e : ~ \3| CATCHWORDS Appeal from Administrative Appeals Tribunal following appeal to the Tribunal from a decision of the Deputy Commissioner of Patents ~ Decision of Deputy Commissioner purporting to refuse to consider applications per s.160(2) and Regulation 7B of Patents Act 1952-69 on the ground that he lacked statutory authority to grant relief claimed. - Jurisdiction of Tribunal to hear appeal against such a decision - Whether the decision was a decision under s.160(2) and Regulation 7B of Patents Act 1952-1969 and/or in the exercise of poweas per s.25(1) of the Administrative Appeals Tribunal Act 1975 - Legislative intention - Requirement to advertise pursuant to s.160(4) of the Patents Act 1952-1969. DEPUTY COMMISSIONER OF PATENTS v. BOARD OF CONTROL OF MICHIGAN TECHNOLOGICAL UNIVERSITY V.G. No, 22 of 1979 CORAM: Smithers, Franki and Keely JJ. Melbourne 7 December 1979 at AOR re AT cine ee ere tne ania aap en eae nba fetes Maatalenen rath. al IN THE FEDERAL COURT OF AUSTRALIA ) NEW_SOUTH WALES DISTRICT REGISTRY V.G. No. 22 of 1979 GENERAL DIVISION BETWEEN : DEPUTY COMMISSIONER OF PATENTS Plaintiff AND: BOARD OF CONTROL OF MICHIGAN TECHNOLOGICAL UNIVERSITY Defendant ORDER JUDGES MAKING ORDER: Smithers, Franki and Keely uv. DATE: 7 December 1979 WHERE MADE: Melbourne THE COURT ORDERS THAT: The Appeal be dismissed and the plaintiff pay the defendant's costs of and incidental thereto. vee re Ne en eee en Stee Sinem Say IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY V.G. No. 22 of 1979 GENERAL DIVISION BETWEEN: DEPUTY COMMISSIONER OF PATENTS Plaintiff i BOARD OF CONTROL OF MICHIGAN TRCHNOLOGICAL UNIVERSITY Defendant CORAM: Smithers, Franki and Keely JJ. Melbourne 7 December 1979 SMITHERS J.: REASONS FOR JUDGMENT eA ne Ts lle ROD hae eA en RCI in no le een ety ok. a In this case I have had the advantage of reading the reasons of my brother Franki J. and would express my concurrence therewith. I also make the following observations. The Deputy Commissioner of Patents (the Commissioner) appeals to the Court from a decision of a Presidential Member (Davies J.) of the Administrative Appeals Tribunal. That decision was in two parts, first, that the Tribunal had jurisdiction to review a decision of the Deputy Commissioner given on 3 November 1978 and secondly that a certain advertise- ment concerning the review should be published by the Commissioner in the Official Journal. The first part of the decision may be conveniently considered at this stage. On 7 March 1978 the Board of Control of Michigan Technological University (Michigan) lodged with the Patents Office two applications, namely an application for extension of time within which to apply for restoration of its Patent Application No. 80103/75 which had lapsed and an application for the restoration of that application. The applications were made in the following circumstances. On 14 April 1975 Michigan lodged with the Patent Office an application for letters patent for an invention entitled "method for agglomerating steel plant waste dusts". On 8 May 1975 the Commissioner issued a direction under sub-regulation 7B(3) of the regulations under the Patents Act (the Act). That sub~regulation and other sub-regulations relevant for present purposes state:- a "7B.~(1) Where a complete specification received at the Patent Office does not comply with the requirements referred to in regulation 7, or the requirements of sub-regulation(2) of regulation 13, of these Regulations, the Commissioner may treat the complete specification as not having been lodged at the Patent Office or treat it as having been so lodged. (2) If under the last preceding sub-regulation the Commissioner treats a complete specification as not having been lodged at the Patent Office,he shall return 21t, together with any document received in relation to it, to the person from whom it was received,with a statement indicating the matters in respect of which the specification does not comply with the requirements referred to in that sub-regulation. (3) If under sub-regulation (1) of this regulation the Commissioner treats a complete specification as having been lodged at the Patent Office,he may,within three months after the date on which it was lodged, direct the applicant to do such things as are necessary to ensure that the complete specification complies with the requirements referred to in that sub-~reguiation. (4) If an applicant to whom a direction is gi2ven under the last preceding sub-regulation in relation to a complete specification fails to comply with the direction within six months after the date on which it was given, the applications to which the complete specification relates shall lapse. (5) Where an application has lapsed under the last preceding sub-regulation,the Commissioner shall advertise that fact in the Official Journal, (6) The applicant may, within three months after the Gate of the advertisement under the last preceding sub- regulation, make an application (in this regulation referred to as 'the application for restoration') to the Commissioner for the restoration of the lapsed application. (7) The application for restoration shall ve in accordance with Form 8A and shall contain a statement of the circumstances that led to the failure to comply with the direct- ion within the prescribed time. (8) If the Commissioner is satisfied that ~ (a) the failure to comply with the direction within the prescribed time was unintentional and resulted from an error or omission on the part of the applicant or of his agent or attorney or from circumstances beyond the control of the applicant; (bo) the applicant has complied with the direction; and (c} there has been no undue delay in the making of applications for restoration, the Commissioner shall restore the lapsed application, but, if he is not so satisfied,he shall refuse the application for restoration," The direction under sub-regulation 7B(3) was that a substitute specification be lodged to comply with Part II of the Third Schedule to the Regulations. This direction was not complied with. The consequence was that on 8 November 1975 the application to which the complete specification related lapsed, (see sub-regulation 7B(4)) On 11 March 1976 this lapse was advertised in the Official Journal in accordance with sub-regulation 7B(5). On 14 June 1976 the period during which Michigan might have applied under sub-regulation 7B(6) to have the lapsed application restored also expired. A statutory declaration of one Laurence John Dyson, Michigan's patent attorney after November 1977 was filed to support the view that the delay was due to apparent neglect or oversight by a previous patent attorney. The application for an extension of time was based upon s.160(2) of the Act which states:- "460(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 pro- ceedings in a court) required to be done 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," Arising out of the applications of 7 March 1978 the Deputy Commissioner made the decision which has given rise to these proceedings. The decision was in substance that the authority vested in him by s460(2) which refers to "an act or step in relation to an application for a patent" did not apply to an application to extend the time for doing an act or taking a step in relation to an application for a patent which had become a lapsed application pursuant to sub-regulation 7B(4) and that it was not "now" possible to restore the lapsed application. A On 30 November 1978 Michigan applied to the Administrative Appeals Tribunal for review of what was described as a decision of the Beputy Commissioner in the following terms:- "A decision refusing - (a) the application under s.160(2) of the Patent Act for an extension of time within which to make an application under Regulation 7P(6) of the Patents Regulations for the restoration of a lapsed application for patent number 80103/95 in the name of the applicant. (b) an application for restoration of the lapsed application for patent," When the application for review came before the Tribunal a preliminary point going to the jurisdiction of the Tribunal was raised on behalf of the Commissioner. It was said that the Tribunal had no jurisdiction. The jurisdiction of the Tribunal depended upon the combined operation of s.25 of the Admini- strative Appeals Tribunal Act 1975 (the A.A.T. Act) and s.151 of the Patents Act and sub-regulation 7B(8) under tmt Act. It was not suggest- ed that there was anything in the form or construction of those pro- visions which was incompatib.