Stack v Commissioner of Patents [1999] FCA 1171

FEDERAL COURT OF AUSTRALIA

Stack v Commissioner of Patents [1999] FCA 1171 INTELLECTUAL PROPERTY – patents – Divisional Application for Standard Patent – renewal – continuation fees – lapse of application – extension application – opposition – request for summary dismissal of opposition by Commissioner – summary dismissal refused – judicial review of refusal to dismiss summary opposition – appeal against decision – whether appeal de novo available under s 154 Patents Act – whether question of lapse of patent can be put in issue in opposition proceedings and in judicial review thereof.

Patents Act 1990 ss 39, 142, 154, 160, 210,, 223, 224, 227 Administrative Decisions (Judicial Review) Act 1977 (Cth) Patents Regulations regs 6.3, 13.3, 5.3, 5.5, 22.11

General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 followed Kimberly-Clark Ltd v Commissioner of Patents (1988) 84 ALR 685 cited Harris v Caladine (1990-91) 172 CLR 84 referred

GEORGE STACK and G.S. TECHNOLOGY PTY LTD v COMMISSIONER OF PATENTS, GSA INDUSTRIES (AUST) PTY LTD, THE ATTORNEY GENERAL FOR THE COMMONWEALTH Q 46 OF 1999 FRENCH, WHITLAM AND LINDGREN JJ 24 AUGUST 1999 BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY Q 46 OF 1999

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT

BETWEEN: GEORGE STACK AND G.S. TECHNOLOGY PTY LTD

Appellants

AND: COMMISSIONER OF PATENTS

First Respondent

GSA INDUSTRIES (AUST) PTY LTD

Second Respondent

THE ATTORNEY GENERAL FOR THE COMMONWEALTH

Intervener

JUDGES: French, Whitlam and Lindgren JJ

DATE OF ORDER: 24 August 1999

WHERE MADE: BRISBANE

THE COURT ORDERS THAT: 1. The appeal is dismissed. 2. The Appellants are to pay the Second Respondent's costs of the appeal.