A Goninan & Co Ltd v Commissioner of Patents & Anor [1997] FCA 424

CATCHWORDS

PATENTS - opposition proceedings - application for second extension of time for filing of evidence - factors to be taken into account - public interest considerations - whether the Commissioner of Patents is under a duty to grant an extension of time where evidence relevant to the opposition proceedings is immediately available - whether the Commissioner is bound to consider the significance of evidence on which the party seeking an extension wishes to rely in opposition proceedings.

Administrative Decisions (Judicial Review) Act 1977 (Cth), ss 5(1)(e), 5(1)(f).

Patents Act 1990 (Cth),s 59.

Patents Regulations 1991 (Cth),regs 5.8(1)(a), 5.10(2), 5.10(5).

Attorney-General (NSW) v Quin(1990) 170 CLR 1.

Collector of Customs v Pozzolanic Enterprises Pty Ltd(1993) 43 FCR 280.

Commissioner of Patents v Microcell Limited (1959) 102 CLR 232.

Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205.

Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1.

Kahn v Minister for Immigration and Ethnic Affairs (unreported, Federal Court of Australia, Gummow J, 11 December 1987); noted at 14 ALD 291.

Kaiser Aluminium & Chemical Corporation v Reynolds Metals Co (1969) 120 CLR 136.

Minister for Aboriginal Affairs v Peko-Wallsend Limited (1986) 162 CLR 24.

Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259.

Pattanasri v Minister for Immigration, Local Government and Ethnic Affairs (1993) 34 ALD 169.

Queensland v J L Holdings Pty Ltd (1977) 141 ALR 353.

Sacharowitz v Minister for Immigration, Local Government and Ethnic Affairs (1993) 33 FCR 480.

Sir W G Armstrong Whitworth & Co (Engineers) Ltd v Commissioner of Patents (1936) 42 ALR 131.

Surinakova v Minister for Immigration, Local Government and Ethnic Affairs (1991) 33 FCR 87.

Vangendal - Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144.

A GONINAN & CO LIMITED v THE COMMISSIONER OF PATENTS & ANOR

NG 507 of 1996

SACKVILLE J

SYDNEY

23 MAY 1997

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG507 of 1996

GENERAL DIVISION )

BETWEEN: A GONINAN & CO LIMITED

Applicant

AND: THE COMMISSIONER OF PATENTS

First Respondent

AND: ABB ENGINEERING CONSTRUCTIONS PTY LIMITED

Second Respondent

CORAM: SACKVILLE J.

PLACE: SYDNEY

DATED: 23 MAY 1997

MINUTES OF ORDER

THE COURT ORDERS THAT:

1. The decision made by the delegate of the first respondent on 24 May 1996, refusing an application by the applicant for an extension of time to file evidence in the opposition proceedings commenced by notice of opposition filed on 16 June 1995, be set aside.

2. The application for an extension of time to file evidence in the opposition proceedings be remitted to the first respondent for determination according to law

3. The second respondent pay the applicant's costs.

4. Otherwise, there be no order as to costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG507 of 1996

GENERAL DIVISION )

BETWEEN: A GONINAN & CO LIMITED

Applicant

AND: THE COMMISSIONER OF PATENTS

First Respondent

AND: ABB ENGINEERING CONSTRUCTIONS PTY LIMITED

Second Respondent

CORAM: SACKVILLE J.

PLACE: SYDNEY

DATED: 23 MAY 1997

REASONS FOR JUDGMENT

This is an application under s 5 of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (the “ADJR Act”) to review a decision made by a delegate of the first respondent (the “Commissioner”) on 24 May 1996. The Commissioner refused an application by the present applicant ("Goninan") for an extension of time to file evidence in patent opposition proceedings. Goninan (the opponent in the opposition proceedings) claims that the Commissioner’s decision should be set aside because it involved an improper exercise of power (ADJR Act, s 5(1)(e)) and an error of law (ADJR Act, s 5(1)(f)).

Mr Kerr appeared on behalf of Goninan and Mr Catterns QC on behalf of the second respondent ("ABB"). The Commissioner was represented by Mrs Bennett SC, who addressed submissions on the
basis that the issues concerned the powers and procedures of the Commissioner: Federal Court Rules O 58, r 3; Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 (FCA/Lockhart J), at 417-418. No objection was taken to the Commissioner putting submissions on this basis.