- with the Tribunal having jurisdiction in the matter, provided that it appeared that the Commissioner had made a relevant decision under the Act or sub- regulation 7B(8). The point that was taken was that the Commissioner had not made a relevant decision under either of those provisions. It was not urged that there was any significance in that s.151 provides that an application may be made to the Tribunal for a review of a decision "under", inter alia, s.160 whereas s.25(1) of the A.A.T. Act contemplates an enactment which provides for the making of an application to the Tribunal for the review of decisions made "in the exercise of powers conferred by" that enactment. The provision of s.25 which actually confers jurisdiction to review decisions is sub-section 25(4). That sub-section provides that the Tribunal has power to review any decision in respect of which application is made to it under any enactment. It is difficult to think that in the enactment of s.151 of the Act the use of the expression "decision under"rather than the expression used in sub-section 25(1) of the A.A.T. Act was other than deliberate. But on the other hand it is dificult to think that s.151 of the Act was not enacted by way of implementation of the provisions of s.25 of the A.A.T. Act. In Collector of Customs(N.S.W.)v. Brian Lawlor Automotive Pty.Ltd (979) 24 A.L.R. 307 the decision in question was alleged to be reviewable as a decision "under" Division 1 of Part V of the Customs Act 1901. It was said by Bowen C.J. that in the interpretation given to s.25 of the A.A.T. Act he did not think that any relevant dis tinction arose from the fact that the words "in the exercise of" powers conferred by an enactment are used in s.25(1) of the A.A.T. Act and the words "under Division 1 of Part V of the Customs Act" are used in Part XII of the Schedule to the Act and applied by s.26. It may be a question whether the same view may be taken where as in this case the influence of s.26 is absent. In any event, however, an application made to the Tribunal in respect of a decision made under, for example, s.160 is an application to review a decision in respect of which an application is made.to it under the Act. namely s.151 thereof, and thus within the scope of s,25(4) of the A.A.T. Act. However, it is clear that in respect of each aspect of the decision review of which was sought, it was essential to the jurisdiction of the Tribunal that it should be seen to be a decision under s.160(2) of the Act or under sub- regulation 7B(8). On 11 May 1979 the Tribunal made a decision that the Tribunal did have jurisdiction. It gave certain directions as to the future conduct of the matter and adjourned the review until those steps were taken, The Commissioner has appealed to this Court against that decision. All but one of the grounds of appeal raise the question of the Tribunal's jurisdiction to hear the appeal. Accordingly they raise a question of law necessary to establish jurisdiction in this Court to hear the appeal pursuant to s.44(1) of the A.A.T. Act. By s.151 of the Act an application may be made to the Administrative Appeals Tribunal for a review of - "a decision of the Commissioner under s.47E, Regulation 92 provides that applications may be made to the Administrative Appeals Tribunal "for review of decisions made by the Commissioner in exercise of the powers conferred on him by sub-regulation 7B(8) or 16F(6) or by regulation 44 or 52", It thus remains to determire whether the decision sought to be reviewed was in either of its aspects a decision under s.160 or a decision made in the exercise of the powers conferred on him by sub-regulation 7B(8). For this purpose it is necessary to have regard to what occurred in relation to the two applications which were lodged on behalf of Michigan in the acme anassi Aa shale at maintain ah ta tied bnincse i etl, cen hm ane nnn MOON ee A tte 7. Patents Office on 3 March 1978. The first official act on the part of the Office was to communicate to Michigan's patent attorney by letter dated 17 March 1978 an intimation that "the provisions of s.160 are not applicable to the lodgment of an application for restoration under sub-regulation 7B(6) As the application for restoration was not lodged within the prescribed time it is not now possible to restore the application", In response to this communication certain submissions were made by Michigan's patent attorneys and in reply thereto they were advised on 24 May 1978, that: - "The facts in this case are not in dispute. However, the basic fact is that a direction under regulation 7B(3) was not complied with within the prescribed time. There is a remedy for failure to comply with such a direction and that is found in sub-regulation 7B(6). As that remedy was not availed of, and cannot now be availed of, there is nothing that can be done in respect of the lapsed application. On 6 July 1978, the applicar+ requested to be heard, The matter was heard in Melbourne on 11 August 1978 where the applicant was represented by Mr. R. McCaw of Counsel, instructed by Mr. L.J. Dyson, patent attorney of Edwd. Waters & Sons. At that hearing not only was the proper construction of s.160(2) the subject of submissions and argument but evidence was received of facts relevant to Michigan's merits going to the exercise of the Commissioner's discretion on the matter of extension of time to apply for restoration of the application for the patent under s.160 and to the restoration of the application under sub-regulation 7B(8). On 3 November 1978 the Commissioner's wee ee nln Aer tac Dean It cl ht was nae Marr tr = mere nator antatnan ert decision and his reasons therefor were stated in writing. The relevant writing is headed:- é "In the Matter of the Patents Act 1952 - and - In the Matter of Lapsed Application No. 80103/75 for Letters Patent by BOARD OF CONTROL OF MICHIGAN TECHNOLOGICAL UNIVERSITY - and - In the Matter of an Application for Restoration thereof -and- In the Matter of an Application for an Extension of Time." Thereunder, under the heading "Decision of the Deputy Commissioner of Patents" are set forth the Commissioner's reasons for his decision and his decision. The reasons discuss the proper construction of s.160(2). They discuss also the evidence going to the exercise of the Commissioner's discretion under s.160(2) and the application under sub-regulation 7B(8). Speaking of s.160(2) the Commissioner stated:- "Sub-section 160(2) is concerned with an act or step in relation to an application for a patent not being done or taken. Consistent with the language of the Act and adopting the plain meaning of the words, sub-section 160(2) in my view refers to an act or step in relation to an application, which application is still subsisting. It does not extend to circumstances where an act or step was not done or taken at a time after the application had lapsed. 1 Usha staPe emastnb en nakit ne iam eA Rom ica y e It is noted that sub-section 160(1) uses similar words, There is no act or step in relation to a lapsed application to which sub- section (1) could apply. Section 160 has been in the Act in various forms from 1952. Excluding sub-regulation 7B(6) which was introduced in 1969, there has never been an act or step in relation to a lapsed application to which section 160 could apply. I think that the inclusion in sub-section 160(2) of the alternative "or in proceedings under this Act" confirms the view that the reference to "application" means a subsisting application." Again at p.16 he said:- "I think that it also follows from a consideration of the purpose of sub-section 160(2) and sub- regulations 7B(6) to (8) that sub-section 160(2) cannot be applied to extend the time specified in sub-regulation 7B(6). Both provide a remedy where something has not been done within a specified time due to an error or omission or circumstances beyond control. In contrast to sub-section 160(2), the remedy provided by regulation 7B is restricted in that an application for restoration can only be made within the time allowed by sub-regulation 7B(6). Clearly, it would make nonsense of the imposition of that restriction if it could be effectively avoided py action under sub-section 160(2). In conclusion the Commissioner stated:- "I stated at the hearing that if I found that there is machinery under the Act by which the application may be restored, I would require further evidence and would give the applicant an opportunity to provide it. However, on my view of the legislation it is not possible to restore the application and it is therefore unnecessary to give the applicant an opportunity of lodging further evidence. Leaving aside aeficiencies in the evidence and the other difficulties to which I have referred, because I have reached the conclusion that I have no legal power to do so, I am not authorised to grant the applications for an extension of time and for restoration of the lapsed application." 