IN_THE MATTER OF LETTERS PATENT NO. 414 GRANTED TO HARPER BANSBI AND OTHERS (No. 1 of 1961) QRDER Application dismissed. Applicants to pay the costs of the Commissioner of the application including any reserved costs. TER OF ERS PATENT NO }2_ GRANTED TO E, Ni A 0! (No. 5 of 1960) OF S_PA' NQ ED TO ER Js NS. AND _0! No. 15 of 1960) IN_THE TER OF RS PATENT NO GRANTED TO RP] 2 (SBU) OTHE! (No. 1 of 1961) JUDGMENT TAYLOR J. IN THE MATTER OF LETTERS PATENT NO. 138882 GRANTED TO HARPER J. RANSBURG AND OTHERS (No. 5 of 1960) (No. 15 of 1960) TITER OF TERS PATENT NO 4 D TO RPER J. RANSBURG AND OTHERS (No. 1 of 1961) In these matters application is made for the extension of the terms of several letters patent relating to inventions concerned with methods and apparatus for electrostatically coating articles. Letters Patent No. 140414 relate to what has been called the Ransburg No. 1 process and Letters Patent Nos. 130677 and 138236 relate to improvements on the original invention. Letters Patent No. 138882 relate to what has been conveniently described as the Ransburg No. 2 process, Applications for these Letters Patent were convention applications and it is of some importance to notice when they were made and the terms for which they were granted. The application which resulted in Letters Patent No. 140414 was made in this country on the 9th July 1947 and the grant was made for a term of sixteen years from the date of the basic application in the United States, namely 29th June 1939. This patent, therefore, expired on the 29th June 1955 but an extension for a further period of six years was granted by the Commissioner pursuant to s. 95 of the Patents Act 1952-1955. The application which is now made is for a further extension pursuant to the provisions of s. 90. Letters Patent Nos. 130677 and 138236 were granted upon applications made in this country in February 1946 and July 1947 respectively and they were granted for terms commencing on the 3rd February 1945 and the 26th January 1945. They also have now expired and application is made for an extension on the ground that the petitioners 2. have suffered war loss or damage of the character specified ins. 95. Finally Letters Patent No. 138882 were granted in respect of a term which expired on the 29th September 1960 and an application for an extension of this term is also made pursuant to s. 95. All of the applications were, by consent, heard together and, although the merits of each application were the subject of independent discussion, it was agreed that upon each application I should have regard to the whole of the evidence in so far as it might be relevant. But in view of the conclusion to which I have come it is unnecessary to discuss much of the material which was put before me. There is no doubt that the patents have produced very substantial returns in countries other than Australia. Altogether those relating to the No. 1 process seem to have produced something in excess of ten million dollars. The patent relating to the No. 2 process has produced a great deal more. The details of the returns relating to the No. 1 process are as follow: "United States of America 194% 47,000 dollars 1945 1653000 1946 270,000 " 1949 665,000" 1950 810,000 * 1951 880,000 1952 820,000 * 195; 890,000 * 195} 820,000 * 1955 830,000 * 1956 720,000" 195! 630,000 * 1953 20,000" 1959 0; 000 Oo" 1960 (1st 245,000 * 6 mths) Canada 1948 13,300" 19k9 183700 * 1950 173700 * 1951 16; 000 0" 1952 16; 200 " 195; 16? " 195) 21, 00 n 1955 19,600 * 1956 173200 * 1957 10,800 " 1958 8,700 " 1959 3,500" 1960(1st 6mths) 39200 3. Italy 1948 it 500 dollars 1949 5,000 1950 oo" 1951 oo" 1952 oo" 1953 o " 1954 26,000 4 1955 (Through 133000 " July 31) Netherlands 1951 2s 23 233 dollars 1952 te73 0" 1953 3 Be uo oon 1954 3,055.86 " 1955 8 37.47" 1956 9429.13" 1957 1 091.38 =" 1958 2,221.03" 1959 2 1070 55 OO" 1960(1st 6 56M mths) Sweden 1951 0.00 =" 1952 3,667.00" 1953 7,333.00 " 1954( Through 0.00 4 July 3ist) United Kingdom 1947 0.00 " 1948 Less than 15,000.00 " 1949" " 15,000.00 " 1950 153960:00 8 1951 34,620.30 " 1952 f0,808.00 " 1953 66, 966.70 " 195k 63,156.10" 1955 295 3693.60 " 1956 82,707.00 1957 98; 777.00" 1958 95,823.00 # 1959 101308200 1960(1st 6 49,4600 Mths) 1956 1,776.00 " 1957 2,428.00 1958 3,656.40 1959 3,790.40" 1960(1st 6 1,115.40 " Mths) France 1953 340.50 " 1954 5,193.60" 1955 5,07%,00 " 1956 3,385.80 " 8 But in Australia the sole return seems to have been in the vicinity of £2,000 which was the amount payable by various licensees between 1957-1960. The extent to which foreign profits ought to be taken into considerationim cases such as the present was the subject of discussion in Ex parte Celotex Corporation (57 C.L.R. p. 19 at p. 24) and in In re Johnson's Patent (61 C.L.R. p. 50 at p. 51). But for reasons which will appear the extent of the applicant's foreign profits has not influenced me in coming to a conclusion in these applications. However,the details of the evidence are of some value in determining whether the failure to obtain any substantial return in Australia resulted from the neglect of the petitioners to make reasonable efforts to exploit their Australian patent