Faloon v Commissioner of Patents, Trade Marks and Designs

[2015] NZCA 425

IN THE COURT OF APPEAL OF NEW ZEALAND

CA304/2015
[2015] NZCA 425

BETWEEN	CLARENCE JOHN FALOON Applicant
AND	COMMISSIONER OF PATENTS, TRADE MARKS AND DESIGNS Respondent

Hearing:	7 September 2015
Court:	Harrison, French and Cooper JJ
Counsel:	Applicant in Person R May for Respondent
Judgment:	9 September 2015 at 10.30 am

JUDGMENT OF THE COURT

A        The application for leave to appeal is dismissed. 

B        There is no order for costs.

____________________________________________________________________

REASONS OF THE COURT

(Given by Harrison J)

1. Clarence Faloon applies for leave to appeal against the judgment of the High Court striking out Mr Faloon’s purported appeal from “all the decisions of the Commissioner of Patents”.[1]

   [1]Faloon v The Commission of Patents, Trade Marks and Designs [2015] NZHC 853 at [2].

2. By s 98(c) of the Patents Act 1953 an appeal lies to this Court from any decision of the High Court “with the leave of the High Court or of the Court of Appeal”.  Mr Faloon has not sought leave to appeal from the High Court.  Nevertheless, we shall proceed on the basis that this Court has jurisdiction to hear an application for leave directly.[2] 

   [2]See Re Pfizer Inc HC Wellington AP257/00, 7 November 2002 at [10]–[11].

3. By way of brief background, on 28 August 2014 Mr Faloon applied for a patent in the Intellectual Property Office of New Zealand.  His application sought to patent cutting blades and an improved cutting blade carrier for use in grass cutting machines.  As is required by the Patents Act, the Commissioner referred Mr Faloon’s application to an examiner.  The examiner provided a first report and advised Mr Faloon of his right to respond.  Mr Faloon did so. 

4. On 2 December 2014 the examiner provided a second report and again advised Mr Faloon of his right to respond.  The report stated:

   The Office will consider any response you make and the end result may be that your application will be accepted and a patent granted.  If your response does not overcome the Office’s concerns we will write to you again and you will be given another opportunity to respond.

5. Mr Faloon responded on this occasion by filing a notice of appeal in the High Court, purportedly under s 12(6) of the Patents Act, citing the Commissioner as respondent.  Mr Faloon was dissatisfied with the report’s advice that searching and examination of his application had not yet been undertaken due to a lack of unity in the claims.  On the Commissioner’s application Brown J struck out Mr Faloon’s appeal.

6. Section 12 of the Patents Act provides:

   12.  Examination of application—(1)Subject to section 26G of this Act, when the complete specification has been filed in respect of an application for a patent, the application and specification or specifications shall be referred by the Commissioner to an examiner.

   (2)  If the examiner reports that the application or any specification filed in pursuance thereof does not comply with the requirements of this Act or of any regulations made thereunder, or that there is lawful ground of objection to the grant of a patent in pursuance of the application, the Commissioner may either—

   (a)       Refuse to proceed with the application; or

   (b)Require the application or any such specification as aforesaid to be amended before he proceeds with the application.

   …

   (4)  Where an application or specification filed under this Act is amended before acceptance of the complete specification, the Commissioner may direct that the application or specification shall be post-dated to the date on which the amendment is first filed.

   …

   (6)  An appeal to the Court shall lie from any decision of the Commissioner under subsection (2) or subsection (4) of this section.

7. The jurisdictional prerequisite to a right of appeal under s 12 is that the Commissioner has made a decision.  The Commissioner, not the examiner, is the decision maker.  The Commissioner’s discretionary power to refuse an application for or require amendment to a patent arises after the examiner reports.  Mr Faloon’s argument confuses the function of the examiner with the decision making power of the Commissioner.

8. Mr Faloon’s argument in the High Court and again on appeal was that the examiner’s second report was in law the Commissioner’s decision on his application.  There was no evidence whatsoever to support this submission.  The examiner had no legal power to determine Mr Faloon’s application.  In fact his second report unequivocally outlined the further action open to the Commissioner before determining the application.  The report was, as Brown J observed, one step along the path to the Commissioner’s final decision.[3]  Mr Faloon’s appeal was misconceived and was destined to be struck out. 

   [3]At [14] and [16].

9. Mr Faloon’s application for leave to appeal does not identify a question of law for determination, let alone one capable of bona fide and serious argument involving a question of public interest.  The application is dismissed.  There is no order for costs.

Solicitors:
Luke Cunningham Clere, Wellington for Respondent