision by:
Brennan J

Section 141 of the Patents Act 1952 (Cth) confers a particular right of privilege upon an applicant who makes an application for a standard patent or a petty patent in accordance with the conditions prescribed by the section. When an application is made in accordance with those conditions, the priority date of a claim of the complete specification or of the claim of the petty patent specification is not the priority date ascertained by reference to ss 45 or 45 A, but the date of making an application for protection of the relevant invention in a Convention country (the basic application).

One of the conditions prescribed for making a Convention application under s 141(1) is that the application be made "within 12 months after the date on which the basic application was made". The question is whether the time specified by s 141(1) can be extended by the Commissioner in exercise of the powers reposed in him by s 160(2). The answer to that question turns on whether the making of a Convention application -- for that is the act in reference to which the time limit is specified -- is "an act or step in relation to an application for a patent ... required to be done or taken within a certain time". I would give a negative answer to that question.

Section 160(2) relates to a requirement that an act be done or a step be taken, where the requirement is to be fulfilled within a certain time. Before s 160(2) applies, there must be an act which is required to be done or a step which is required to be taken and a time specified within which the act is to be done or the step is to be taken. If the sub-section applies, the power conferred by it is to extend the time for doing the required act or taking the required step.

An act is required to be done if the omission to do the act attracts a liability or results in the loss or forfeiture of some right or privilege. If the omission to do the act attracts no liability but merely loses an opportunity of gaining a right or privilege, I find it difficult to predicate of the act that it is "required to be done": the doing of the act in such a case is an exercise by the actor of his entitlement to seek the right or privilege, not a fulfilment of a requirement.

A requirement to do an act connotes a person who is required to do it. A person who will incur a liability or who will lose or forfeit a right or privilege if he omits to do the act is the person required to do the act. But where the statute entitles any of a number of persons to do an act (in this case, to make an application under s 141) and thereby gain a right or privilege (in this case, to secure a priority date which is earlier than the date of making the application) none of those persons can be said to be required to do the act. Their respective rights, privileges and liabilities are unaffected by an omission to do the act within the time specified, though an opportunity to gain a right or privelege is lost by the omission.

There is, of course, a sense in which it may be said that a person who wishes to make a Convention application is required to make it within 12 months after the date on which the basic application was made. Used in that sense, the requirement does not relate to the making of the application; it relates only to the time within which a Convention application is to be made to comply with the conditions imposed by s 141. But the requirement to which s 160(2) refers is a requirement with respect to both the act to be done (or step to be taken) and the time within which the act is to be done (or step is to be taken). I do not construe the sub-section as referring to a requirement in respect of time for doing an act or taking a step which is not itself required to be done or taken. As s 141 does not require an application to be made, either within a certain time or at all, I do not find in s 160(2) a power to extend the time for the making of a Convention application.

When an application for a patent has been made, whether under s 141 or otherwise, an applicant acquires a right to have the procedure prescribed by the Act and Regulations followed and his application granted or refused, subject to his doing the acts and taking the steps required of him. Where an omission to do an act or take a step would result in the lapsing of an application (as, for example, pursuant to s 41(2)) it is right to say that the applicant is required to do the act or take the step, but that requirement is imposed in reference to the preservation of rights acquired under the Act. But s 141 confers no right or privilege before an application is made in accordance with its terms.

In my judgment, therefore, the provisions of s 160(2) are not capable of being applied to extend the time referred to in s 141 for making a Convention application, and King J was right so to answer the question of law raised as a preliminary question in the proceedings before him. Accordingly I would allow the appeal from the order of the Federal Court setting aside the order of the Supreme Court of Victoria, and restore the order of the Supreme Court of Victoria, with costs.