R.D. Werner Company Inc. v. Bailey Aluminium Products Pty Ltd [1987] FCA 356

NOT FOR DISTRIBUTION

IN THE FEDERAL COURT OF AUSTRALIA

) ) VICTORIA DISTRICT REGISTRY ) V. No. G 91 of 1987 ) )

GENERAL DIVISION

BETWEEN : R. D. WERNER CO. INC. Applicant and BAILEY ALUMINIUM PRODUCTS PTY. LTD. Respondent COURT: NORTHROP J.

io

ATE : 18 MAY 1987

PLACE: MELBOURNE

EX TEMPORE REASONS FOR JUDGMENT

I should indicate at the very beginning that I

propose to give leave to appeal in this case.

The applicant makes this application for leave to appeal from the judgment given by King J. in the Supreme Court of Victoria on 2 April 1987. The application is

brought pursuant to sub-section 25(2) of the Federal Court of

Australia Act 1976 and pursuant to Order 52 of the Federal

Court Rules and the applicant has an option of makj the

application before the Court constituted by a sj

a Full Court.

~

Under sub-section 148(2) of the Patents Act 1952, where a judgment or order of a prescribed Court, and here the Supreme Court 15 a prescribed Court, appealed from was pronounced or made in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner of Patents, an appeal to the Federal Court of Australia does not lie without leave of the Federal Court. In the present case, the proceedings before King J. were in the nature of an appeal from a decision of a delegate of the Commissioner dated 5 July 1984 to the effect that the opposition lodged by the present applicant, R.D. Werner Co. Inc., against the grant of a standard patent to Bailey Aluminium Products Pty. Ltd., on the letters patent

application no. 517200 be dismissed. The Supreme Court

dismissed that appeal and ait is from that order of the

Supreme Court that the present application is made.

Using the language of the patents jurisdiction, the proceedings before King J. were opposition proceedings based upon sub-section 59(1) of the Patents Act and a number of grounds of opposition were stated, including grounds (g) and (h); (g) being that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim, and (h) being that the invention, so far as claimed in any claim, was, before the priority date of that claim, otherwise not novel in