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Friday, 14 May 1915


Senator KEATING (Tasmania) . - When I moved the adjournment of this debate on Friday last I recognised that the measure had only just previously come into the Senate from anotherplace. I knew that it had occupied the attention of that. House for a considerable time, and, though I am not thoroughly familiar with, I had some idea of the nature of, the discussion which had takenplace there in regard to certain ' of its provisions. I had nob at the time it was circulated here in its present form an opportunity of comparing its provisions with those contained in the original Bill as introduced to Parliament, and a copy of which the members of both Houses had received with their papers some time previously. Since the adjournment of the debate I have had that opportunity, and noticed that the Bill now contains provisions which it did not have when it was originally launched in Parliament. The mere presence of those provisions renders it unnecessary for me to subject the Bill to anything like the criticism I had intended had it come here in its original form. The additional provisions are contained in sub-clauses 2 and 3 of clause 4. It will be recollected that early this session we passed an amending Bill on patents, designs, and trade marks; in fact, we passed two. This is the third of such amending Bills, and I would not be in the least surprised if before the session closes, or, at any rate, in the near future, we have to pass another or further amending measures. When I say that, I do not intend to cast any reflection on the Government. We are dealing with a very delicate and technical subject, and whatever legislation we pass must be motived by considerations arising not merely from our foresight, but largely out of our experience. A patent is a monopoly - a monopoly granted by the Crown, but granted for a term only, and on certain conditions. At one time in English history it was competent for the Crown to grant monopolies without any restriction. Great abuses arose and, as a consequence of that, patent legislation came into force, and the granting of monopolies has since been regulated by what is known as the patents law. One of the conditions of obtaining a patent is that it shall be for something which is new and useful. When I say "new," I mean that it must be something which previously was not known to or used by the public. The person who secured a patent right secured it in consideration of what he gave to the public. If the public already knew or used that particular invention there was no consideration, and his patent was no good. Now, as a matter of fact, when a patent right is secured under our legislation or under the legislation of any other portion of the British

Empire, it does not confer on the patentee an indefeasible right, even for the period of fourteen years for which the patent ia granted. I mean by that that if anybody else apparently infringes his patent, apparently uses an invention to which he alone is entitled, that person may be proceeded against by the patentee for damages, and the patentee may also apply to the Court for an injunction to restrain that person from further infringing his patent. But if the person so proceeded against civilly can establish that the invention is not novel at all, that it lacks one of the essentials on which a patent is granted, the patent may be declared void. There is in existence in every country a number of what I may call voidable patents. They are in force, but if an individual has the hardihood to use a particular invention, believing that it is not the subject of a proper patent, although it is the subject of a recorded patent, that no patent should ever have been granted in fact, he may use it, but he does so, of course, at his own risk. If he is proceeded against civilly for damages or an application is made for an injunction against him it is competent for him to take up in the Court an attitude which will cause the patent to be voided. That was the position of the law. What we did by our amending legislation earlier in the session was to grant a power to the Minister, that is to the AttorneyGeneral, to suspend in whole or in part or nullify or void totally any patent. The object of the legislation was that Australia should not be deprived of the benefit and advantage of certain requirements which at the present time German patentees have the sole right to produce in Australia. It was a very good object. We aimed at providing that the public of Australia should not be penalized by reason of the fact that Germans held patents in respect to requirements of the public. We did then, as I think, very clearly provide that the Minister might avoid or suspend in whole or in part a patent. We did that in the interests of the community. We made provision also that tiler Attorney-General might grant a licence or licences to persons in Aus: tralia to manufacture or produce and vend those articles which otherwise in peace times would be the subjects of these patents. We provided, too, that as1 a condition certain payments might be attached to such a licence.

The fund so raised from licensees would remain in trust in the hands of the Government, as I pointed out on a previous occasion, to be disposed of after the war, as circumstances should determine to be just.


Senator de Largie - How much has been collected?