Background

ABB is the applicant for the grant of a patent relating to a technique for the design and construction of railway coal wagons. The application (No 657639) was filed on 14 September 1993 and was advertised on 16 March 1995. The application relates to an earlier patent in the name of ABB in respect of which patent infringement proceedings have been commenced in this Court by ABB against Goninan. Goninan has cross-claimed in those proceedings alleging that the earlier patent is invalid.

Goninan filed a notice of opposition to the grant of the patent on 16 June 1995. It served a statement of grounds and particulars of opposition on 18 September 1995. The main grounds of invalidity relied on in opposing the patent are lack of novelty and lack of inventive step.

Regulation 5.8(1)(a)(i)(A) of the Patent Regulations 1991 (Cth) (the “Regulations”) requires an opponent who intends to rely on evidence in support of the opposition to serve a copy of any such evidence within three months of serving the statement of grounds of opposition. In the absence of an extension, therefore, Goninan was obliged to file its evidence in support of the
opposition by 18 December 1995. On 11 December 1995, Goninan sought an extension of time to serve evidence pursuant to reg 5.10(2). ABB objected to an extension being granted and Goninan's application was heard by a delegate of the Commissioner on 20 February 1996.

The delegate issued a decision on 21 March 1996 (the “first decision”). In his reasons, the delegate noted that Goninan’s request identified at least two Australian experts as potential witnesses, but that there had been no indication of when a search for experts had been commenced or when the experts had been contacted. The delegate also noted that no explanation had been given as to why the formal evidence had not been completed by 18 December 1995. The delegate continued:

“In my view the grounds do not seem to justify an extension of time. There is nothing in the request which is supportive of the opponent [Goninan] moving expeditiously to completing its evidence. Indeed the request amounts to little more than `We request an extension of time because we need more time’.”

After considering the submissions put forward by ABB, the delegate expressed the following view:

"The opponent has not provided adequate reasons as to why the gathering of evidence could not be completed before the end of the three month period. For example, the opponent did not explain whether it was going to use any of its employees and ex-employees as expert witnesses; also it did not say whether any of the independent experts it approached did not want to be involved in the opposition."

After referring to the judgment of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205, at 210, the delegate concluded as follows:

"Bearing this in mind, I consider that a limited extension of time, solely for the purpose of validating the service of the evidence in support which was available and served on 15 March 1996, is appropriate in all circumstances.”

The evidence that had been served on 15 March 1996 was a statutory declaration by Mr Smith, an engineer. Mr Smith's declaration addressed questions of both obviousness and novelty.

On 14 March 1996, seven days before the first decision, Goninan filed a further application for an extension of time to serve evidence in opposition (the “second application”). Shortly before the hearing of the second application, Goninan filed three further declarations from three expert witnesses in support of the opposition. These were from Mr Stark, a consultant chartered engineer holding a position at the University of New South Wales; Mr Jeffcoat, an engineer resident in Queensland; and Mr Williams, an engineer resident in Victoria. Their statements appear to go primarily to the question of obviousness, but would be likely also to have some bearing on the novelty issue.

The hearing of the second application took place on 29 April 1996, before a different delegate of the Commissioner. As already noted, the delegate gave his decision, rejecting the application for an extension, on 24 May 1996.

The Legislation and Regulations

Before considering the delegate’s reasons, it is convenient to consider the relevant legislation and regulations. The Patents Act 1990 (Cth) (the “Patents Act”), s 59, provides that any person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of specified grounds. The grounds include that the invention is not novel (s 18(1)(b)(i)), and that it does not involve an inventive step (s 18(1)(b)(ii)). Of course, the validity of a patent may be challenged in proceedings instituted after the grant of the patent: Patent Act s 138.

As Mrs Bennett pointed out, the Patents Act retains the procedure for pre-grant opposition proceedings, despite a recommendation made in 1984 by the Industrial Property Advisory Committee, that such proceedings be abolished. The Committee observed in its report (Patents, Innovations and Competition in Australia (1984)) that opposition proceedings were frequently used by competitors to delay the grant of the patent. This had the effect (para 13.1) “of enabling competitors to pirate the invention and to compete with the inventor directly for the whole of the commercially useful life of the invention”.