10. Notwithstanding the above it was contended that no decision had been made by the Commissioner under s.160 which could be the foundation of an application for review by the Tribunal, It was conceded that the Commissioner made a decision that under s.160(2) he had no power to extend time in relation to an application for a patent which had lapsed. But as I understand the contention, it was, in its first aspect, that that decision was something apart from the applications made on 7 March 1978, that in view of it the applications were incompetent, were not embarked upon, and no decision under the section was made in, or even possible, with respect to them. Officially they were apparently non-events at all material times. In its second aspect the contention was that in consequence of the Commissioner's view of the scope of 160(2) no powers conferred by s.160 or sub-regulation 7B(8) had been exercised by the Commissioner. In my opinion the contention, in either aspect, cannot be sustained, Under the Act the Commissioner shall, under the Attorney-General, have the chief control of the Patents Office (see s.10). He is authorised to exercise a multitude of functions in the administration of the Act concerning in particular applications for Patents and opposition thereto. He is required to give various directions in the course of the procedures for the examination and publicising of and ultimately in respect of each application to decide whether it should be granted. He has power, in various instances,;to extend the time for doing acts or taking steps in the course of the procedures to be followed in relation to applications for patents, It is clear ane ea toms net Fa ee 11. that when the defendant lodged with the Commissioner the application for extension of time under s.160(2) and the application for restoration of the application for patent under sub-regulation 7B(8) a situation had arisen in relation to which the Commissioner had both the power and the duty to deal with them in the course of the administration of the Act. He performed this duty and so far as the Commissioner was concerned the communication of 17 March 1978 finally disposed of the applications. Had the matter rested there it is apparent that the Commissioner or his representative had acquainted himself with the contents of the applications, ascertained that one application sought an extension of time under s.160 in respect of application No. 80103/75 for a patent which had lapsed and that the other sought an order under sub-regulation 7B(8) for restoration of the lapsed application for the patent, had directed himself as to s.160(2), comcluded therefrom that he could not give relief under s106(2), decided that there- fore the application under sub-reg. 71(8) was out of time and could no! be granted and had advised Michigan's patent attorneys that "it was not now possible to restore the application". All this is confirmed by the Commissioner's decision of 3 November 1978. It is said that what was actually decided was that the Commissioner could not entertain the applications. It is suggested that if the matter is properly expressed in that form it is clear that the Commissioner did not enter upon the business of considering and disposing of the application pursuant to the Act. But it is manifest that he did. He could not decide that he had no power to give relief under s.160 in the application made under that section until he had acquainted himself wit 12. its contents and ascertained that the extension of time sought therein related to a lapsed application for a patent. It was only for the purpose of deciding whether on the facts disclosed in the applications he could or dpuld give the relief sought therein that the Commissioner had cause to refer to s160(2). It was in the course of deciding what to do with the application,in the course of performing his function under the Act, that he necessarily consulted and construed s.160(2)}. Having done that and made his decision that the provisions of 3s.160(2) did not apply to an application concerning a lapsed application and that the application for restoration under sub-reg. 7B(8) must therefore necessarily fail, and having informed the defendant thereof he officially disposed of the applications. In effect he rejected them. It is impossible to regard the Commissioner's intimation that s.160 (2) did not empower him to grant the relief sought as an exercise independent altogether of the performance of his functions in relation to the applications, or to say that he made the decision merely "in gross" so to speak. When what actvally was done is examined it is clear that the applications were dealt with and disposed of by reference to what was regarded as the proper construction of s.160(2) In the course of argument counsel for the plaintiff speaking of the Commissioner's decision said:- "... but we say that in form and in substance and in every other way what it was was a decision saying that he had no power to extend the time and therefore did not embark on other questions. ... As we understand it, what the Commissioner said was that he had no power under section 160 and that was the end of the story." ec enh mentee nadine) MN mm mS 13. But it was not really the end of the story. To end the story there must be added by implication the words "and therefore I will not further consider your applications", In other words the applications having been thoroughly considered were refused. In support of the appellant's contention in its second aspect it was argued that the one thing the Commissioner did not do was to exercise powers under the Act or regulations thereunder. Of course, in a sense, the Commissioner did refrain from acting or purporting to act in the exercise of powers conferred by s.160(2). He certainly refrained from exercising the power conferred upon him by that sub-section to extend the time for performing any act or taking any steps in relation to an application for a patent. But that does not mean that he has not exercised a power conferred upon him by s.160(2). Section 160 authorises the Commissioner to consider an application under sub-section (2) thereof. And for that pu. pose an application includes not only an application which actually satisfies, in fact and in law, the conditions upon which the Commissioner's discretion to give the relief authorised by the sub-section depends, but an application which seeks such relief based on claims or allegations of fact and law which, if sound, would constitute a foundation for the exercise of the Commissioner's discretion. Regulation 47 specifies the form of application to be used and provides that the person making the application shall furnish with it a declaration setting out the grounds on which it is made. 14, It appears to me that upon an application coming before the Commissioner seeking relief under s.160 and claiming that the conditions of fact and law upon which the Commissioner's discretion to give relief depends are satisfied, the Commissioner is authorised by the terms of s.160 to determine, for the purpose of dealing with the application, whether those conditions are satisfied. If he decides that the conditions are or are not satisfied that is a decision made in the exercise of powers conferred on him by the section. His power was to decide the question for the purposes of administration of the Act. In making the necessary decision he was inevitably exercising a power conferred upon him by that section, The fact that, because of the nature of the decision he did not proceed to consider whether he should exercise his discretion to extend times for doing acts under the lapsed application for the patent, which he would otherwise have done is not to the point. Once made the decision might be subject to challenge by interested parties, but subject thereto, whether correct or otherwise, it would stand and have consequences to the respondent. The situation in this case is, in a sense, the converse of that the subject of Collector of Customs (N.S.W.) v. Brian Lawlor Automotive Pty. Limited (supra). In that case an administrator was