4 (wn 19S tes CATCHWORDS Crown - Administrative Decisions Judicial Review legislation - Administrative Decisions (Judicial Review) Act 1377 (Cth.) - Stay of proceedings - Existence of ather rights of review of decisions under Patents Act 1952. Administrative Decisions (Judicial Review) Act 1977 - s.10 inistrative eals Tribun t 1975 - 5.29(7) Patents Act 1952 - ss. 59(1), 151, 160(2), 160(8) ani ventor v. Commissioner of Patents (1981) 36 A.L.R. 101 Lehtova v ctin Deputy Commissione of Patants (1981) 33 A.L.R. 103 McHenry v. Lewis (1883) 22 Ch.D. 397 Willi Vv. t £19053 1 K.B. 512 Tha un s Ltd. ev. init House Corporation (Deptford Strond) £13613 Ch. 1937 Slough Est. s Ltd. v. Slough rough Council €19681 ch. 299 Moore v. Inglis (1976) 50 A.L.J.R. 589 Kelly v. Coates (1981) 35 A.U.R. 93 at 94 re onno Brothers Ltd.; Wood v. Connolly, Brothers Ltd. Ci9113 1 Ch. 731 at 746 KIMB Y-CLARK LIMITED v. THE COMMISSTONER OF PATENTS AND MINNESOTA MINING AND MANUFACTURING COMPANY VG93 of 1988 Jenkinson J. Melbourne 15 April, 1988 IN T OF AUSTRALIA ) VviIcTto s STRY ) No. VG93 of 1988 GI VISION } BETWEEN: KIMBERLY-CLARK LIMITED Applicant AND: THE COMMISSTONER OF PATENTS First Respondent AND: MINNESOTA MINING AND MANUFACTURING COMPANY Second Respondent CORAM: Jenkinson J. PLACE: Melbourne DATE: 15 April, 1988 REASONS FOR JUDGMENT Motion by the respondent Minnesota Mining and Manufacturing Company (Minnesota) for dismissal or stay of an application for an order of review in respect of a decisicn made by a delegate of the respondent Commissioner of Patents. The decision un respect of which the applicant Kimberly-Clark Ltd. seeks an order of review was to refuse an extension, by exercise of power said to he conferred by sub-section 160(2) of the Patents Act 1952, of the time allowed by sub-section 59(1) of that Act for lodging notice of opposition to the grant of a standard patent which Minnesota is seeking. Acceptance of Minnesota's application for the standard patent and complete specification having been advertised on 7 May 19387, sub-section 59(1) allowed 3 months after that date as the time within which notice in writing of opposition might be lodged. On 4 August 1987 the applicant made application to the respondent Commissioner for the allowance of a further period of 3 months, to 7 November 1987, within which notice of its opposition might be lodged. Power to grant such an extension of time 15 conferred on the Commissioner by sub-section 59(1), and 1t was an exercise of that power which the applicant invoked. But on 22 October 1987 a delegate of the Commissioner refused the application after a hearing on 18 September 1987 at which both the applicant and Minnesota were represented. An application in writing by the applicant for review of that decision by the Administrative Appeals Tribunal was lodged with the Tribunal on 13 November 1337. Minnesota is a party to that application, the hearing of which may be expected to be held in the next few months. The applicant made application to the respondent Commissioner on 4 November 1987 for an extension of the period prescribed by sub-section 59(1) to 18 September 1987. That application was for exercise of the power which the applicant contends that paragraph 160(2)(a) of the Patents Act 1952 confers on the Commissioner to extend that period. The applicant had on 18 September 1987 lodged at the Patents Office what it contends is a notice in writing which Satisfies the requirements, other than the requirement as to time of lodging, contained in sub-section 59(1). After a hearing of that application in December 1987, in which Minnesota took part, another delegate of the Commissioner refused the application on 39 February 1988. It is in respect of that delegate's decision to 3. refuse to extend time that application is made in this for an order of review. And it isa for the dismissal a proceeding yr stay of that application for an order of review that Minnesota now moves, promptly after the institution on 3 March 1988 of the a for the order of review. Section 10 of the Administrative Decisions Review) Act 1977 provides: "(1) The ¢ ights conferred by sections 5, 6 and 7 on a person to make an application to the Court in respect of a decision, in respect of conduct engaged in for the purpose of making a decision or in respect of a failure to make a decision - (a) (b} (2) Notwi (a) (b) are in addition to, and not in derogation of, any other rights that the person has to seek a review, whether by the Court, by another court, or by another tribunal, authority or person, of that decision, conduct or failure; and shall be disregarded for the purposes of the application fs] sub-section 3(3) of the Ombudsman Act 1976 and sub-section 24(2A) of the Complaints 'Australian Federal Police) Act 1981. thstanding sub-section (1) - the Court, or any other court, may, in