The then Government rejected the Committee’s recommendation for abolition of pre-grant opposition proceedings. The reason given was this:

“Pre-grant opposition provides a relatively inexpensive mechanism for resolving third party disputes as to validity. Opposition procedures will be made more stringent in order to expedite the determination of oppositions.”

Accordingly, the legislation retained what is now s 59, providing for opposition to the grant of a patent. The Explanatory Memorandum accompanying the Patents Bill 1990, in its comment on cl.59, stated that the regulations would provide for procedural matters in opposition proceedings.

The Regulations do address these matters. Regulation 5.8(1)(a) has already been referred to. Regulation 5.10(2) permits the Commissioner, on the application of a party and on such reasonable terms (if any) as the Commissioner specifies, to extend the time within which the party may take a prescribed step. Regulation 5.10(4) confers a similar power on the Commissioner to permit a party to serve further evidence on the other party. Regulation 5.10(5) provides as follows:

“The Commissioner must not...grant an application under subregulation (2) or (4) unless the Commissioner:

...

(c)...

(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and

(ii)is reasonably satisfied that...an extension of time or the serving of further evidence is appropriate in all the circumstances.”

The Delegate’s Decision

The delegate, in his reasons for rejecting the application for a further extension of time, recorded that Goninan relied on a declaration by its solicitor, Ms O'Connell, in support of its application for an extension. The relevant paragraphs in that declaration were brief:

"6. Because the expert witnesses are located, respectively, in Brisbane, Melbourne and Adelaide, the task of conducting face to face interviews has been very difficult to organise. We have, however, conducted interviews with each of them.

7. The evidence provided by each of the four expert witnesses is complex and has involved extensive research and preparation by both the witnesses and the advisors to Goninan. The Declarations made by each of the witnesses have been extensively redrafted. This has involved corresponding with each of the witnesses and conducting numerous telephone conferences.

8. Each of the expert witnesses has had limited availability as a result of other work commitments."

The delegate noted that under reg 5.10(5) he was not to grant an extension unless reasonably satisfied that the extension of time was appropriate in all the circumstances. He stated his understanding of the principles discussed in Ferocem as follows:

"while I should consider whether or not the person seeking the extension has made out a proper case justifying the extension, I should also consider not only the private interests of the applicant for the patent and the opponent, but also the public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted."

The delegate's reasons continued as follows:

"I think it is not really in dispute that the opponent has not made out a proper case to justify the extension. The O'Connell declaration provides little more detail in support of the extension than is provided in the application or extension of time, itself. The difficulties of obtaining evidence from interstate experts seems to me to be insufficient justification for a further extension of time."

He expressed the view that the comments made by the delegate in the first decision, as to the insufficiency of the opponent’s information, were still appropriate.

The delegate proceeded to address other factors:

"Although I have found that a proper case has not been made out, I should also consider the other factors including the public interest consideration. Mr Halford has conceded that the proceedings will not be further protracted should I grant an extension of time in that the opponent has already served the remainder of its evidence in support. Certainly, according to the opponent, the outcome of the substantive opposition will be more correct if the extension of time is granted to allow the remainder of the evidence to be included in the opposition. The question I have to decide is whether or not these factors should outweigh the private interests of the applicant and the fact that the opponent has not made out a proper case justifying an extension of time.

In resolving this question, I note that the delegate in the earlier decision took the view that public interest considerations outweighed the fact that the opponent had not made out a proper case.

This is in line with Ferocem where Burchett J indicated that a short period should always be considered so that the opponent, who may have assumed some extension would be granted, would not be shut out entirely.

In the present case, Mr Halford has argued that the opponent could hardly have assumed some extension would be granted. However, I note that the present application for extension was filed before the
previous decision was issued. Therefore the opponent would not have known of the contents of that decision. However, I note that the opponent has provided little extra evidence in support of the latest extension than was provided for the previous extension.

