Goodman Fielder Ltd v National Starch & Chemical Investment Holding Corporation [2001] FCA 330

FEDERAL COURT OF AUSTRALIA

Goodman Fielder Ltd v National Starch and Chemical Investment Holding Corporation [2001] FCA 330 INTELLECTUAL PROPERTY – patents – amendment to specifications – appeal against decision of Commissioner to allow amendment – standing to appeal – whether person who did not oppose amendments has standing Patents Act 1990 (Cth) s 104 Elazac Pty Ltd v Commissioner of Patents (1994) 29 IPR 479 discussed Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 cited Cuthbertson v Hobart Corporation (1921) 30 CLR 16 cited Nguyen v Nguyen (1990) 169 CLR 245 cited Queensland v Commonwealth (1977) 139 CLR 585 cited GOODMAN FIELDER LTD v NATIONAL STARCH AND CHEMICAL INVESTMENT HOLDING CORPORATION V 83 of 2001 FINKELSTEIN J 2 APRIL 2001 MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V 83 of 2001

BETWEEN: GOODMAN FIELDER LTD

Applicant

AND: NATIONAL STARCH AND CHEMICAL INVESTMENT HOLDING CORPORATION

Respondent

JUDGE: FINKELSTEIN J

DATE OF ORDER: 2 APRIL 2001

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT: 1. The appeal be dismissed. 2. The applicant pay the respondent's costs. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V 83 of 2001

