Fastening Supplies Pty Ltd v Olin Mathieson Chemical Corporation [1969] HCA 61

High Court of Australia Menzies J. Fastening Supplies Pty Ltd v Olin Mathieson Chemical Corporation [1969] HCA 61

ORDER Petition dismissed. Petitioner to pay the costs of the Commissioner of Patents.

Cur. adv. vult.

Dec. 8 Menzies J. delivered the following written judgment:—

Part XII of the Commonwealth Patents Act makes provision for a person interested to obtain by order of the High Court a compulsory licence to make, use, exercise and vend a patented invention on terms specified in s. 108 (3A) of the Act and otherwise on such terms as the Court thinks fit, s. 108 (3). Such an order operates as "if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties", s. 108 (5). A necessary party is any person having an interest in the patent as exclusive licensee or otherwise, s. 108 (4) (a).

The condition of the Court making an order for a compulsory licence is its satisfaction "that the reasonable requirements of the public with reference to the patented invention have not been satisfied", s. 108 (3), and there is set out in s. 110 a list of circumstances (a) to (d) proof of any one of which would require an affirmative finding under s. 108 (3). Upon making such affirmative finding the Court has the discretion whether or not to make an order. As, however, the discretionary power is conferred for the public good, it seems to me that an order should follow an affirmative finding under s. 108 (3) unless the Court is satisfied that there is some sound reason for declining to make the order. Such a reason would, I think, be that local manufacture has been established by the patentee and a satisfactory reason has been given for delay in fulfilling a long-standing intention to establish such manufacture or that the applicant for a compulsory licence is not a person fitted to be a licensee. The capacity of a prospective licensee to maintain the reputation of the patented article is a matter of legitimate concern to the patentee and to the Court. There could, of course, be other sound reasons but, the two I have just given, as instances, have, I think, special relevance in this case.