Hopman v Commissioner of Patents [1960] HCA 48

High Court of Australia Fullagar J. Hopman v Commissioner of Patents [1960] HCA 48

ORDER Appeal allowed. Set aside Commissioner's direction to amend specification. Remit application to Commissioner in order that it may proceed accordingly. Extend time for acceptance for six months after expiration of period fixed by s. 53 (2) of Patents Act 1952-1955. No order as to costs.

Cur. adv. vult.

Fullagar J delivered the following written judgment:—

Aug. 4 Fullagar J

This is an appeal under s. 49 (4) of the Patents Act 1952-1955 from a direction given by the Commissioner under s. 49 (2). Sub-section (1) of s. 49 provides, so far as material, that if the examiner reports adversely to a specification, the applicant may amend the specification so as to remove the grounds of objection. Sub-section (2) provides: "If the applicant does not amend the application or specification to the satisfaction of the Commissioner, the Commissioner may direct that the application or specification be amended to his satisfaction within such time as the Commissioner allows." Sub-section (3) is not material to the present case. Sub-section (4) provides: "An appeal lies to the Appeal Tribunal from a direction of the Commissioner under this section."

On 2nd July 1956 the appellant, Jan Hopman, lodged an application for letters patent for an invention in relation to "Improvements in construction of doorways for buildings". The application was accompanied by a provisional specification. On 2nd July 1957 a complete specification with drawings was lodged. The examiner reported that the invention was not novel, having been anticipated in a specification lodged by Edward George Brown on 4th May 1954 and accepted on 15th February 1956. The appellant then lodged an amended complete specification, in which the field of monopoly claimed was considerably narrower than that which had been claimed in his original complete specification. The Commissioner was not satisfied with these amendments, and by telegram of 2nd June 1959, the Commissioner gave, under s. 49 (2), a direction to amend which would have the effect of confining the scope of the monopoly to a very narrow field indeed. It is from this direction that the appellant now appeals. (The matter has in fact been handled by the Assistant Commissioner, but for the sake of brevity I will refer to the Commissioner).