considered to have made a decision purporting to act under statutory authority which he erroneously considered he did have. In this case an administrator is said to have refrained from exercising a statutory power which he erroneously considered he lacked. The case made for the plaintiff hereunder was that the rightness or wrongness of the eee memcsleneliibee to 15. Commissioner's view that he lacked statutory power to grant the relief sought under s.160(2)was irrelevant and having decided that he lacked power and refrained for that reason from entertaining the application, nothing had been done by him under the statute and accordingly there was nothing which could be the subject of review by the Tribunal under the A.A.T. Act. If this were a sound contentimit would remove from the scope of review a considerable range of administrative decisions review of which according to the context of the Act, would seem to have been contemplated, It is particularly in cases where the administrator has erred in his assessment of his powers and consequently declined to act that relief by way of review would seem most appropriate. As I said in Lawlor's Case(supra) at p.335 there is a distinction between the decision and action taken upon it. It is the decision itself which is the important thing. Whether right or wrong it may have serious results for the citizen (p.336). Such serious results may follow from a decision not to exercise power, or that a power does not exist, just as they may follow from a decision made in the purported exercise of a power which does not exist. It is important, because of this, that it is with actual edministrative decisions that the A.A.T. Act is concerned, As was said by Bowen C.J. in Lawlor's Case (supra) at p.317:- "As I have said, in my opinion an applicant to the Tribunal has standing and the Tribunal has jurisdiction provided there is a decision in fact and provided further that the decision purports to have been made in exercise of powers conferred by an enactment whether or not as a matter of law it was validly made and whether or not action on, the basis there was power to make the decision was right or wrong." Bm te ee nee A nC a il cE AND CRAs Semele A oe 16. It was also pointed out by Bowen C.J. in Lawlor's Case (supra) that it would be unsound to adopt an interpretation of s.25 of the A.A.T. Act which would restrict reviewable decisions under the Act to those only which constitute a legally effective exercise of powers conferred by an enactment. He said:- "The Act is clearly intended to give a person whose interests are affected by an administrative decision an effective appeal free of technicalities, against that decision on questions of fact and of law: see ss.25,27,28,31,42 and 44, The adoption of... /that/ ...interpretation would remove the most significant area involving questions of law from the jurisdiction of the Tribunal. It would render the appeal in many cases useless, Whenever it appeared in proceedings before the Tribunal that there was an error of law by reason of which the decision was legally ineffective and that the applicant certainly needed relief, the Tribunal would at that point be obliged to refuse relief on the ground that it had no jurisdiction to entertain the application. It is a feature of administrative decisions that once made, even if unlawful, they have consequences which may adversely affect citizens, until such time as they are withdrawn due to a change of mind on the part of the administrative official himself vcs are set aside by the determination of a court or tribunal, It appears to me that the Act is designed to give a simple remedy in all such cases," Whether a decision by the Commissioner that he lacked power under 3.160(2) ought to be classed as a decision within the meaning of s.151 of the Act thereunder has to be considered by reference to the circumstance that such a decision is necessarily made in the context of an application under s.160(2) for the exercise of the Commissioner's discretion thereunder, Once a bona fide application relevant Ite to the purposes of the Act and seeking relief under 8.160 was lodged at the Patents Office the situation was that in the course of administration under the Act the Commissioner was authorised and required to deal with it. In doing whatever was necessary to deal with the application or was incidental thereto he was necessarily engaged in the exercise of powers conferred upon him by the Act. In this case it was necessary and incidental to his function that he should make a decision as to his powers under 3.160(2). He made such a decision and when he did so he was acting in the exercise of his powers under that sub-section, It is a generally accepted principle of statutory interpretation that courts, tribunals and the like possess, subject to correction, the necessary power to rule on the initial question whether they have power to entertain a particular application. If they decline jurisdiction by reason of some statutory provision that is a decision "under" that provision. Thus in Thompson v. Mastertouch T.V. Service Pty, Limited (1978) 19 A.L.R. 547 a Full Court assembled to hear a purported appeal under s.24(1)(a) of the Federal Court of Australia Act 1976 against an acquittal on a criminal charge after a hearing on the merits. A preliminary point was taken that the Court lacked jurisdiction to hear an appeal from such an acquittal. After hearing argument the Court accepted this submission and dismissed the appeal as incompetent. Clearly that decision was made under s.24(1)(a) of the Act. See also Burgess v. John Connell-Mott Hay Anderson Pty. Ltd. (unreported) Federal Court 24 July 1979. Similarly, where an appeal to the High Court having been brought without leave against an order, which was held to be interlocutory and not final and thus by reason of s.35 of the Judiciary Act 1903, incompetent, the decision of the Court dismissing the appeal as incompetent was clearly a decision under that section. See Cox Brothers(Australia) Ltd. and another v. Cox_(1934) 50 CLR 314. = a ee ON a Ee EEC oe Ce ewe ct Ue In Parisienne Basket Shoes Pty. Ltd. and Ors. v. Whyte (1937) 59 C.L.R. 369 where informations under the Factories and Shops Act had been filed out of time Dixon J. said at p.389:- "How absurd it would be to deny to the Court before which such informations as those now in question are brought power to dismiss them on the ground that they are out of time and to ado so with costs, If the Court can do this, it means that it can take cognisance of the proceedings and make a valid order in relation to them. Suppose the Court were to decide erroniously that the information was too late; its order of dismissal would not be void." It seems clear that Dixon J. was envisaging that jurisdiction would be obtained under the section by which the informations purported to be laid. In the present case whether the Commissioner decided that he lacked the necessary statutory power to grant the relief sought rightly or wrongly, he took one or other of the courses described by Dixon J. in the passage quoted above. He entertained, heard argument upon, and finally ruled upon two applications. Whether he granted the applications or as in this case rejected them he acted in the exercise of the power conferred upon him, in the one case by s.160(2), and in the other by sub-regulation 7B(8). What he actually did is appropriately described in the conclusion of the learned Deputy President in the following terms:- "When Mr, Kildea considered and refused the application ... he was exercising or purporting to exercise the authority conferred upon him by s.160 (2) so to do and his decision was both a decision under s.160 of the Patents Act and a decision made in the exercise or purported exercise of powers conferred by s.160 of the Patents Act. Similarly, his decision to refuse to restore the lapsed application, heing a decision made on an application to him to do so, was a decision made in the exercise or purpoted exercise of the powers conferred upon him by reg.7B(8)". In the result the conclusion in this case is that the learned Deputy President's decision thatthe Tribunal a A ee ate oes Prony a nen Mee me ate ee ee oe had jurisdiction to review the decision in respect of which application to review was made to the Tribunal was correct, So far as concerns the second part of the decision appealed from, namely the giving of directions for placing certain advertisements in the Official Journal as indicated above I agree with the reasons expressed by Franki J. in his reasons for Judgment herein and have nothing to add. Accordingly this appeal should be dismissed with costs. woe ' : ' ninebewn )) boi, reo, 1 STaIiTHER Ss 7 » { is THN Lt tw ' Puch TI2Z-7a ™N_THE FEDERAL COURT OF AUSTRALIA) ) NEW SOUTH WALES DISTRICT REGISTRY) V.G. No.22 of 1979 ) GENERAL DIVISION ) BETWEEN: DEPUTY COMMISSIONER OF PATENTS Plaintiff AND: BOARD OF CONTROL OF MICHIGAN TECHNOLOGICAL UNIVERSITY Defendant * Coram: Smithers, Franki and Keely JJ. Melbourne 7 DPecenb2r 1979 REASONS FOR JUDGMENT FRANKI Jd. Sete ee ee, Ceo Ce eer a he i a <tr Rr aS RR ye ae ere nee On 14 April 1975 the Board of Control of Michigan Technoligical University ("the defendant") applied to the Commissioner of Patents ("the Commissioner") for the grant of a patent for an invention. The application waS accompanied by a complete specification which did not comply with the requirements of regulations ("the regulations") made under the Patents Act 1952 ("the Act"). Acting under reg.7B(1) of the regulations, the Commissioner treated the complete specification as having been lodged at the Patent Office and under reg. 7B(3) on 8 May 1975 he directed the defendant to supply a substituted specification complying with the regulations. That direction was not complied with within six months from the date on which it was given and, accordingly, the application for the patent lapsed under the provisions of reg. 7B(4). Pursuant to the provisions of reg. 7B(5) the Commissioner advertised in the Official Journal on 11 March 1976 that the application had lapsed. No application was made within three months after the date of the advertisement to the Commissioner for the restoration of the lapsed patent under reg. 7B(6). However, by a document dated 3 March 1978 and lodged with the Commissioner on 7 March 1978 the plaintiff applied ",..eunder Section 160(2)(a) of the Patents Act 1952-1969, for an extension of time of 30 months from the 8th November, 1975 to the 8th May, 1978, within which to apply for restoration of our peer ce en ee ee - wee ee - oye ae meme wee wee ee we, ee a " TRIE PTS SU) LL Og aS eee patent application no, 80103/75..." On the same day the defendant filed another application with the Commissioner "...for the restoration of application no. 80103/75, which has lapsed..." On 17 March 1978 a senior clerk in the Patent Office advised the defendant that "The provisions of Section 160 are not applicable to the lodgement of an application for restoration under Regulation 7B(6). As the application for restoration was not lodged within the prescribed time it is not now possible to restore the application." Ultimately, the Deputy Commissioner of Patents ("the plaintiff") held a hearing of both applications at which counsel appeared for both parties, and, on 3 November 1978 the plaintiff delivered written reasons for his decision. At this stage it 1s not necessary to do more than to say that he concluded by saying that "...I have no legal power to do so, I am not authorised to grant the 'applications for extension of time and for restoration of the lapsed application." It 18 convenient at this stage to set out certain sections of the Act and the regulations. Section 160 provides: "(1)... (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 relatton to an application for a patent or in proceedings under this Ack (not being proceedings 1n 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. (3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired. (4) Where an application 1s made under sub-section (2) for an extension of time for more than 3 months, the Commissioner Shall advertise the application in the Official Journal. (5)... (6)... (8)..." Section 151 provides: Regulation 7B "An application may be made to the Administrative Appeals Tribunal for a review of- (a) a decision of the Commissioner under- (i) section 47E,66,98,154,159c or 160; or (ii) sub-section (4) of section 77 or sub-section (1) of section 106; or (b) ..." provides: "(1.) Where a complete specification received at the Patent Office does not comply with the requirements referred to in regulation 7, or the reguirements of sub-regulation (2.) of regulation 13, of these Regulations, the Commissioner may treat the complete specification as not having been lodged at the Patent Office or treat 1t as having been so lodged. (2.) If under the last preceding sub-requlation the Commissioner treats a + _ Me er ne ee ee oe ee er ER De ke tk i elit complete specification as not having been lodged at the Patent Office, he shall return it, together with any document received in relation to it, to the person From whom 1t was received, with a statement indicating the matters in respect of which the specification does not comply with the requirements referred to in that sub-regulation. (3.) If under sub-regulation (1.) of this regulation the Commissioner treats a complete specification as having been lodged at the Patent Office, he may, within three months after the date on which it was lodged, direct the applicant to do such things as are necessary to ensure that the complete specification complies with the requirements referred to in that sub-regulation, (4.) If an applicant to whom a direction 21S given under the last preceding sub-regulation in relation to a complete specification fails to comply with the direction within six months after the date on which it waS given, the application to which the complete specification relates shall lapse. (5.) Where an application has lapsed under the last preceding sub-regulation, the Commissioner shall advertise that fact in the Official Journal. (6.) The applicant may, within three months after the date of the advertisement under the last preceding sub-reguiation, make an application (in this regulation referred to as '''the application for restoration') to the Commissioner for the restoration of the lapsed application. (7.) The application for restoration shall be in accordance with Form 6A and shall contain a statement of the circumstances that led to the failure to comply with the direction within the prescribed time. (8.) If the Commissioner ts satisfied that- OS TS ES aa SE eS aN AS (a) the failure to comply with the Girection within the prescribed time was unintentional and resulted from an error or omission on the part of the applicant or of his agent or attorney or from circumstances beyond the control of the applicant; (b) the applicant has complied with the direction; and (c) there has been no undue delay in the making of the application for restoration, the Commissioner shall restore the lapsed application, but, 1f he 1s not so satisfied, he shall refuse the application for restoration. (9.) 6. (10.) Where a lapsed application has been restored under these Regulations, the Commissioner snall advertise tnat fact in the Official Journal." Regulation 92 provides: » "Applications may be made to the Administrative Appeals MTribunal for review of decisions made by the Commissioner in exercise of the powers conferred on him by sub-regulation 7B(8) or 16F(6) or by regulation 44 or 52." An application for a review of the decison refusing the application for an extension of time and the application for restoration of the lapsed application for a patent was lodged with the Administrative Appeals Tribunal ("the Tribunal") on 1 December 1978. When the proceedings commenced before the Tribunal counsel for the plaintiff submitted that the Tribunal had no jurisdiction to review the decision of the plaintiff on the two applications. The learned Deputy President of the Tribunal who constituted the Tribunal agreed that he would first consider the jurisdictional issue, and, in the event that he concluded that the Tribunal did have jurisdiction to review the position of the plaintiff he would give directions as to the further hearing of the review. It is relevant also at this stage to bear in mind certain sections of the Administrative Appeals Tribunal Act 1975 ("the Tribunal Act"). Section 3(3) provides, unless the contrary intention appears: "R reference in this Act to a decision includes a reference to - (a)... refusing to make an order or determination (b) ... (c) ... (d) ... {e) ... (f) ... (g) doing or refusing to do any other act or thing." Section 25(1) of the Tribunal Act provides; "An enactment may provide that applications may be made to the Tribunal- (a) for review of decisions made in the exercise of powers conferred by that enactment; or ee te et (b) for review of decisions made in the exercise of powers