Re Bendix Application

[1961] HCA 76

HIGH COURT OF AUSTRALIA

Menzies J.

RE BENDIX APPLICATION

(1961) 107 CLR 349

29 November 1961

Patents

Patents—Extension of term—War loss—Expiry of extended term one week after order made—Patents Act 1952-1955 (Cth), s. 95.

Decision

November 29.
MENZIES J. delivered the following judgment:-
This application has been fully argued and because I have had the opportunity during the luncheon adjournment to consider the substance of the arguments addressed to me I do not think that any good purpose would be served by my reserving the matter. (at p348)

2. The applicant was the holder of two Australian patents, No. 145806 and No. 146006, relating to hydraulic brakes which I need not describe but which are referred to in the documents as Hydrovacs. These patents were both dated 5th December 1940 and they both expired on 4th December 1956. (at p350)

3. The patents were convention patents based upon a United States patent, and it was not until after the war was over that the Australian applications were made. The first was made some time in 1947 and I have it in mind that the second was not made until 1951. If there be that difference, that is the only difference in the two patents and it is not material for present purposes. I can therefore do as counsel did and deal with both applications together. (at p350)

4. On 1st June 1956 the patentee, pursuant to s. 95 of the Patents Act 1952 (Cth) as amended, sought extensions of the two patents on the ground of war loss, and it appears that all the necessary formal steps were taken. (at p350)

5. The application can be granted if I find, and cannot be granted unless I find, that the patentee as such suffered war loss by reason of hostilities between His Majesty and a foreign state. In considering whether there was such loss, I think I ought to have regard to the period since 5th December 1940, notwithstanding that it was not until after the war was over that the applications for Australian patents were made and granted. (at p350)

6. It is not conclusive against the patentee that it was not entitled to institute proceedings in respect of infringement committed during the war years nor that it was not until it became a patentee years later that it could be regarded as a patentee during the war years. Had the question been asked at any time during the war whether the applicant was a patentee, the answer must have been no, but now, considering these applications at this date, I think I must treat it as having been a patentee since 5th December 1940. This is in accordance with what was decided by Luxmoore J. in In the Matter of the Patent of Western Electric Co. Ltd. (1931) 48 RPC 155 and In re Brearley's Patent (1933) VLR 5 . (at p350)

7. A good deal of the material upon which the applicant relied was concerned with the time before 5th December 1940 and the difficulties that it experienced following the invasion of France where it seems it maintained its patents office. These difficulties can however have no importance beyond providing an historical setting for the facts that are directly relevant. (at p350)

8. The applicant also sought to attribute its delay in applying for an Australian patent until 1947 to the war. If it were necessary for it to prove this, I am not satisfied that it has done so, but I do not consider that it was. It cannot, however, rely upon the fact that the patents were not applied for before 1947 or any consequence of this as part of its war loss. What I consider should be treated as war loss is any loss of an Australian market due to the war between His Majesty and a foreign State. (at p351)

9. Although the evidence about this is not very satisfactory, I am disposed to think that there was such a loss because during the war and for some time thereafter the patentee did not arrange for the manufacture in Australia or for the importation into Australia of its products, and this was, I think, due in some measure to the war. I say "in some measure" because I do not think that the war provides a full explanation of the delay that there was and I find it difficult to determine just when the patentee might have turned to the Australian market had there been no war. I think, however, it would not have been until some time considerably after 1940. Because, however, the war was a factor in delaying the development of an Australian market, I think I should come to the conclusion that there was some war loss and in that event s. 95 does authorize the granting of some extension. (at p351)

10. In determining what period of extension I should order, it would of course be wrong merely to treat the period in which the war adversely affected the patentee as fixing the period of the extension. If for instance some importation had been possible in the year 1946 but at a rate lower than would have been the case but for the war, it would be wrong to treat the year 1946 as a year that should be covered by a year's extension. Taking everything that appears into consideration, including what I consider to have been the patentee's lack of enterprise in developing an Australian market (and I observe that nothing was really done until 1951), I consider that an extension of five years is appropriate. (at p351)

11. It was argued by the Commissioner that I should not grant any extension that would only take the patent to a date within a year from the present date and reference was made to what was said in In the Matter of Victor Trief's Application for Extension of a Patent (1954) 71 RPC 99, at p 101 . I consider however that the fact the the extension that I think it appropriate to grant will expire on 5th December of this year is no reason for refusing any extension. An extension of five years from the date when the patents expired may be of some substantial importance to the patentee, notwithstanding that the extension will expire in a week's time. (at p351)

12. I therefore order an extension for five years and, as I consider that this is an obvious case where any extension should be by way of re-grant, I will make an order for the grant of new patents for a term of five years from 5th December 1956, subject to the conditions that are now generally known as the "Celotex" conditions. (at p352)

13. The applicant must pay the Commissioner's costs. (at p352)

Orders

Order accordingly.