a proceeding instituted otherwise than under this Act, in 1ts discretion, refuse to grant an application for a review of a decision, conduct engaged in for the purpose of making a decision, or a failure to make a decision, for the reason that an application has been made to the Court under section 5, 6 or 7 in respect of that decision, conduct or failure; and the Court may, in its discretion, refuse to grant an application under section 5, 6 or 7 that was made to pplication (Judyecral 4. the Court in respect of a decision, in respect of conduct engaged in for the purpose of making a decision, or in respect of a failure to make a decision, for the reason - (i) that the applicant has sought a review by the Court, or by another court, of that decision, conduct or failure otherwise than under this Act; or (ii) that adequate provision is made by any law other than this Act under which the applicant 1s entitled to seek a review by the Court, by another court, or by another tribunal, authority or person, of that decision, conduct or Failure. (3) In this section, review' includes a review by way of reconsideration, re-hearing, appeal, the grant of an injunction or of a prerogative or statutory writ or the making of a declaratory or other order," Mr. Handley 9Q9.C., who appeared with Mrs. Crennan for Minnesota, grounded the motion for dismissal of the application on paragraph 10(2)(b)(ii) of the Administrative Decisions (Judicial Review) Act 1977 (the Judicial Review Act). Adequate provision is made, Mr. Handley submitted, by 5.151 of the Patents Act 1952 and the Administrative Appeals Tribunal Act 1975 under which the applicant is antitled to seek a review by the Administrative Appeals Tribunal of the decision in respect of which the applicant 1s seeking an order of review. The time having 2xpired which 15 prescribed by the latter Act for making application to that Tribunal for a review of the decision, Mr. Handley offered an undertaking that Minnesota would consent to an application by the applicant to the Tribunal for an extension of that time, which sub-section 29(7) of that Act authorises the Tribunal to grant. Mr. de Zilwa of counsel for the Commissioner of Patents offered no undertaking, but he did support the submissions advanced on Minnesota's behalf. It may be assumed that the Commissioner would offer no opposition to an application under 5.29(7). Mr. Handley contended that the power conferred on the Commissioner by sub-section 160(2) of the Patents Act 1952 to extend the time for doing an act or taking a step in relation to an application for a patent or in proceedings under the Act 1s not available in respect of the lodging of notice of opposition toa grant of a patent pursuant to sub-section 59(1) of the Act. But, having regard to sub-section 160(83) and to the reasoning in Scaniainventor v. Commissioner of Fatents (1981) 36 A.L.R. 101 and Lehtovaara v. Acting Deputy Commissioner of Patents (1381) 39 A.L.R. 103, Mr. Handley framed his submissions on the assumptisn that the power conferred by the sub-section was available. He submitted that, unless the hearings were synchronous in litigation between the applicant and Minnesota concerning the exercisa of the two powers, deriving from sub-section 59(1) and sub-section 160(2) respectively, to enable the applicant to oppose the grant to Minnesota of the patent it seeks, there was a substantial risk of duplication of expense of time and legal costs in the separate movement up and down two chains of fora - Commissioner, Administrative Appeals Tribunal, single judge of this Court, Full Court of this Court, High Court; and Commissioner, single judge of this Court, Full Court of this Court, High Court - of separate proceedings by the applicant for the one relief : extension of the time for lodging notice of that opposition. Synchronization of hearings could be achieved, in Mr. Handley's submission, by leaving available to the applicant only one of the two forensic chains: that which includes the Administrative Appeals Tribunal. Mr. Handley submitted that the motion to dismiss, and a fortiori the motion to stay, this application found support in authorities by which recourse to two separate legal proceedings has been characterised as abuse of process when the r@lief sought might have been obtained in one of them : McHenry v. Lewis (1983) 22 Ch.D. 397; Williams v. Hunt £1905] 1 K.B. 512; Thames Launches Ltd. v. Trinity House Corporation (Deptford Strond) €19611 'Th. 197; Slough Estates Ltd. v. Slough Borough Council £19687 Ch. 293; Moore v. Inglis (1976) SO A.L.U.R. 589. One of the most useful of those authorities for present purposes is the Slough Estates Case. Ungoed-Thomas J. there decided that the principles laid down in respect of two courts are applicable in a case in which one of the two tribunals is an administrative authority