Case: Brickwood Holdings Pty Ltd v ACI Operations Pty Ltd [1983] 2 VR 587
Outcome: followed
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.' 14 In Brickwood, King J had before him a patent appeal in which the opponent did not appear and had indicated it would withdraw its opposition, and the Commissioner indicated he did not intend to take any active role in the matter. King J allowed the appeal and ordered that the patent application proceed to grant. His Honour said at 588-589: '[a]s the burden of proving to the Court that no valid patent could issue from the patent application was upon the respondent, the appellant was under no duty before the Court to ventilate the Commissioner's reasons for his decision, or to put before the court any of the evidence put by the parties before the Commissioner. Thus, in view of the respondent's withdrawal and the attitude of the appellant, the Court had before it an opposition unsupported by any evidence or opponent. This was, I think, a basis for allowing the appeal. In the absence of intervention by the Commissioner, there was then no way in which the issues raised in the opposition proceedings could be put before the Court, and the Court had before it an accepted application which it was proper to require the Commissioner to grant. In my view, the Commissioner's expressed attitude of passivity justified my making such an order. I do not think that this view is inconsistent with the judgment of Walsh, J. in Caroma Sales Pty Ltd v Philmac Pty Ltd (1972), 46 ALJR 324, in which case the appellant adduced affidavit evidence and called oral evidence on a patent appeal hearing at which neither the respondent nor the Commissioner appeared. It is to be distinguished from the present case in at least two respects. In the first place, the appellant, which was, as here, the patent applicant, voluntarily proceeded with the hearing... The question whether it would have needed to proceed with the hearing, if it had not wished to seek leave to amend, was not raised. In the second place, the respondent did not consent, either expressly or by implication, to the appellant's course of action. All that it did was abstain from appearing. I think therefore that in the circumstances, the orders I have made were justified.'