It seems to me that, in Ferocem, Burchett J was concerned that an opponent should not be shut out entirely. This is the reason he has given for considering whether some short extension should be allowed. In the present case, the opponent has already received an extension because of this. Therefore, the opponent will not be shut out entirely. Some evidence has already been served within the time allowed by the previous extension.

I do not think that the same reasoning should be used for allowing a second extension of time where the opponent has not made out a proper case. The opponent will not be shut out entirely. Therefore, I believe in the present circumstances, the private interests of the applicant and the fact that the opponent has not made out a proper case outweigh the public interest considerations. The public interest will not be greatly compromised as the opponent has not been shut out entirely.

I think that the public interest would not be best served in the long run if I were to allow the present unjustified extension after the previous unjustified extension has been allowed. It seems to me that this would open up the door to in effect unlimited extensions being granted for short periods to validate each piece of evidence as it was served. This is clearly contrary to the intent of the procedures set down in the legislation and to the Ferocem decision. In Ferocem, Burchett J did not grant a full extension of time. His reason for granting a limited extension was to allow whatever material that was already prepared to be served. There is no suggestion that any further extension would have been granted to allow other material associated with the court hearing to be subsequently served.

It seems to me that, where a short extension is granted in the absence of a proper case being made out, this in effect should end the particular period for serving evidence. It seems ludicrous that a party could be granted a further short period after having not made out a proper case when that party has already received a short extension of time after not earlier making out a proper case. If I should follow the path of granting such an extension then, it seems to me that the period prescribed by the regulations for
serving evidence in support would be a mere token one." (Emphasis in original.)

The Applicant's Submissions

Mr Kerr, on behalf of Goninan, made several submissions:

• The delegate had failed to take proper account of the public interest, as identified by Kitto J in Kaiser Aluminium & Chemical Corporation v Reynolds Metals Co (1969) 120 CLR 136 and by the High Court in Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232. In particular, the delegate had failed to give effect to what Mr Kerr described as the Commissioner’s duty to deal with a proper opposition on its merits.

• The delegate had proceeded on an incorrect factual assumption, by stating that it was not really in dispute that the opponent had not made out a proper case to justify the extension. In truth, no concession had been made.

• The fact that the first application was not properly based was “wholly irrelevant” to a determination of the second application.

• The delegate had failed to give proper, genuine and realistic consideration to relevant matters, in particular the public interest in opposition proceedings being dealt with on their merits. In this connection, the delegate had
failed to apply the principle in Ferocem, at 210, that the Commissioner should always consider whether an extension should be granted so that an applicant will not be shut out entirely from presenting evidence that may be immediately available. The delegate had failed to take into account the nature of the additional evidence the applicant wished to file and its significance for the opposition proceedings.

The Approach to Judicial Review

The High Court has recently restated the principles governing the proper role of a court exercising powers of judicial review. In Minister for Immigration and Ethnic Affairs v Wu Shan Liang (1996) 185 CLR 259, at 271-272, the joint judgment approved the approach adopted by the Full Federal Court in Collector of Customs v Pozzolanic Enterprises Pty Ltd (1993) 43 FCR 280, requiring a “beneficial construction” of the reasons of a decision-maker. The joint judgment in Minister v Wu Shan Liang said this:

"These propositions are well settled. They recognise the reality that the reasons of an administrative decision-maker are meant to inform and not to be scrutinised upon over-zealous judicial review by seeking to discern whether some inadequacy may be gleaned from the way in which the reasons are expressed. In the present context, any court reviewing a decision upon refugee status must beware of turning a review of the reasons of the decision-maker upon proper principles into a reconsideration of the merits of the decision. This has been made clear many times in this Court. For example, it was said by Brennan J in Attorney-General (NSW) v Quin (1990) 170 CLR 1, at 35-36:

`The duty and jurisdiction of the court to review administrative action do not go beyond the declaration and enforcing of the law which determines the limits and governs the exercise of the repository's power. If, in so doing, the court avoids administrative injustice or error, so be it; but the court has no jurisdiction simply to cure administrative injustice or error. The merits of administrative action, to the extent that they can be distinguished from legality, are for the repository of the relevant power and, subject to political control, for the repository alone.`"

These principles must be applied in the present case.

Ferocem Pty Ltd v Commissioner of Patents

The judgment of Burchett J in Ferocem played a prominent part both in the reasoning of the delegate and in the argument in this case. It is convenient now to refer to the judgment.

Ferocem, like the present case, involved an application for judicial review of a decision of a delegate of the Commissioner, refusing an extension of time to file evidence in opposition proceedings. Ferocem had applied for an extension of time of two months to serve the balance of its evidence in support of the opposition. Ferocem and the patent applicant were parties to proceedings in the Federal Court in which Ferocem had sought revocation of a petty patent. Ferocem wished to rely on the same evidence in the opposition proceedings as in the Court proceedings. It sought an extension of time in the opposition proceedings because the evidence in the Court proceedings had not been completed. The delegate rejected the application on
the ground that it was "imperative" that a person seeking the exercise of the Commissioner’s discretion provide the Commissioner with a full and frank disclosure of the facts giving rise to the need for an extension. The delegate considered that, although Ferocem's objective of making the evidence uniform in both proceedings was "laudable", no proper explanation of the delay had been provided.

Burchett J held that the delegate had erred in law. The broad discretion conferred by reg 5.10 could not be reduced by a decision-maker to imperative compliance with particular requirements. If the objective for which the extension was sought was "laudable", that was clearly a relevant consideration to be taken into account in the exercise of the Commissioner's discretion. An extension could be granted even where no satisfactory explanation for the delay had been given. His Honour explained (at 209) that the

“determination of an application for an extension of time under reg 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v Reynolds Metals Co (1969) 120 CLR 136 at 143, `the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be'.”

Burchett J expressed (at 209) sympathy with the delegate's desire to maintain standards, but said that the application should have been considered on its "true merits" and not on any narrow view confining attention to one aspect of the circumstances. Had the delegate regarded himself as free to take a wider view, he was likely to have concluded that a limited extension was appropriate to allow lodgment of some of the many affidavits which the applicant sought to file in the opposition proceedings. Burchett J continued as follows (at 209-210):

“Indeed, even where an application for a particular period, such as the two months sought here, is regarded as unjustified, it seems to me a decision maker, having a discretion of the kind conferred by reg 5.10, should always consider whether some short period ought to be allowed, so that an applicant who may have assumed some extension would be granted will not be shut out entirely from presenting evidence that may be immediately available. I am speaking of a case such as the present, where it was clear the applicant might well have had a quantity of evidence ready to file, although its desire was to lodge all the evidence at the same time and in conjunction with the presentation of evidence in the Federal Court proceedings.”

In this last passage, it is clear that his Honour's reference to "not being shut out entirely" was made with respect to evidence that is immediately available to the party wishing to rely on it.

A Duty on the Delegate?

Mr Kerr put Goninan's first submission in a number of ways. In essence, however, he submitted that the effect of the reasoning of Kaiser v Reynolds and Microcell is that, if an opponent has
evidence available that is relevant to the opposition proceedings, the delegate is under a duty to allow that evidence to be put on. This is so even if the opponent has failed to comply with time limits and even if its failure can be described as "lamentable".

Kaiser v Reynolds was an appeal by an opponent who had been denied locus standi by the Deputy Commissioner of Patents. Kitto J addressed a submission that he should exercise his discretion to refuse to allow the appellant-opponent to depart from the notice of opposition. His Honour expressed the opinion (at 143) that

"it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be."

It was this passage that Burchett J cited in Ferocem.

In Microcell, the Deputy Commissioner of Patents refused to accept an application for a patent for a self-propelled rocket projector. The refusal was based on the ground that the application was not for an invention, since there was nothing beyond putting a known material to a new use. Menzies J allowed an appeal and directed that the application should be accepted. On a further appeal, the High Court noted (at 244-245) that it was well settled that the Commissioner ought not to refuse acceptance of an application unless it appears practically
certain that letters patent granted on the specification would be held invalid. The Court continued (at 245):

"On the other hand, it is not to be overlooked that the Commissioner has a duty to the public as well as to the applicant for a patent, and, if it appears manifest that a valid patent could not be granted, the Commissioner not merely has power, but is under a duty, to reject the application under s 46."

The Court cited the observations of Latham CJ (with whom the other members of the Court agreed) in Sir W G Armstrong Whitworth & Co (Engineers) Ltd v Commissioner of Patents (1936) 42 ALR 131, at 132:

"...but where the Court is of opinion that, on the face of it, it is clear that no valid patent could result from the grant ... I think the Commissioner may properly be supported in refusing to give the grant. In my opinion, it is much more proper that the Commissioner should do that than that it should be left to the chance of some member of the public being prepared to undertake the not inexpensive task of challenging a patent."

In my opinion, the observations in the two High Court cases cannot be construed as imposing a duty on the Commissioner to grant an extension of time in opposition proceedings where the opponent has evidence available that supports its opposition to the grant of the patent. These observations were not made in the context of an application for an extension of time under reg 5.10. They cannot be read as supporting the imposition of a duty on the Commissioner in opposition proceedings, regardless of the
discretion conferred by reg 5.10(2) and the language of reg 5.10(5), which prevents the Commissioner granting an extension of time unless reasonably satisfied that the extension is appropriate in all of the circumstances.

The position is as stated in Ferocem. The Commissioner must take into account the public interest in determining a serious opposition on its merits. The Commissioner must give consideration to that aspect of the public interest, even where the party seeking an extension of time has failed to comply with procedural requirements specified in the Regulations. However, as Burchett J made clear in Ferocem, the public interest in having an opposition determined on its merits must be weighed with and against other considerations. It is not the only factor to be considered.

I should make one further point. Mrs Bennett submitted that, as a general rule, it was open to the Commissioner, in considering the public interest, to take account of the nature of opposition proceedings. As she pointed out, an opposition hearing takes place after acceptance of the applications and before grant. The term of a standard patent, which is now 20 years (Patents (World Trade Organisation Amendment) Acts 1994 (Cth)), s 4), runs from the date of the filing of the complete specification: Patents Act, ss 65, 67. Infringement proceedings cannot be commenced until after the grant of the patent, although the patentee can sue for infringements dating back to the date when the complete specification became open to public inspection: Patents Act, s
57. Undue delay in determining the opposition may of course work to the advantage of the opponent and the disadvantage of the applicant for the patent.

In the present case, as the delegate's reasons make clear, ABB had conceded that the proceedings would not be further protracted if an extension of time were to be granted, since Goninan had served the remainder of its evidence in support of its opposition prior to the hearing of the application for a further extension (although well outside the three month period prescribed by reg 5.8(1)(a)(i)(A)). Speaking generally, however, in my view, it is a relevant factor for the Commissioner to take into account that delays in determining opposition proceedings may unfairly disadvantage the applicant for a patent and may create difficulties for the efficient and orderly administration of the Patents Office. There is nothing novel in this proposition. Burchett J in Ferocem specifically identified the interests of the parties and the public interest in the expeditious disposal of matters in the Patents Office as factors to be weighed in the balance. Bowen CJ made observations to the same effect in Vangedal-Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144, at 150.

It follows from what I have said that the delegate was not under a duty to permit Goninan to rely on the three additional declarations in the opposition proceedings, regardless of the other circumstances of the case. He therefore did not err in failing to give effect to any such "duty".

The Explanation for the Delay

I do not think that there is any substance in Goninan's submission that the delegate proceeded on an incorrect assumption that Goninan had conceded that it had not made out a proper case to justify the application for extension. The full passage from the delegate's reasons shows that the delegate undertook his own analysis of the sufficiency of the evidence adduced by Goninan. He formed the view that the explanation for the delay was inadequate. That view was plainly open to him. The reference to the matter not "really being in dispute" is explicable by the comments of Goninan's counsel in the course of argument that it might be said that the evidence explaining the delay was "a little too general".

The First Application

Nor do I think that there is any substance in the contention that the finding that the first application was not properly based was "wholly irrelevant" to the determination of the second application. One of the factors to be taken into account in determining whether a further extension should be granted was the extent of any delay in filing evidence and whether Goninan had offered a satisfactory explanation for the delay, or any part of it. As Ferocem shows, this consideration cannot be regarded as paramount in the sense that it forecloses proper consideration of other relevant factors. But it was clearly a relevant factor in the delegate's deliberations and he was entitled to take into account that at no stage had a satisfactory explanation for the delay been forthcoming.

Proper and Genuine Consideration

In support of the submission that the delegate had failed to give genuine consideration to the public interest in having opposition proceedings determined on their merits, Mr Kerr relied on the judgment of Sheppard J in Hindi v Minister for Immigration and Ethnic Affairs (1988) 20 FCR 1 (FCA/Sheppard J). In a well-known passage (at 13) Sheppard J, after referring to Brelin v Minister for Immigration and Ethnic Affairs (FCA/Wilcox J, 14 May 1987 unreported), and Khan v Minister for Immigration and Ethnic Affairs (FCA/Gummow J, 11 December 1987, unreported but briefly noted at 14 ALD 291), said this:

"In Kahn's case, Gummow J reached the conclusion (at 12) that on the whole of the evidence in that case, the applications in question had not each been given `proper, genuine and realistic consideration upon the merits'. He relied on s 5(2)(f) of the Administrative Decisions (Judicial Review) Act which provides a ground for judicial review where there has been an exercise of a discretionary power in accordance with a rule or policy without regard to the merits of the particular case. Gummow J said (at 11-12):

'[W]hat was required of the decision maker, in respect of each of the applications, was that in considering all relevant material placed before him, he give proper, genuine and realistic consideration to the merits of the case and be ready in a proper case to depart from any applicable policy: Howells v Nagrad Nominees Pty Ltd (1982) 66 FLR 169 at 195; Kioa v West (1985) 159 CLR 550 at 604; Chumbairux v Minister for Immigration and Ethnic Affairs (1986) 74 ALR 480 at 492-494. That consideration included, in respect of each application, the effect or likely effect of refusal of the application upon members of the family; cf Tabag v Minister for Immigration and Ethnic Affairs (1982) 70 FLR 61 at 67, referred to by Wilson J in Kioa v West (supra) at 604. The
assertion by a decision maker that he has acted in this fashion will not necessarily conclude the matter; the question will remain whether the merits have been given consideration in any real sense: Turner v Minister for Immigration and Ethnic Affairs (1981) 55 FLR 180 at 184; Chumbairux v Minister for Immigration and Ethnic Affairs (1986) 74 ALR 480 at 495-496.'

I would, with respect, adopt what both Wilcox and Gummow JJ have said in these two cases. It matters not that one judge approached the matter by treating it as a case where a relevant consideration had been omitted from count and the other by treating the case as one where a policy had been applied without regard to the merits of the case. The essential principle upon which counsel for Mr Hindi relied was that the Minister, the Panel and the delegates were required to give proper consideration to the merits of the cases before them. So the question for decision is whether that consideration has been given to the applicant's case here. The answer to the question necessitates an analysis of the various decisions and memoranda to which reference has been made."

The comments of Gummow J in Khan and Sheppard J in Hindi have been followed in a number of cases: Surinakova v Minister for Immigration, Local Government and Ethnic Affairs (1991) 33 FCR 87 (FCA/Hill J), at 96; Sacharowitz v Minister for Immigration, Local Government and Ethnic Affairs (1991) 33 FCR 480 (FCA/Burchett J), at 486-487; Pattanasri v Minister for Immigration, Local Government and Ethnic Affairs (1993) 34 ALD 169 (FCA/Burchett J), at 178-179.

In applying Khan and Hindi it is necessary to bear carefully in mind the principles stated in Minister v Wu Shan Liang, to which I have already referred. As Mason J said in Minister for Aboriginal Affairs v Peko-Wallsend Ltd (1986) 162 CLR 24, at 41,
in general it is for the decision-maker and not the court to determine the appropriate weight to be given to the various matters which are to be taken into account in the exercise of a statutory power. The recent decision of the High Court in State of Queensland v J L Holdings Pty Ltd (1997) 141 ALR 353, indicates that there are circumstances in which a relevant factor (in that case, principles of case management) may be given such inappropriate weight, that other relevant factors (in that case, the attainment of justice) are in effect overlooked or supplanted (see at 356-357). But I do not read J L Holdings as detracting from the general principle stated in Peko-Wallsend.

