NORMAN LETHBRIDGE COWPER Vs. PAPER SACKS PROPRIETARY, LIMITED

JUDGEMENT

(1.) The appellant is the registered legal owner of Letters Patent No.21809/25 of the Commonwealth of Australia. His appeal is by special leave against a judgment of the High Court of Australia which affirmed a decision of the Commissioner of Patents dismissing an application of the appellant for leave to amend the specification and drawings of his Letters Patent. The patent law of the Commonwealth is regulated by the Patents Act, 1903-21. By S.71 of the Act an applicant or a patentee may by request in writing left at the Patent Office seek leave to amend his complete specification by way of disclaimer, correction, or explanation stating the nature of the amendment and the reasons for it. The next succeeding sections up to and including 79 regulate the proceedings following upon an application under S. 71 and in particular S.78 of the Act provides that no amendment shall be allowed that would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment. The original specification of the patent in question was headed "improvements in paper bags." It contained the following description of the invention. (Their Lordships gave the details and specifications of the patent and the claims and proceeded.) The application for the patent in question was dated 17 February 1925 and acceptance was on 13 July 1925. On 7 November 1929 the appellant being then registered owner of the patent applied to amend the specification and drawings, his reasons for making the amendment being stated in the following words: "To disclaim certain parts of the invention claimed, to disclaim an alternative form of the invention as illustrated in figure 8 of the drawings and described in the letterpress relating to the said figure 8, to better explain certain particulars of the invention, to delete certain claims, to omit the said figure 8 of the drawings and the said letterpress relating to the said figure 8 and to make consequential variations in the text to the specification."

(2.) The amendments applied for were very extensive. Substantial portions of the body of the specification were practically re-written, the whole of the 28 claims were struck out and figure 8 of the drawings and the relevant part of the text of the specification relating thereto were eliminated. 12 claims were substituted for the original 28 claims. The Commissioner of Patents refused the application on the ground that the amendments practically amounted to the re-writing of the whole of the specification and the formation of a new claim. An appeal to the High Court failed upon the ground that the amendments would have made the specification as amended claim an invention substantially different from the invention claimed by the specification before amendment.

(3.) At the date when the application for amendment was launched there was no action for infringement or proceeding for revocation pending but after the decision of the High Court the respondents, Paper Sacks Proprietary, Ltd., instituted proceedings for the revocation of the Letters Patent. Such proceedings were stayed pending the determination of the appellant's present appeal against the decision of the High Court. After the matter had been opened before their Lordship's Board the appellant's counsel under pressure of the criticisms levelled against his amendments asked leave to substitute some new amendments in place of his original amendments. The application was opposed by the respondents who urged that having regard to Ss. 80 and 81 there was no jurisdiction in their Lordships Board to grant the application and such leave could only be given by the Judge having seisin of the revocation proceedings. The two sections in question are in the following terms: "80. Except as provided in the next following section the provisions of Ss. 71 to 79 do not apply when and so long as any action for infringement or proceeding for revocation of a patent is pending. "81. In an action for infringement of a patent and in a proceeding for revocation of a patent the Court Justice or Judge may at any time order that the patentee shall subject to such terms as to costs or otherwise as the Court Justice or Judge may impose be at liberty to apply under the last preceding section for leave to amend his specification by way of disclaimer and may direct that in the meantime the trial or hearing of the action be postponed."