National Research Development Corporation v Commissioner of Patents [1959] HCA 67

High Court of Australia Dixon C.J. Kitto and Windeyer JJ. National Research Development Corporation v Commissioner of Patents [1959] HCA 67

ORDER Appeal allowed. Order that the direction of the Deputy Commissioner of Patents given on 15th August 1957, that the complete specification lodged with the application of the appellant dated 21st June 1955 for a patent for an invention in respect of Herbicidal Compositions be amended by deleting therefrom claims 1 to 3 within the time remaining for acceptance, be set aside.

Cur. adv. vult.

The Court delivered the following written judgment:—

Dec. 16 Dixon C.J., Kitto and Windeyer JJ.

The Deputy Commissioner of Patents having directed under s. 49 (2) of the Patents Act 1952-1955 Cth that a complete specification lodged in connexion with an application for a patent be amended by the deletion therefrom of three of the six claims which it contains, the applicant for the patent, National Research Development Corporation, has appealed under s. 49 (4) to this Court as the Appeal Tribunal for the purposes of the Act. The case has been argued before a Full Court under an order made pursuant to r. 23 of O. 44 of the High Court Rules and s. 150 of the Patents Act.

The Commissioner—and therefore a deputy commissioner: s. 10 (2)—derives his power to give such a direction as he gave in this case from sub-s. (2) of s. 49. It is a power which is exercisable if an applicant does not amend his specification to the Commissioner's satisfaction pursuant to the liberty allowed him by sub-s. (1), that is to say to amend it so as to remove the grounds of objection appearing from an adverse report of the examiner under s. 47 or s. 48. The former of those sections requires the examiner to report, in respect of each application and specification, whether they comply with the requirements of the Act. It is a requirement of the Act that an application shall be for a "patent": s. 34; and "patent" is defined by s. 6 to mean letters patent for an "invention." "Invention" is defined to mean "any manner of new manufacture the subject of letters patent and grant of privilege within section six of the Statute of Monopolies", and to include an alleged invention. Accordingly it is a subject for report under s. 47 whether each claim in a complete specification defines an invention of the kind to which the expression "a manner of new manufacture" in the Statute of Monopolies must be understood to refer.