On apeal from a decision of the Commissioner of Patents

BETWEEN: GOODMAN FIELDER LTD

Applicant

AND: NATIONAL STARCH AND CHEMICAL INVESTMENT HOLDING CORPORATION

Respondent

JUDGE: FINKELSTEIN J

DATE: 2 APRIL 2001

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 I have before me a motion by the respondent, National Starch and Chemical Investment Holding Corporation (National Starch), seeking the summary dismissal of an appeal brought by the applicant, Goodman Fielder Ltd (Goodman Fielder), from a decision of the Commissioner of Patents. 2 The facts that have led to the appeal are unusual and it is necessary to recite them. National Starch claims to have invented a method for increasing the expansion, or improving the texture, of food products that are prepared by extrusion cooking techniques and that are fortified with dietary fibre. It made application for a patent in respect of the alleged invention. There are thirteen claims in the specification the subject of the application, most of which are process claims. The application was advertised and accepted in the Official Journal of Patents. 3 Goodman Fielder filed notice of opposition to the grant, alleging that the invention was not a patentable invention on the following grounds: the invention was not a manner of manufacture within the meaning of s 6 of the Statute of Monopolies (s 18(1)(a) of the Patents Act 1990 (Cth)); the invention was not novel (s 18(1)(b)(i)); the invention did not involve an inventive step (s 18(1)(b)(ii)); the specification did not fully disclose the best method of performing the invention (s 40(2)(a)); and the claims were not fairly based on that which was described in the specification (s 40(3)). 4 The matter was heard by a delegate of the Commissioner. He allowed the opposition to the grant, giving comprehensive written reasons. In summary, the delegate decided that the specification did not comply with s 40 in that the claims were not clear, that the invention was not fully described, and that claims 1 to 5 and 10 were not fairly based. The delegate also found that claims 1 to 5 and 10 were not novel. He found that the invention, as described and claimed in all claims, was not a new manner of manufacture. 5 National Starch appealed the delegate's decision. That appeal is presently pending in the court. Goodman Fielder filed a notice of cross-appeal. By that notice Goodman Fielder purports to appeal from those parts of the delegate's decision which were adverse to it. As Goodman Fielder does not seek a reversal or variation of the delegate's decision it was probably inappropriate for it to file a cross-appeal. It should have filed a notice of contention under O 58, r 5A of the Federal Court Rules. Be that as it may, the regularity of the cross-appeal is not a matter that is presently in issue. 6 Following the delegate's decision, National Starch made three separate requests to the Commissioner for leave to amend the specification to its patent application. Those applications were purportedly made under s 104 of the Patents Act. The purpose of the applications was to remove the grounds of objection raised by Goodman Fielder and accepted by the Commissioner's delegate. 7 Initially, the Commissioner refused to consider the first request, stating that it was not possible to amend an application under s 104 when the Commissioner had allowed an opposition to the grant of a patent. National Starch instituted an application in this court under the Administrative Decision (Judicial Review) Act 1977 (Cth) for an order compelling the Commissioner to consider the request. When the Commissioner agreed to do so, the application for review was discontinued. Whether the decision by the Commissioner to retract his refusal and to proceed to deal with the request was within its power might be a matter of controversy, but need not be resolved on this application. 8 In due course, the Commissioner agreed to incorporate the first and second sets of amendments into the complete specification. Thereafter, the first and second sets of amendments were published as accepted by the Patent Office in the Official Journal. 9 The notice of appeal the subject of this application is against the allowance of those amendments. Goodman Fielder seeks an order that the decision of the Commissioner be set aside. 10 The short point raised by National Starch is that Goodman Fielder does not have standing to institute the appeal. The basis for this submission is that Goodman Fielder had not opposed the amendments and, not being an opponent, cannot appeal the decision of the Commissioner. 11 The argument is founded upon what is said to be the proper construction of s 104. Section 104(7) relevantly provides that "[a]n appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment". Although s 104(7) is silent on the question who may appeal the decision, National Starch says that it is implicit in the scheme established by s 104 that only an unsuccessful applicant or a person who has opposed an amendment has standing to appeal an adverse decision. 12 Section 104(4) provides that "[t]he Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment". Regulation 5.3 of the Patents Regulations 1991 (Cth) deals with the procedure for opposition to certain actions taken by the Commissioner. Thus, reg 5.3(3) provides that a person intending to oppose allowing an amendment must file a notice of opposition within three months of the publication in the Official Journal of a notice that the Commissioner has granted leave to amend the specification. 13 National Starch relies upon the decision in Elazac Pty Ltd v Commissioner of Patents (1994) 29 IPR 479 in support of its argument. According to the headnote, a patentee was granted leave by the Commissioner to amend the patent specification. The amendment was advertised. No notice of opposition was lodged and the amendment was allowed. Subsequently the applicant, who had a commercial interest in opposing the amendment, sought to appeal the decision. Heerey J struck out the appeal. He said (at 482): "In my opinion the right of appeal conferred by s 104(7) is only available to the applicant for the amendment or the minister or a person who has opposed the amendment under s 104(4)." 14 Heerey J based his decision on two grounds. First, he said that the notion of an appeal ordinarily conveys the meaning that a person, who has unsuccessfully contested the making of a decision, seeks the reversal or variation of that decision from a higher court or tribunal. A person cannot be unsuccessful in that context unless he or she has taken part in the process by which the decision complained of has been reached. 15 There are aspects of this reasoning with which I cannot agree. First, an "appeal" to the Federal Court against a decision of the Commissioner is not in truth an appeal, but an application to the Federal Court in its original jurisdiction: see Jafferjee v Scarlett (1937) 57 CLR 115 at 119 and Kaiser Aluminium & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136 at 142. The second difficulty is the underlying assumption that an appeal can be brought only by a party to the decision complained of. The assumption is not correct. A person who is not a party to a proceeding can appeal from a judgment by leave of the appeal court. Leave will be given if the person seeking to appeal might properly have been a party to the proceeding below: see Cuthbertson v Hobart Corporation (1921) 30 CLR 16 at 25 and the cases therein cited. 16 This said, the meaning of the word "appeal" was not the only basis for the conclusion reached. Heerey J also said that the Patents Act and the Patents Regulations establish a detailed regime concerning amendments to patent requests, specifications and other filed documents. Having regard to the nature of the scheme established by s 104, Heerey J said that the meaning of the word "appeal" in s 104(7) suggests that the right is not to be extended to the community at large (or perhaps more accurately to a person with a sufficient interest to maintain an appeal) but only to those who had given notice of opposition under s 104(4). 17 Unless I were satisfied that the decision in Elazac Pty Ltd v Commissioner of Patents was "plainly wrong", I am bound to follow it: see Queensland v Commonwealth (1977) 139 CLR 585; Nguyen v Nguyen (1990) 169 CLR 245. Although I do not agree with some of the reasoning, I am not of opinion that the decision is wrong. 18 Recognising the difficulty created by Elazac Pty Ltd v Commissioner of Patents, Goodman Fielder sought to distinguish the case. While conceding that it had not lodged an objection to the applications, Goodman Fielder pointed out that it had been invited to make comments on the applications, and had done so urging that the applications not be allowed. This was said to give it the requisite standing to bring the appeal. 19 Goodman Fielder had been invited to make comments because it was an opponent to the grant of the patent. In that circumstance reg 10.2 imposed an obligation upon the Commissioner to invite Goodman Fielder to make comments (reg 10.2(6)) and Goodman Fielder was entitled to file its comments within a stipulated period (reg 10.2(7)). 20 This is not sufficient to avoid the decision in Elazac Pty Ltd v Commissioner of Patents, in my opinion. The proposition for which that case stands is that only a person who has opposed an amendment under s 104(4) can appeal the decision to allow the amendment. Filing comments under reg 10.2(7) does not result in the commentator becoming an opponent. 21 The appeal will be dismissed with costs. I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein.