'J. Greea, Gort, Print, Melb. oor THE HIGH COURT OF AUSTRALIA. THE MATTER OF LETTERS. PATENT. NO. 24688 of 1930 and NO. 29489 of 1930 GRANTED TO ARCHIBALD ALEXANDER MACINTOSH. v. ORIGINAL REASONS FOR JUDGMENT. oO, JUDGMENT STAREE J. This is a petition on the part of Archibald Alexander Macintosh and the Macintosh Auto Control Gasification Company Proprietary Ltd. praying that Letters Patent No. 21,688 of 4930 and No. 29489 of 1930 may be extended for a further term based upon 8. 84 (1) of the Patents Act 1903-1935. Both patents were granted to Archibald Alexander Macintosh but his rights were acquired in October 1930 by the Compeny. The patents however remain registered in the name of the original patentee. The patent No. 24688 expired on 20th. January 1946 and that munbered 29489 expires on the 10th. October i946. : In 1916, Macintosh and Hunt obtained Letters Patent | 1916 No. 691 for a method of and means for equalising or i edetermined condition of maintaining an equilibrium or any pressure in retorts or offtake pipes in the menufacture of coal gase Essentially, the invention was the control of pressure i py the use of en adjustable water level. A vacuum was \ employed to induce the flow of gas from retorts, and the outflow was controlled by a liquid bath in which the inlet pipe was" submerged to a depth automatically counterbalanced. py the edmission of a prearranged and constantly maintained | supply of liquid end by the free inlet of air to the opposite side of a dividing plate in a water seal chamber. This pa fees of . . was extended for 4 years but has ,or soon will expire. The principle used in the Letters Patent 291489 is the . e ; same as witnesses said, but there are improynents in é ' mechanical design and in the "sensitivity of control". The new design enables a yetort or any number of retor ae to be isolated: the main advance is to introduce a separate control for each retort or each unit of retorts. % was "a neat developement" of the patent 1916 No. 691 "and suited even better the' conditions" that No. 691 "was designed to fill". Sufficient ingenuity and merit are disclosed in the claims to support the grant of this patent. The Letters Patent No. 24688 is for a orocessand apparatus for the admixture of ovodueer or water gas with coal gas. There 'was nothing new in making producer gas, water gas or coal gas or in mixing them. Essentially, the invention No. 24.688 is for a combination of elements but there is nothing new in the elements themselves. The unit in which coal gas is made is connected with the unit in which producer gas (or water gas) is made end the pressure in each unit is indenendently controlled both before and in the mixing of the gases. By this means the calorific value of the mixed gases can be regulated. Undoubtedly this invention possesses ingenuity and merit and the Commissioner suggests "a marked degree of merit". . . But the question is whether the Letters Patent 291,89 and 24688 should be extended. The burden is upon the petitioners. The evidence makes a vrima facie case for upholding the validity of various clains in the oetents and I am not ¢c.lled upon to investigete that matter further. But it is tncunbent upon the patentee to establish that he has been inadequately remunérated and that the absence of adequate remuneration is due to no fault on his part. No profit has been made from the use of the patents cither in Australia or elsewhere. The petition sets out many foreign patents, some of which have expired. But these patents have not been and are unlikely, I should think, to be worked. There is, I think, no possibility of competition in Australia from the use of any of them and they may be disregarded in considering an extension of the Australian Patents. These latter patents have not been pushed with much energy. But the field was limited: the inventions could only be used in gas works, of which there were only about one hundred in Australia, and it was difficult to induce people to make changes in established plants. Further, the war affected the installation of new plant and any changes in established plants. The installations of patented plant or parts thereof during the whole period of the patents totalled some eight cases. Accounts showing the expenditure and receipts relating to the two patents do not distinguish between them. But I do not regard this defect in the accounts as of much importance for the patents are related to one another and in any case a considerable loss is established even if the salary received aera py the inventor Macintosh (which swamped receipts) were' treated as part of the receipts from the use of the patents. The substantial question is, I think, whether either patent is of that "high degree of merit which...would entitle" a patentee to an extension (In re Saxby's Patent L.R. 3 P.C. 292, at p. 294). The merit must be "considerably greater than is sufficient to support the grant of the Patent itself". "The Patent must be one of more than ordinary merit or utility, and, of the two, it appears...that the utility is an even more important factor than the inventiveness or skill shown in making the invention" (Trantom's Patent 34 8.P.C. 28, at. p. 37). Neither patent has that exceptional degree of merit eS dhe that would warrant an extension beyond the five ; mentioned in 8. 8) and counsel for the petitioners did not contend to the contrary. Nor do I think thet the vatent Mo. 20489 has a degree of merit that would warrant en extension in normel circumstances. It is at best a neat developement of an invention some 50 years old which has not been much used and which has not been of any great advantage to the public. But the war affected whatever chance the patentee and his purchaser had of exploiting this patent prbfitably and that is one of the circumstances of the case, apart altogether from S. 8 sub-see (6), that the Court may teke into consideration. In all the circumstences which I have mentioned it is just, I think, to extend this patent to the end of the year 199. The Letters Patent No. 24688 is an ingenious and s not been much used. Both useful covbination thou because of its intrinsic merit and the difficulties of exploiting it by reason of the war and its limited field it is just, I think, to extend some of its claims to the end of the year 1949. This extension will be by way of regrant for the patent exoired in January 1946. : Counsel who eppeared for the petitioner did not press for a regrent of claims 4, 5, 65793, 9, 19, 13, 1hy 155 and claim 16 is far too wide. Counsel for the Commissioner suggested that claims 2 &3 should be res tricted to controllers or governors of the type disclosed in the Letters Patent 1916 No. 691. These cleims are somewhat indefinite but the words "as indicated" and "as described" may confine the claims to such controllers or governors. It is a matter of construction which should be dealt with in other proceedings if the claims be ever challenged. The patentee mast be allowed, I think, to take the risk. iA Order:- that a regrant of LettersPatent Numbered 2,688 of 1930 be made to Macintosh for a period exoiring-« - arsine the 31st. Decenber 1949 and subject to the following terms and conditions - (1) The terms and conditions known as the B.T.H. terms and conditions (46 R.P.C. at pp. 377-378), substituting the word "Australia" for "fhe United Kingdom". nO The new grant is limited to claims 1, 2, 3, 11 &.12 f . set forth in the complete specification of said Letters Patent and the patentee shall make any necessary consequential amendments in his complete specification as directed by the Commissioner of be Patents, but so that the Commissioner's directions shall be subject to review by this Court. (3) That the agreements of 26th. July 1930 and 22nd. Ocbober 1930 with or for'the benefit of Macintosh Auto Control Gasification Comoany Proprietary Ltd. be extended to the new Letters Patent. Order:- that Letters Patent Numbered 291,59 of 1950 be extended to and inclusive of 31st. December 1949. Order:- that the petitioners pay the costs of the Commissionez of Patents including the costs of the deponent called by him. Order:- that an office copy of this order be delivered at the office of the Commissioner of Patents.