Senator KEATING - I cannot say; but I should not imagine very much. I do not think there have been many successful applications. "We made a singular omission in our legislation at that time. While the Minister might suspend or avoid a patent and grant a licence to another person to manufacture and vend the article, the licensee was in no way protected from outside competition. Consequently, if the Minister avoided any particular patent wholly, it was open to any member of the public to disregard the patent and manufacture and vend the article.


Senator de Largie - Has any licensee suffered in consequence of that omission?


Senator KEATING - I am not in a position to say what the consequences were. We also gave the Minister power to suspend a patent in whole or in part, and grant a licence to some person to manufacture and vend the article. We did not protect the licensee from competition, and that omission this Bill is intended to rectify. Clause 4 provides that any person other than the licensee who uses, exercises, or vends the invention shall be guilty of an offence, and liable to a penalty not exceeding £500. Here the position of the licensee is different from that of the original patentee, because if an unauthorized person infringes an ordinary patent, not avoided or suspended, and not belonging to an enemy subject, he cannot be prosecuted. All the patentee can do is to bring against him a civil action for damages, and apply for aninjunction.

Senatorde Largie. - I thought this Bill referred only to the patents of alien enemies.


Senator KEATING - The Act we passed last year provides a general power to avoid or suspend, the understanding being that it was to be exercised only in regard to enemy-owned patents. By this legislation as originally introduced, it was proposed to protect a licensee more strongly than an original patentee was protected, and more strongly than an Australian, neutral, or British patentee would be protected in the future. Yielding to criticism on the point, the Government have now introduced sub-clauses 2 and 3 of clause 4, of which sub-clause 3 provides that no prosecution shall be taken under the section except by the AttorneyGeneral or person authorized by him in that behalf. That to some extent meets the criticism levelled at the measure, but another anomaly has been rectified. Under the normal law of patents a person charged with infringing an ordinary patent right could, when proceeded against, attack the validity of the patent, but the person proceeded against under this legislation for infringing the right of a licensee could not doso. That defence, if successfully set up, could cause the patent to be declared void by the Court. As this Bill stood originally, any person prosecuted at the instance of a licensee for alleged infringement could not attack the validity of the patent, so that he was in a worse position than if he had infringed the rights of the original patentee. The Government, however, provide by sub-clause 2 of clause 4, that it shall be a defence to a prosecution under this section if the defendant satisfies the Court that a petition for the revocation of the patent, or for the removal of the trade mark or design from the register, would be successful. That is a right provision, because we should not put our own Australian patentees in. a worse position than a person who received a licence in respect of a German patent.


Senator de Largie - It is a good provision for the lawyers.


Senator KEATING - It is a good provision for the public, and puts the licensee in no better or worse position than the original patentee. If there is in the community a man plucky enough to make or vend the article, and establish that the German had no right to the patent originally, why should he not be able in a similar way to show that the licensee in his turn has no right to a monopoly? The inclusion of these two provisions has remedied defects which occasioned a. great deal of criticism ofthe Bill as originally introduced. I understand that the Attorney-General announced that further amendments suggested would be considered either before the Bill reached the Senate or before it is finally dealt with here. One very important matter requiring consideration is as to whether the only remedy for infringement of the terms of his licence which the licensee of a patent is to have is that provided in clause 4 upon procedure for an offence, or whether he should also be given a remedy in the form of a suit for damages in a civil Court. As I have already said, I should not be surprised if we found it necessary to still further add to our patents legislation, and it might be found necessary to make the provision to which I have just referred. I quite realize that this apparent tinkering with our patents legislation is due to the novel circumstances in which we find ourselves, and to the fact that we are dealing with a very difficult technical and delicate matter. The Bill, as we have it, is very much more satisfactory than as it was when originally circulated, and it was only because of the apparent defects in the Bill as originally circulated, and because I was not aware of the changes made in it during its passage through another place, that I asked for the adjournment of the debate upon the second reading. Had I at the time been aware of the amendments upon the original measure made in another place I should have been prepared a week ago to have continued the discussion upon the second reading of the measure. I intend to support the motion.







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