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Thursday, 8 December 1960


Mr DRURY (Ryan) .- I congratulate the Deputy Leader of the Opposition (Mr. Whitlam) on his thoughtful contribution to this debate. The law of patents is extraordinarily complex one, and he has touched upon a number of very interesting points. I think perhaps it may be helpful to the House, considering the variety of amendments that have been introduced in this bill, to touch very briefly on the historical aspects of some very important details of our law of patents in Australia. As honorable members probably know, this branch of the law derives from the ancient Statute of Monopolies passed in 1624 in the reign of James I. The purpose was to limit the prerogative of the Crown in the granting of monopolies.

I should like to refer to some of the basic sections of the principal act of 1952, which is amended in many respects by this bill, because I think it will help to clarify the minds of honorable members as to the real basis of this branch of the law. For example, section 69 of the principal act grants to the patentee, his agents and licensees, during the term of the patent, the right to make, use, and sell his invention in such manner as he thinks fit anywhere in Australia, accompanied by restrictive provisions which would not apply in the case of ordinary chattels. That is a very special aspect of the law of patents that we need to have in our minds when considering amendments to this law.

Again, to safeguard the public interest, section 110 of the principal act provides that the invention shall, where possible, be worked on a commercial scale. Clearly, it is in the interests of the public that these matters should be carefully supervised and not abused. Clause 9 of the bill seeks to amend section 48 of the principal act with regard to the report which has to be made by a patents examiner as to the novelty of the article or its manufacture. I think it should be stressed that an invention, in order to be patented, must be in some way novel and useful. The novelty must be a genuine one and, of course, as provided under section 48. the examiner of patents must report in detail as to such novelty and satisfy himself and the commissioner that it is a genuine case. A mere addition to abstract theoretical knowledge cannot be made the subject of letters patent. I should like to quote, very briefly, from an old Victorian case which was decided in 1886. The court held -

A patent is a monopoly, and the applicant for a monopoly is bound to limit his application to that which is a new manufacture, whether a thing or process, of which he is the true and first inventor and which others at the time of the making of the letters patent do not use.

The bill makes reference in a number of places to specifications. Here again, I think it might be pertinent to stress very briefly one or two of the essential ingredients in relation to specifications. First, each application must be accompanied by a complete specification and is given a priority date according to the date of lodgment. Section 40 of the principal act provides that the invention and its method of performance Shall be fully described. Drawings must accompany the specification where required. If time permitted - and I feel that it does not - I should like to give the House details of a very interesting case that was heard by the High Court of Australia 50 years ago - Rodgers v. Commissioner of Patents (1910) - but I will not trespass on the time of the House as this is the last day of the session.

I pass to one or two other clauses of the bill. Clause 5 seeks to rectify an omission with regard to the persons who may make an application for a patent by including a person who would, if a patent were granted upon an application made by any one of the persons referred to in section 34 of the principal act, be entitled to have the patent assigned to him. An example given by the Attorney-General (Sir Garfield Barwick) in his second-reading speech some time ago was that of an employer who is unable, at present, to apply in his own name for a patent in respect of an invention made by his employee in the course of his employment.

Since the Attorney-General's secondreading speech was delivered, I have read a very interesting article, from which I will quote briefly. This article was published in the September, 1960, issue of the quarterly journal of the Queensland Justices of the Peace Association. Two cases are discussed. The question in the first is where an employer enters into a contract with an employee in relation to any inventions that may be discovered by an employee in the course of his employment. It is pointed out in this article that scientists who may be likely to develop new processes usually covenant to assign all their inventions or patents to their employers. How ever, this is not always the case. Very often there is no contract at all, and the courts have been faced with the task of balancing the interests of employer and employee.

The approach by the courts has been emphasized very clearly in a House of Lords appeal case in 1955 - the Sterling Engineering Company Limited v. Patchett. The approach of the courts has been that an invention 'belongs to the inventor, and the employer's interest therein arises only by virtue of any particular engagement or covenant in a contract. If there is no contract, the matter is left up in the air. An applicant under section 34, and the section as it will be amended, does not have to be a British subject.

The bill will put into effect the bulk of the recommendations of the expert committee which was appointed to review the principal act- the Patents Act 1952-1955 - a considerable time ago. It will enable the Commonwealth to subscribe to the Lisbon revision of the international convention for the protection of industrial property mentioned a few minutes ago by the Deputy Leader of the Opposition in regard to patents. Generally the bill will streamline and improve the law relating to patents in Australia. The principal act retained the general principles laid down in earlier legislation, and dealt mainly with procedural amendments. This bill does likewise. I know that the compilation of the bill has not been easy, and I pay a tribute to the Attorney-General and his officers for the very patient and capable way in which they have tackled this technical and involved subject.

The House is aware, from the statement made by the Attorney-General, that considerable difficulty arose over recent months, particularly in relation to section 43 of the principal act, which deals with the publication of complete specifications. Clauses 1 1 and 29 contain amendments which provide for an extension of the time allowed for accepting an application for a patent, from fifteen months to 21 months. There is also an amendment regarding the commissioner's power under section 160 of the principal act to extend the time laid down for the doing of certain things. These are straightforward enough, and so are the amendments proposed under clause 23 with regard to applications under international conventions which, as the Attorney-General pointed out some months ago, are of considerable benefit to Australia.

Conversely, the drafting of the amendment to section 43 dealing with the time for publication and acceptance of a complete specification was complicated by a conflict of interests between, on the one hand, Australian manufacturers and, on the other hand, applicants for letters patent. The respective advantages and disadvantages of early publication were also touched on by the Deputy Leader of the Opposition, and they have already been very clearly analysed and set out to the House by the AttorneyGeneral, so I shall not go over that ground again.

The original amending bill, introduced some time ago, proposed, in accordance with the recommendations of the Patent Law Review Committee, that a complete specification should be published immediately after acceptance of the application. To meet the wishes of interested sections of the community the Government now proposes to amend section 43 in such a way as to be as fair as possible to the manufacturers and the inventors and also to have clue regard to the interests of overseas applicants and the desirability of giving protection against infringement at a reasonably early date after the lodgment of the complete specification. The Attorney-General re-emphasized a few days ago his view that section 43 should not remain in its present form, and he has proposed in his latest amendment, as an interim measure, that the documents accompanying a patent application become open to public inspection on acceptance of the application or at the expiration of two years from the lodgment of the complete specification, whichever is the earlier. This approach seems to be a sensible, balanced one. As I said before, the whole subject of the law of patents is most complex and difficult. I should like again to express my congratulations to the Attorney-General and his officers. I think that this is a sensible measure pending the preparation of the more permanent one that has been foreshadowed by the AttorneyGeneral.







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