Case: Titan Mining &amp; Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73
Outcome: followed
I have before me the following exhibits to the affidavit of Douglas Charles Carter, sworn 21 April 2006: (a) the patent application dated 12 March 1998; (b) the advertising of the acceptance of the application on 9 December 1999; (c) the notice of opposition dated 7 March 2000; and (d) the decision of the delegate of the Commissioner of Patents dated 12 December 2002. These are the requisite documents to found the jurisdiction of the Court in an appeal under s 60(4): see Titan Mining &amp; Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 (' Titan' ) at 75 per McLelland J. 3 The patent application in issue is entitled 'Ruminal Bolus for Electronic Identification of a Ruminant'. The specification relates to a bolus or large pill which is to be used in identifying ruminant animals. The device comprises a solid body composed of aluminium oxide which encloses electronic transmitting components. It is designed to be swallowed by the animal so that electro-magnetic data can be transmitted and then used for tracking and other management purposes. 4 The original respondent in the appeal, Aleis International Pty Ltd ('Aleis'), did not appear at the hearing. By affidavit sworn 13 March 2006, Mr Ian David Hughes, a partner of Deacons, the solicitors for Aleis, deposed that he had been instructed that Aleis wished to withdraw its appearance and take no further part in the appeal. Aleis instructed Deacons to file a notice seeking leave to do so. Mr Hughes also deposed that he held instructions to institute revocation proceedings in respect of any patent that might be granted to the appellant as the result of a successful appeal. Those revocation proceedings, according to Mr Hughes, are likely to raise various grounds of invalidity including fair basing, manner of manufacture and inventive step, prior use, prior publication and such other grounds as may be advised. 12 These submissions are made good by a number of authorities to which I was referred: Titan at 75-76; Caroma Sales Pty Ltd v Philmac Pty Ltd (1972) 46 ALJR 324 (' Caroma' ) at 324 per Walsh J; Brickwood Holdings Pty Ltd v ACI Operations Pty Ltd [1983] 2 VR 587 (' Brickwood' ) at 588-589 per King J. In Titan, McLelland J set out at 75-76 the approach that should be followed by the Court: 'Proceedings in the court on "appeal" from a decision of the Commissioner pursuant to s 60(5) are original proceedings and not an appeal in any technical sense. The duty of the Court in such proceedings is to exercise de novo the function of the Commissioner under s 60. The Court must exercise that function only on the basis of the evidence adduced in the proceedings before it. The material before the Commissioner or his delegate when he made the decision appealed from is not to be treated as being before the Court unless it is tendered and admitted in the proceedings before the Court (cf the Supreme Court Rules , Pt 81 , r 14). Evidence which was not before the Commissioner may also be admitted before the Court. The Court, exercising the function of the Commissioner, may take into account a ground of opposition specified in s 59 whether relied on by the opponent or not (see s 60(2)). This recognises that a decision under s 60 has a public aspect going beyond the mere resolution of a contest between the applicant and the opponent. This public aspect is further recognised by s 149 of the Act which contemplates active intervention by the Commissioner before the Court, with leave, in such proceedings as this. The non-appearance, or withdrawal, of the opponent provides an obvious occasion for such intervention where there are matters to which, in the public interest, the Commissioner desires to have the Court direct its attention. Where a ground of opposition depends on some fact being established, the onus of proof of that fact rests upon the party seeking to establish that ground of opposition, that is, the opponent or the Commissioner, as the case may be... Subject to its jurisdiction being established, the issue for the Court is, as it was for the Commissioner, whether the patent, if granted, would be clearly invalid on one of the relevant grounds. Unless invalidity on such a ground is clearly shown, the application should be allowed to proceed to a grant and the validity of the patent left to be determined in infringement or revocation proceedings.' 17 Mr McGowan has drawn my attention to the fact that the grounds available to the Court to refuse a patent application are all those available to an opponent, whether relied upon by the opponent or not: see s 60(3) of the Patents Act and Titan at 75. However, I agree with his submission that the grounds available can only be those which are supported by evidence or which do not require evidence. The only ground of opposition taken below was that of prior user, and no evidence capable of supporting that ground has been adduced before me. Nor has any cross-contention been filed that would raise any other issue. 18 I have also taken into account that s 20(1) of the Patents Act makes it clear that the grant of a patent is no guarantee of validity. Here, indeed, Mr Hughes' affidavit indicates that the original opponent intends to institute revocation proceedings. In those circumstances, there is, in my opinion, no reason why the Court need examine the merits of the opposition. That is particularly so where the Commissioner of Patents, who would normally raise public interest factors for the assistance of the Court, has indicated that it does not oppose the orders sought in the appeal. 19 Accordingly, I propose to make the orders sought by the appellant. There is no need, having regard to the authorities, for this Court to embark upon a consideration of the merits of an opposition that has not been pursued. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Young. Associate: Dated: 13 June 2006 Counsel for the Applicant: G McGowan SC Solicitor for the Applicant: Maddocks Counsel for the Respondent: The respondent did not appear Date of Hearing: 16 May 2006 Date of Judgment: 16 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/706.html