or whether it occurred in circumstances which would justify the Court in granting a further extension of the term. It appears from the evidence already set out concerning the returns from the No. 1 process patents that there was no income from the invention in the United States, until 1944, But in that year income commenced to accrue and, as appears, it rapidly increased year by year until 1950. Thereafter the return was substantial for a number of years. There was no income from any other country until 1948 when the exploitation of the invention commenced to produce profits in the United Kingdom, Canada and Italy. Successively, income commenced to accrue in Sweden in 1950, in the Netherlands in 1951, in France in 1953 and in Belgium in 1956. No attempt, however, was made to exploit the Australian patents till about 1955 in spite of the fact that there had been a number of enquiries from Australia from the beginning of 1947, One thing that emerges quite clearly from the evidence is that by 1950, or 1951 at the latest, the petitioners were in a position to commence exploiting their Australian patent. But they did not choose to do this until after the expiration of another five or six years. It is, I think, quite impossible to read the evidence without coming to the conclusion that during most of the life of the patents the Australian market was not of much interest to the petitioners. Its potential was De probably regarded as insignificant and the shortage of dollar funds in Australia caused the market to lose whatever attraction it might otherwise have had. Additionally the existence of a system of import licensing might have been thought to create difficulties in the way of exploitation but I am by no means satisfied that these difficulties were in any way insuperable, or indeed, that the existence of import licensing was the reason why there was no attempt to exploit the patent at an earlier stage. To my mind the reason why no such attempt was made was that the petitioners regarded the Australian market's potential as, at the very least doubtful, and they foresaw difficulties in the way of securing any immediate return in dollar currency. Much the same picture arises upon consideration of the evidence concerning the profits which resulted from the exploitation in foreign countries of the patent relating to the No. 2 process and with these observations in mind it is, I think, possible to consider what orders should be made in the several applications. After considering the evidence and the submissions which were made I am prepared to make orders for extension in the s. 95 applications, But I am not prepared to extend the terms of the letters patent with which these applications are concerned for more than three years from their respective expiry dates. I have assessed this period by taking into account the extent of the delay in exploitation which I think probably resulted directly from disorganization in this country immediately before the end of, and for a period of two or three years after, the war. But I am not prepared to treat the applicant's failure to exploit their Australian patents at any later stage as equivalent to loss or damage by reason of hostilities of the nature specified ins, 95. That failure, as I have already said, resulted substantially from the fact that the Australian market was not regarded as of much significance though, no doubt, 6. exchange difficulties and the existence of import licensing were additional factors which made it even less attractive. But the latter factors were not in any real sense the cause of such failure; they were no more than additional matters which were taken into consideration by the applicants in deciding not to attempt to exploit a market which, even without these difficulties, they regarded as insignificant. But even if I thought that they were of prime importance in deciding the company's policy with respect to the Australian market I would not be prepared to treat the so-called loss as a loss by reason of hostilities within the meaning of s. 95. It could be regarded as nothing more or less than a loss resulting from the petitioner's disinclination to make any effort to exploit its Australian patents during what they regarded as a period of difficult trading conditions and, as such, clearly not within s. 95. In the result, therefore, I feel bound to assess the period of extension in each of the s. 95 applications by reference only to the period of disorganization which existed at and immediately after the end of the war. The letters patent with which the s. 90 application is concerned were, as already appears, extended under s. 95 for a period of six years from the 29th June 1955 and any claim for a further extension now must rest upon the finding that the petitioners were inadequately remunerated in Australia during the life of the patent. The claim that they were inadequately remunerated, in terms, rests substantially upon the failure to obtain any return in Australia before 1957. But this failure occurred in the circumstances which have already been discussed and the views which I have expressed mean that this application must be dismissed.