acting "quasi-judicially in accordance with our conceptions of Justice (£19687 Ch. at 314-315). Slough Estates Ltd. was seeking the one remedy - permission to build factories on certain land - by reliance on two different legal sources of permission. In that respect Slough Estates Ltd. was in like case with the applicant Kimberly-Clark Ltd. But Slough Estates Ltd. had invoked both legal sources in applications to the administrative authority which had been heard together and were awaiting the decisions of that authority and had then invoked one of those sources in a proceeding in the Chancery Division of the High Court, for stay of which latter proceeding the defendant moved that Court, whereas 7. Kimberly-Clark Ltd. has not in any one proceeding invoked both sub-section 59(1) and sub-section 160(2) of the Patents Act 1952. But that after the hearing of the motion for a stay and before judgment thereon Slough Estates Ltd. withdrew the application to the administrative authority which was grounded on the same legal source as the proceeding in the High Court, Ungoed-Thomas J. would have put Slough Estates Ltd. to its election between the latter Proceeding and the application which it withdrew, on the ground that the prosecution of both was vexatious and an abuse of process. The Slough Estates Case thus suggests that, in circumstances where duplexity of legal source of a single remedy is alleged, reliance in two proceedings in different fora on the Same source of remedy to justify the same remedy 15 an abuse of process. Mr. Lyons Q.C., who appeared with Mr. Scerri for the applicant, submitted that by sub-section 59(1) and sub-section 160(2) respectively two quite different rights of application for extension of time were conferred on the applicant, and that to @ach application different descriptions of fact and different discretionary considerations were relevant. Neither application had been instituted by Kimberly-Clark Ltd. in more than one proceeding, except for review of a decision, and therefore, 1t was submitted, no question of election between proceedings could arise. It was rather a case, Mr. Lyons pointed out, of asking the court to force Kimberly-Clark Ltd. to anstitute a further proceeding - an application for review by the Administrative Appeals Tribunal of the Commissioner's delegate's decision to refuse an extension of time in exercise of the power conferred by &. sub-section 160(2) - by dismissing or staying this application. Mr. Lyons submitted that recourse to review by the Administrative Appeals Tribunal of the delegate's decision under sub-section 160(2) would expose the applicant to the risk that on such a review findings of fact might be made which would be less favourable to the applicant than the findings which the delegate has already made, and which will not be subject to attack in this application under the Judicial Review Act. Mr. Handley sought &6 counter that submission by offering on hehalf of Minnesota an undertaking not to seek in an application to the Administrative Appeals Tribunal for review of the delegate's decision under sub-section 160(2) a finding of fact contradictory of those which the delegate has made. But the Tribunal would not be constrained aun the discharge of its functions by the attitude cf a company which would, one may suppose, be made a party to the proceeding, and the Commissioner of Patents, who would be a party, made no offer of an undertaking. In my opinion the "reason" specified in sub-paragraph 10(2)(b) (ii) is established in this case : adequate provision 15 made by s.151 of the Patents Act 1952 and the Administrative Appeals Tribuna}] Act 1975 under which the applicant is antitled to seek a review by the Administrative Appeals Tribunal of the decision which is the subject of this application. The present tense of "is entitled" in the sub-paragraph does not in my opinion require, as a matter of construction, that the entitlement should exist at the time when this court is called upon to exercise the discretionary power conferred by the sub-paragraph. If it did, 3. entitlement under the "law other than this Act" to seek a review of a description contained in the sub-paragraph might often have been lost by effluxion of time - as it has been lost by the applicant in this case - when the court was called upon to exercise the power. The circumstance that the applicant is not now entitled to seek a review of the decision by the Administrative Appeals Tribunal, but only to seek an exercise in 1ts favour of that Tribunal's discretionary power, conferred by sub-section 29(7) of the Administrative Appeals Tribunal Act 19575, to enable it to seek that review by extending the time for making application for review, does not in my opinion falsify the conclusion that "adequate provision 15 made by :'a) law other than this Act under which the applicant 15 entitled to seek a review ose. Of that decision". But that circumstance i5 in my opinion relevant to the discretionary judgment for which the sub~paragraph calls. The question is whether the power conferred by sub~paragraph 10(2)(b)(i1) should he exercised. I respectfully accept as applicable to this case what Toohey J. said in Kelly v. Coats (1981) 35 A.L.R. 93 at 94 : "One starts with the proposition that an applicant may rely upon any or allof the remedies available, review by this court and review cor appeal elsewhere". It was not suggested, nor was there evidence, that the courses adopted by the applicant in its quest for extension of the time for lodging notice of its opposition to the grant of the patent had been designed to delay the achievement, or to increase the expense, of that grant. The submissions were rather that those courses were very likely to have those effects, and that they 10. amounted to, or involved, abuse of process. If there has been abuse of process, 1t has consisted not in the utilisation by the applicant of one forensic chain tor ladder) for review of one of the Commissioner's decisions and the other chain for review of another of his decisions, but in the applicant's failure to invoke before the Commissioner on the first application for extension of the time for lodging notice of opposition both the legislative sources of power to grant that extension. However, neither by evidence nor by submission was that failure made the subject of criticism. The utilisation of one mode of reviewing one decision and the cther mode of reviewing the other decision was justified, in Mr. Lyons' submission, by the existence of umacceptable findings of fact ain the first and the existence of errors only of law in the second. That justification was not challenged by Mr. Handley. The utilisation of the two forensic chains instead of one of them in the applicant's quest for the one remedy may well increase the expense, and delay the conclusion, of litigation between Minnesota and Kimberly-Clark Ltd. concerning Minnesota's application for grant of a patent. The risk of greater time and expense 15 certainly enhanced. But this court will have available, if the remedies presently sought by Minnesota are denied, other means of controlling the course of litigation in both chains, and other means of limiting delay and expense. The applicant has chosen between the two available modes of reviewing the decision under sub-section 160(2). Its choice has not been shown to have been unreasonable or to have heen influenced by an improper motive. Neither of the protagonists was shown to be likely to be embarrassed by legal costs and no il. evidence was adduced that Minnesota is likely to suffer irrecoverable damage by delay in the grant of the patent. It may be - I express no opinion - that the applicant's failure to invoke sub-section 160(2) at the time when it invoked sub-section 59(1) and its subsequent invocation of sub-section 160(2) in a separate application to the Commissioner could be characterised as vexatious, and that the applicant's adoption of that course may afford a consideration to be weighed against exercise of the power to extend time which sub-section 160(2) confers. It does not, I think, afford a consideration against leaving undisturbed the applicant's choice of review, that 15, recourse to the Judicial Review Act. I bear in mind the observation of Fletcher Moulton L.J. in In re Connoll rothers Ltd.; Wood v. Connolly Brothers Ltd. £ 19111] 2 Ch. 731 at 746 : "Just as fraud may assume innumerable shapes so vexation may assume innumerable shapes." But that choice was not, I think, vexatious. I do not think that in all the circumstances the application should be dismissed, nor at this stage stayed. If 1t appears likely that more than one proceeding in this court will he instituted in the course of the applicant's quest for an extension of the time for lodging notice of opposition, orders may hereafter be made to ensure that as little time and costs are spent on the proceedings as 15 consistent with justice. The motion will be dismissed. The respondent Minnesota will be ordered to pay the applicant's costs 12. of the motion. The respondent Commissioner's costs of the motion will be his costs 1n the proceeding. I certify that this and the 11 preceding pages are a true copy of the Reasons for Judgment herein of the Honourable Mr. Justice Jenkinson. (PO / Associate Dated: 15 April, 1388 Counsel for the Applicant : Mr. J.F. Lyons 9.C. and Mr. C.M. Scerri Solicitors for the Applicant : Mallesons Stephen Jaques Counsel for the First-named : Mr. E.G. de Zilwa Respondent Solicitor for the First-named : Australian Government Solicitor Respondent Counsel for the Second-named : Mr. K.R. Handley 9.C. and Mrs. Respondent S.M. Crennan Date of Hearing : 29 March, 1988