elvan 7.4. 193 0 IoW'S PATENT . Bx parte LEGGETT PRODUCTS PPY LTD. STARKE J. This is a motion on the part of Leggett Products Proprietary limited for an Order that the proprietor of the letters Patent 445 of 1916 grant a compulsory iicence to the applicant, or alternatively, for a declaration that the vatented article or process is not manufactured or carried on to an adequate extent in the Commonwealth. The motion was heard by me in November 1929, but has stood over at the request of the parties, doubtless for the purpose of negotiating a settlement of the matter. However, these negotiations have fallen through, and the judg- ment of the Court must now be givens The application for the letters Patent (No 445 of 1916) was da- ted Ith March 1916, but the patent is dated Mth August 1915, under the provisions of Section 121 of the Patents Act 1903-09. The patent is for improvements in portable vulcanizing packages. These consist of a holder or pan carrying a quantity of combustible material on one side and a quantity of vuleanizable material on the opposite side. Patches can there- by be applied to the inner tubes of pneumat to tyres or other articles capable of repair by vulcanizing a patch thereon. 09. That Section gives jurisdiction to the Court to declare that the patented article is not manufactured to an adequate extent in the Commonr wealth, and if it 1s satisfied that the patented article is manufactured exo lusively or mainly outside the Commonwealth, then, subject edhe pro- visions of the Section and unless the patentee proves that the article ia manufactured to an adequate extent in the Commonwealth, or gives satisfactory reasons why the article is not so manyfactured, the Court shall make the Order applied for, to take effect either forthwith or at the ewiration of such reasonable time as is specified in the Order. The object of the provision is to encourage the development of industries in Austra 'ia, and to prevent monopolies fettering that development. Of. English Patent and Designs Act 1907-19 s. 27 , Hatechecks Patents 26 R.P.C, 228, Margoni's Pat t3 46 RPC. 457,479. It is beyond doubt that the patentee and his lisensees did not manufacture the patented artiole in Australia until November 1929, some six months after this motion was launched; they conducted their manufacture Ls) in Anerica. The only manufacture in Australia of the patented article was by infringers of the patent, and they were promptly restrained in legal proceedings instituted by the patentee and his Moensees. In the Meroedes Daimler Case 27 R.P.C. 763, Parker J. held, under S. 27 of the English Act, that the manufacture of the patented article in derogation of the pa~ tentee's rights might establish , or be taken into account for the pur- pose of establishing, the manufacture of the article to an adequate extent in the United Kingdom. The Commonwealth Act is not in the same terme as the English Act, however, and sub-sections (4+) and (5) of Section 87A of the former Act may well indicate a different intent on the part of the Legislature. But I do not feel called upon to decide this question in the present case, for I am satisfied that, even if the manufacture ef the pax tented article by infringers be taken into account, still the manufacture of that artic le was mainly, if not exclusively, outside the Commonwealth; and the patentee has not proved that it was manufactured to an adequate extent in the Commonwealth. Then has the patentee given satisfactory rea- sons why the article was not so manufactured? He rightly refers to the Patents Act of 1916 suspending the operation of Section 87A of the Act of 1903-09 during the continuance of the war and a\period of six months there- after. But that reason only operates until the end of 1919. No doubt the patentee forwarded adequate supplies of the patented article to Australia from America, and placed them on the market, wholesale and retail, at prices that were not unreasonable; but that is not a satisfactory reason, it is rather a state of affairs that the patentee must explain. The manu- facture of the patented article did not require any great skill or much capital exenditure. Then the patentee relies upon the fact that he was suppressing infringers and could not look forward with confidence to the full enjoyment of the benefit of the letters Patent, and that the expendi- ture of money in establishing a factory in Australia would have been an unjustifiable commercial risk. But that rather proves that the patentee was intent upon establishing his monopoly and supplying the Australian mar- kets from America. Certainly, it gives a reason for not manufacturing the article in Australia, but one quite contrary to the intent of Section 87A, and most unsatisfactory from the point of view of encouraging the devel- opment of an industry in Australias So I must consider whether the Court should make an Order in the terms of the motion, to take effect forthwith, or at the expiration of some reasonable time. I do net think an Order should have been made at the hearing in November last to take effect forthwith, but only at the expiration of @ reasonable time, more particularly as thia was the first case brought vefore the Court under Section 7A. At that hearing, I should have been prepared to make an Order to take effect on the expiration of six months from the last day of November 1929, Since November, however, the paten- tee or #t@ his licensee has established a factory in Sydney, and is now, and has been for some time, manufacturing the patented article in Aus- tralia. I am satisfied that the patentee and his lscensee are now manu- factuaing the patented articles to an adequate extent in Australia, and if I had in November last made the Order sought i shou ld now revoke it pursuant to Sub-seotion (5) of Section 87A of the Patents Act 1903-09. Under Section 674(6) the Court, in any case in which it is em- powered to make an Order deo laring that' the patented article is not mam- factured to an adequate extent in the Commonwealth, may, instead of mak~- ing such an Order, order the patentee to grant a compulsory licence to the applicant on such terms as the Court thinks fit. I should have re- fused the part of the motion ciaiming such a cence, in November, and I now refuse ite Leggett Products ppy Ltd. are opponents of the patentee and were infringers of his patent. No prudent business man would be like ly to select saenttterthint "ex hady' as his lMcensee, and certainly I should not think it just to foist such a licensee on the patentee, or to exercise the Court's discretion in its favour. rgb sedab ent y Technically, perhaps, I should make an Order under Section 87A of a As 20ND para - hedals 9 hes kearung Gozors mo ~ the Patents Act 1985-09, to tard effect & the expiration of six months from 30th November es, and go on to revoke it, but as matters gotand r Chas, Toms tat Orvaert erode 2, shall make no Order on the motion, and leave the partion 40 abide 7, their own costs. Bicar tint he Pbnrka ¥ dagge Produ De? ht lo fay Me ork g Ke Orccan cr pevraae J fr retiree