conferred, or that may be conferred, by another enactment having effect under that enactment ," and s.25(4) provides: "The Tribunal has power to review any decision in respect of which application 1S made to 1t under any enactment." Before the Tribunal counsel for the plaintiff contended that the decision of the plaintiff was not a decision under s.160 of the Act as those words are used in s.151 of the Act or a decision made in exercise of powers conferred by s.160 of the Act as those words are used 1n s.25 of the Tribunal Act and therefore the Tribunal had no jurisdiction to review the decision of the plaintiff in respect of the two applications. Senior counsel for the defendant argued that a decision was made under a section of an act if, in giving the decision, the person giving 1t had to construe the section. The plaintiff, whilst deciding that he had no power to grant the applications, considered the merits to some extent. The learned Deputy President came to the conclusion that he did have jurisdiction to review the decision of the plaintiff and made certain orders as to advertising, to which I will refer later. The appeal to this Court is under s.44 of the Tribunal Act and lies only on a question of law. The notice of appeal which is said to be from the whole of the decision of the Tribunal sought that the decision be set aside and that this Court should declare that the Tribunal had no jurisdiction to review the decision of the plaintiff and that the Tribunal had no power to direct the Plaintiff to place the subject advertisement in the Official Journal. Before us counsel for the plaintiff submitted that the only questions for this Court's consideration were whether the Deupty President was wrong in deciding (a) that he had jurisdiction to review the decision of the plaintiff and (b) that he had power to give the directions as to advertisement which he gave. It was also submitted on behalf of the plaintiff that it was not necessary to consider whether in the result the plaintiff's reasoning was correct or incorrect and that, whether it was right or wrong the Tribunal had no jurisdiction. Senior counsel for the defendant, whilst offering to argue the merits of the decisjon of the plaintiff, accepted that this Court should proceed to determine only whether the Tribunal had jurisdiction to review the Commissioner's decison and 1f 1t had whether it had the power to give the directions with regard to advertising which it gave. The Court did not decline to proceed upon the basis upon which the cease was presented to ut. The questions for determination appear more clearly when it is remembered that the plaintiff's decision, although given in oN Nene aie A eee ee ae Mi aeaihg een NR ered AAEM eden made ee ken 10. one document, was in fact two decisions, the first being in relation to the application for an extension of time and the second in relation to the application for restoration of the lapsed patent. The three questions for determination by this Court then become: l. Did the Tribunal have jurisdiction to review the Gecision of the plaintiff that he had no power to grant an extension of time in the application purporting to have been made under s.160(2) (a); 2. Did the Tribunal have jurisdiction to review the Gecision of the plaintiff that he had no power to restore the lapsed patent application under the provisions of reg. 7B(8), and 3. Did the Tribunal have power to make the orders which 1t made with regard to the advertising. The first question: The basic matter to be decided in determining the first question is whether the plaintiff, wnen he held that he had no legal power to grant the application for extension of time was making a decision, within the words of s.15l(a)(1t) of the Act, under s.160(2}(a). The main submission for the plaintiff before uS appears to me to involve the proposition that if there 1s an ll. application purporting to be made under s.160(2)(a) and the Commissioner expresses the view that he has no power to grant the application that is the end of the matter and that decision cannot be reviewed by the Tribunal under the provisions of s.151. In my Opinion that proposition cannot be substantiated. There is no doubt that in the present case an application has been made purporting to be made under s.160(2)(a) of the Act for an extension of time to apply for restoration of the lapsed patent applicatiun. The application so stated and it could not be interpreted in any other way. When the plaintiff conducted the hearing he was considering that application and his decision in respect of that application was that he had no legal power to grant it, Section 25(4) of the Tribunal Act gives the Tribunal power to review any decision in respect of which application is made to it under any enactment. Section 26 of that Act gives effect to the schedule which makes provision for the review of certain determinations, decisions and refusals. As I have set out, s.25 of the Tribunal Act provides tnat an enactment may provide that applications may be made to the Tribunal for a review of decisions made in the exercise of powers conferred by that enactment, and s. 3(3) provides that a "decision" in that Act aincludes a decision refusing to make an order or determination or refusing to do any other act or thing. It Seems clear that the words "decisions made in the exercise of powers" referred to in s.25(1) would embrace decisions on the merits Ud eet a ee a RN I SO 12. refusing to make an order or determination in the exercise of a power. The Tribunal Act is not one which is intended to impinge upon pre-existing rights of members of the public but rather to vest certain new rights in them, It 18 not an Act creating criminal offences, or an Act imposing taxation, or an Act depriving members of the public of property or rights or privileges relating to their person. In my opinion provided the words in the relevant Act or regulation (see s.3(1) of the Tribunal Act) to which s.25(1) refers, are sufficiently broad to embrace a construction which appears to advance the purpose of the Act there seems to be no reason to reject that construction 1£ otherwise 1t seemS appropriate. Section 15l1(a) of the Act does not use the words "decisions made...in the exercise of powers" but rather the words "decision of the Commissioner under section...160." Whilst it may be possible to construe a decision made "under" a section as having a different meaning from a decision made "in the exercise of powers conferred" by that section I see no reason to construe the word "under" in s.151(a) in a more restrictive sense than the words "in tne exercise of powers". Indeed a decision made under s.160 would not be within the words of s.25(1) and so not subject to review unless that decision could properly be said to be made under s.160 where it waS properly said to have been made in the exercise of powers conferred by that section. This 15 in accord with the views expressed by Bowen C.J. tn Collector of Customs (N.S.W.) v. Brian Lawlor Automotive Pty. Ltd. (19879) 24 A.L.R. 307 at p. 313. There his Honour said "I do not think that any relevant 13. distinction arises from the fact that the words 'in the exercise of powers conferred by an enactment! are used in s.25(1) of the Tribunal Act and the words 'under Division 1 of Part V of the Customs Act' are used in Pt. XII of the Schedule to the Act and applied by s.26". The effect of ss.3(3) and 25(4) of the Tribunal Act was considered by this Court in that case. It was said by Bowen C.J. at p.314 that: "In the Administrative Appeals Tribunal Act a wide meaning 1S given to the word 'decision' by s.3(3). In s.25 1t appears to me that the word simply refers to a decision in fact made regardless of whether or not it 18 a legally effective decision." His Honour then said, in looking at the meaning of the words "made in the exercise of powers conferred by that enactment" in s.25 of the Tribunal Act, that those words could best be _ interpreted as relating to a decision made in purported exercise of powers conferred by the enactment. At p.314 he said: "The Act is clearly intended to give a person whose interests are affected by an administrative decision an effective appeal, free of technicalities, against that decision on questions of fact and of law..." At p. 317 he said: "In the view which I take as to the meaning of s. 25 of the Administrative Appeals Tribunal Act, these questions do not need to be decided. As I nave said, in my opinion an applicant to the Tribunal has standing and the Tribunal time at 14. has jurisdiction provided there is a decision in fact and provided further that the decision purports to have been made in exercise of powers conferred by an enactment whether or not as a matter of law 1t was validly made and whether or not action on the basis there was power to make the decision was right or wrong." Smithers J. took substantially the same view. I adopt, with respect, the following passages from his judgment: At p. 334: "In the end the question falls to be decided according £o the proper construction of those provisions of the Act which define the classes of decisions which the Tribunal has jurisdictions to review, namely decisions 'made in the exercise of' powers conferred by an enactment and in other cases, aS per the Schedule to the Act, decisions made 'under' various statutory provisions, in this case under Div 1 of Pt V of the Customs Act: see ss25(1) and (4), 26(1) and (2) and the Schedule. In construing these provisions what may be seen as the objective of the Administratrive Appeals Tribunal Act is I think of paramount importance." At pp.337-338: "But to be reviewable such a decision must satisfy the criterion that 1t may properly be described as a decision made in the exercise of powers conferred by a relevant enactment, or, for the purpose of this case made under Div 1 of Pt V of the Customs Act: see ss 25(4), 26(1) and (2) and the Schedule. There 1S authority F ta seaatentaenanantinentio's aaandanediindemte nientennee ne 8 en re or er ee eo es ener ee es caer 15. that in an appropriate statutory context expressions such as 'in pursuance of', 'done under', 'in carrying this Act into effect' may be considered as referring to acts performed outside the authority conferred by the relevant statute." Later at pp.338-339: "Once ut appears that phrases such as those discussed above are capable of extending to acts not authorized by the relevant statute then, having regard to the nature of the Administrative Appeals Tribunal Act as set forth above there is, in my opinion compelling reason to accord to the relevant expressions 1n ss 25 and 26 of the Administrative Appeals Tribunal Act and the Schedule thereto a liberal meaning appropriate to the purposes of the Act as appearing therein." Again at p.339: "In my opinion, adopting what I nave called a liberal construction of the relevant expressions in ss 25 and 26 and the Schedule to the Administrative Appeals Tribunal Act wnich 1S appropriate to the nature and object of that Act, the necessary conclusion 1s that' those decisions are reviewable which are made by an administrator in purported or assumed pursuance of the relevant statutory provision." Deane J. at pp.342-343, in a dissenting judgment, took a somewhat different view and distinguished "between a colourable exercise Of actual power conferred by an enactment and the usurpation of power". In this case the Court has to consider a different question to that considered in Collector of Customs (N.S.W.) v. ne ne omens pei wees ee ae tae fm ew eee ee et 16. Brian Lawlor Automotive Pty. Ltd. but, 1m my opinion, it 1s appropriate to adopt a "liberal" construction of the word "under" in s.151 in tne-:case before us. I am satisfied that a decision in which the Commissioner dismisses an application which purports to be made under s.160 of the Act (see generally regs. 47-52) and no other may be reviewed by the Tribunal where the Commissioner holds that he has no power to grant the application. It may be that in certain cases this may state the position too broadly butI am satisfied that in the subject case the Tribunal had jurisdiction to review the plaintiff's decision in respect of the application to extend time, The second question: The application for restoration did not state the section of the Act or regulation under which 1t was made but 1t was common' ground that any power to grant the application must be found in reg. 7B(8). Any jurisdiction of the Tribunal for review must be found in reg. 92 of the Act upon the grounds that the Commissioner made a decision in the exercise of the powers conferred upon him by reg. 7B(8). In fact the plaintiff held that he had no legal power to grant the application for restoration. The guestion then arises and was argued, whether a decision that the plaintiff had no legal power to restore a lapsed application was a decision in exercise of the power vested in him under reg. 7B(8). Tae cet mci toed Nant een — At A ih nL A La ih ce a a SON! | 17. Once again for the same reasons I consider that reg.92, where the words are decision made "in exercise of the powers" under reg. 7B(8), should be interpreted to cover a decision whether the commissioner has said he had no power to exercise the power conferred upon him by reg.7B(8). If one adopted any other construction 1t would mean that in many cases the Tribunal had no jurisdiction to review decisions of the Commissioner not to exercise a power given to him under reg. 7B(8). This interpretation in my opinion would be contrary to the aprroach taken by the majority of this Court in Collector of Customs (N.S.W.) v. Brian Lawlor Automotive Pty. Ltd., supra. These conclusions are reinforced by the way this case has been presented to us by the plaintiff in that we have not been asked to consider whether the plaintiff was right or wrong in his refusal to grant the application for extension or for restoration of the lapsed application. Counsel for the plaintiff argued that if the plaintiff was wrong and 1f he had jurisdiction to grant either or both applications the Tribunal was still powerless to examine the decision. I am of the opinion that the learned Deputy President was correct in his decision that the Tribunal had jurisdiction to review the decision of the plaintiff made ain the two applications, Having reached that decision he then had to consider the question of advertisement. 18. The third guestion: The learned Deputy President made the following orders with respect to advertising: "I therefore direct that the Deputy Commissioner of Patents advertise in the Official Journal, as soon aS practicable, (i) the application, dated 3 March 1978, of the Board of Control of Michigan Technological University for extension of iwime to apply for restoration of the lapsea application No. 80103/75 for letters patent; (it) his decision, dated 3 November 1978, refusing that application; (iii) the application, dated 30 November 1978, of the Board of Control of Michigan Technological University to this Tribunal for review of that decision; (iv) the provisions of s.30 of the Administrative Appeals Tribunal Act . which allow a party whose tnterests are affected by the decision under review to apply to the Tribunal to be made a party to the proceeding For review. As the terms of the advertisement were discussed in the hearing before me, I reserve liberty to either party to apply within seven (7) days for variation of the above direction or for further or other directions," Section 160(4) required the Commissioner to advertise in the Official Journal any application under s.160(2) for an extension of time of more than three months. It follows from what I have said that in my opinion the application was one so made and OE EEE 6 OY RR UO I I ECS SS TR SS PE AENEAN 10 eae erence 19. consequently advertisement was required. We have been requested to proceed upon the basis that we are not concerned to decide whether the Commissioner's decision was right or wrong but the requirement with regard to advertising cannot depend upon the view the Commissioner takes about the merits of the application Or about his jurisdiction to determine it so long as 1f 1s clearly an application purporting to be made under s.160(2). The Tribunal, at the request of the parties, only examined the preliminary question of whether 1t had jurisdiction to review the decision of the plaintiff. It was envisaged that a further hearing would be necessary to determine the merits of the decision of the plaintiff and in sucn case 1t seems that before the hearing proceeds the advertisement required by s.160(4) should have been inserted in the Official Journal. Section 33 (2) of the Tribunal Act provides: > "The member presiding at the hearing of a proceeding before the fYribunal may, in respect of a matter not dealt with by this Act or the regulations, give directions as to the procedure toa be followed at or in connection with the hearing." In my opinion it was a matter of procedure "in connection with the hearing" that before the hearing on the merits took place there had been compliance with s.160(4). It may have been questionable whether it was appropriate to order the plaintiff to insert the advertisement or whether the Tribunal should not in some other way, if possible, have arranged for the insertion of toe 20. the advertisement. However, nothing was before us about the manner by which it was possible to insert advertisements in the Official Journal and the form of advertising ordered by the Deputy President 18 1n my opinion appropriate. In addition I consider that s.43(1) of the Tribunal Act which provides: "For the purpose of reviewing a decision, the Tribunal may exercise all the powers and discretions that are conferred by any relevant enactment on the person who made the decision..." is a provision which vests in the Deputy President the power to ensure compliance with s.160(4) of the Act. I would decline to set aside the decision of the Tribunal or to make either of the declarations sought. I would dismiss the appeal and order the plaintiff to pay the defendant's costs. . A ee Teertify that tes: preceding pares 278 @ true copy of the Tn eps tos Ty "@ fOn8 7.3 vuaement herein of his Honour Mz. Justice Franky af va Associate Dated: 7-12-79 ® He TT TT oe ee een) led tame maven | tea et te Md em lM see IN THE FEDERAL COURT OF AUSTRALIA ) ) VICTORIA DISTRICT REGISTRY ) VG No. 22 of 1979 ) GENERAL DIVISION ) BETWEEN: DEPUTY COMMISSIONER OF PATENTS Plaintiff - and - BOARD OF CONTROL OF MICHIGAN TECHNOLOGICAL UNIVERSITY Defendant REASONS FOR JUDGMENT 7 December 1979 . KEELY J. This is an appeal from a decision of the Administrative Appeals Tribunal (the Tribunal) which, on 11 May 1979, decided that it had jurisdiction to review the decision of the Deputy Commissioner 6f Patents (the Commissioner) given 3 November 1978, and directed that a certain advertisement be inserted in the Official Journal. The decision of the Commissioner related to two applications made on 7 March 1978 by the Board of Control of Michigan Technological University (Michigan University). One application purported to be under s.160(2)(a) of the Patents Act (the Act) for an extension of time within which to apply for restoration of a lapsed patent application; the other was an application under the provisions of the Patents Regulations maine anak fist earnestness slash ateB A et anaheim ebeenidiettieateeentahtan sate oot | lettin thant il i 5 for restoration by the Commissioner under Regulation 7B(8) of a lapsed patent application. The facts and the provisions of the statutes and regulations which are material to this appeal are set out in the reasons for judgment of my brothers Smithers and Franki JJ. which I have had the advantage of reading. The Commissioner decided on 3 November 1978 that "I am not authorised to grant the applications for an extension of time and for restoration of the lapsed application". Michigan University applied to the Tribunal to review the decision of the Commissioner. At the hearing before the Tribunal Dr Emmerson of counsel for the Commissioner submitted (unsuccessfully) as a preliminary objection that the Tribunal had no jurisdiction to review the Commissioner's decision. It was contended by Dr Emmerson that the decision of the Commissioner was not a decision of the Commissioner "under s.160" within the meaning of s.151 of the Patents Act 1952 as amended nor a decision made "in the exercise of powers" conferred by s.160 of the Patents Act, within the meaning of s.25 of the Administrative Appeals Tribunal Act 1975 and that the decision was not a decision made "in exercise of the powers conferred by sub-regulation 7B(8)' of the Patents Regulations within the meaning of Regulation 92 of those Regulations. Dr Emmerson argued that the Tribunal had no jurisdiction to review the Commissioner's decision that it tee ae ee - ee ee eee — - C0 Deen | 1H | ed || es Mee ncemmetetenreniactnsdatnenttattataenennanenastteiteaiand asst GutatisinemnatatettelntaaitR tthe tne hn athsanrteantite eons lect haliti Da > tia TD, aliattt —i was not within his power (a) under s.160 of the Patents Act to grant the extension of time sought, and (b) under Regulation 7B(8) to restore the lapsed patent application. Dr Emmerson contended that the decision was not one subject to review by the Tribunal because the Commissioner had decided that he was "not authorised to grant the applications for an extension of time and for restoration of the lapsed application" - and that this was so even if he had so decided wrongly. If this submission be correct then, in case where the Commissioner has wrongly decided that he is not authorised to grant an application, that decision is not a decision "under" s.160 of the Act or "in the exercise of powers conferred by" s.160 of the Act or sub-regulation 7B(8) of the Patents Regulations (as the case may be) and as a result it cannot be the subject of a review by the Tribunal. This would be the necessary effect of Dr Enmerson's submission and it would be so even if the decision of the Commissioner were plainly and demonstrably wrong on its face. I am unable to uphold that submission. It may be that in certain circumstances the Tribunal would not have jurisdiction to review a decision of the Commissioner that he had no power to grant an application; for example, where the purported application to the Commissioner was totally misconceived and the Commissioner plainly and indisputably was correct in deciding that he was not authorised to grant the application. However, the argument for the Commissioner, both before the Tribunal and on the hearing of this appeal, was put expressly on the basis that the Tribunal, in considering the Commissioner's preliminary objection to its jurisdiction to hear the application for review, could not examine the correctness of the Commissioner's decision that he was not authorised to grant the applications. It was said by Dr Emmerson that the question whether a person had a right to seek a review of a decision of the Commissioner could not depend upon whether the Commissioner was right or wrong in deciding that he was not authorised to grant the application. However, Dr Emmerson's argument necessarily entails that a person who properly brought an application before the Commissioner would on the one hand have a right to seek a review by the Tribunal if the Commissioner, after correctly deciding that he had power to grant the application, then refused to grant the application on the merits, but, on the other hand, would be denied the right to seek a review by the Tribunal if the Commissioner erroneously decided that he had no such power and accordingly did not grant the application - even if it was an application which he would have granted on the merits had he considered that he had power to do so. On this argument where a person was entitled on the law to bring an application and entitled on the merits to the relief claimed, the question whether he had a right to seek a review by the Tribunal of the decision of the Commissioner would depend upon the Commissioner deciding that it was within his power to grant the application; no such right to seek a review would exist if the Commissioner, without looking at the merits, wrongly decided that he had "no power to grant the application. In my opinion the provisions for a review by the Tribunal of a decision of the Commissioner were not intended 'to exclude a review by the Tribunal where the Commissioner did not grant an application because he had wrongly decided that he had no power to grant the application. Accordingly, I consider that the Tribunal rightly decided that it had jurisdiction to review the decision of the Commissioner. In so deciding! I am not expressing any opinion as to whether the Commissioner was wrong in deciding that he had no power. That question has not been argued before the Tribunal or before this Court. Dr Emmerson has submitted that the Tribunal had no jurisdiction to review the Commissioner's decision even if it be assumed that the Commissioner was wrong in deciding that he had no power to grant the applications. As to the appeal from that part of the decision of the Tribunal which gave directions for the Commissioner to advertise certain matters in the Official Journal, I agree with the reasons for judgment of Franki J. In my opinion the appeal should be dismissed and the plaintiff ordered to pay the defendant's costs. I certify that this and the Sue preceding pages are a true copy of the Reasons for Judgment herein of bis Honour Mr. Justice Keely Associate Dated: 7? D.-, ber (97