The delegate's reasons indicate that he gave some consideration to that aspect of the public interest identified in Ferocem, namely, the public interest in having opposition proceedings determined on their merits. He stated that he had to consider the "public interests that whilst the outcome of proceedings should be correct and just, the proceedings should not be unduly protracted". Later in his reasons the delegate posed the question whether the possibility of the outcome of the opposition proceedings being "more correct" outweighed other factors. These passages, although somewhat cryptic, suggest that the delegate took into account the public interest in opposition proceedings when deciding not to grant a further extension. However, as Hindi shows, the assertion by a decision-maker that he or she has taken a factor into account does not necessarily determine whether proper, genuine and realistic consideration has been given to that factor.

In the present case, I think that there are difficulties in the path of a conclusion that the delegate did give proper, genuine and realistic consideration to the public interest in opposition proceedings being determined on their merits. One difficulty is that the delegate appears to have misinterpreted the comments made by Burchett J, towards the end of the judgment in Ferocem. The delegate expressed the view that those comments show that Burchett J was "concerned that an opponent should not be shut out entirely" (emphasis in original). According to the delegate, Goninan had already received a short extension because of "this" - presumably a reference to the fact that, unless the first extension had been granted, Goninan would not have been able to rely on any evidence. The delegate noted that Goninan would not be "shut out entirely" because some evidence had been served within the extension of time allowed by the first decision.

The comments made by Burchett J in Ferocem reflect the unexceptionable proposition that, in the exercise of the Commissioner's discretion under reg 5.10, the decision-maker should take into account the public interest that opposition proceedings be determined on their merits. His Honour was explaining that, even in a case where the opponent has failed to comply with time limits, the decision-maker should consider whether an extension (or further extension) should be granted to permit the opponent to rely on evidence which is immediately available. Burchett J was not confining his observations to a case where a party has not yet filed any evidence. Indeed, in Ferocem itself, the opponent had filed some evidence and the
question was whether it should be granted an extension to file further evidence.

Nor, in my opinion, was his Honour intending to say that a decision-maker need not consider whether an opponent who had already received an extension of time to file evidence should receive a further extension. That issue simply did not arise in Ferocem. It is, in my view, clear that the factors relevant to an exercise of the discretion conferred by reg 5.10(2) and (5) do not cease to be relevant simply because the opponent has already filed some evidence pursuant to a previous extension of time. The decision-maker still has to consider whether an extension to allow further evidence is appropriate, having regard to the public interest in having a serious opposition determined on the merits. Of course, that aspect of the public interest must be weighed with and against other relevant considerations, including the absence of any satisfactory explanation for the failure (or failures) to comply with the time limits specified in the Regulations.

It is not entirely clear what the delegate intended to convey by the remarks to which I have referred. He may have intended to say that, where an opponent has been granted one extension of time within which it has filed some evidence, and thereafter the opponent seeks a further extension, there is no need to take account of the public interest in opposition proceedings being determined on their merits. If he did intend to say this, I think he was in error.

However, having regard to the strictures in Minister v Wu Shan Liang, I do not think the delegate's reasons should be read this way. I think the better view is that the delegate merely intended to say that, where the opponent has filed some evidence pursuant to a previous extension of time, that aspect of the public interest should generally be accorded less weight, but should still be taken into account.

Even on this construction of the delegate's reasoning, there is a difficulty. In order for the Commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits. Indeed, I did not understand Mr Catterns to dispute this proposition. Rather, he submitted that a fair reading of the delegate's reasons led to the conclusion that he had considered the nature and significance of the evidence on which Goninan sought to rely in the opposition proceedings.

The delegate did not expressly refer to the nature of the evidence upon which Goninan sought to rely on the opposition proceedings, although he did say that he had been provided with copies of the three statutory declarations. Mr Catterns relied on the fact that the delegate recorded the submissions put by Goninan's then counsel. The submissions recorded by the delegate included the following:

• the decision in Ferocem required the delegate to consider a short extension of time for filing further evidence, even where the application was unjustified (in the sense that no satisfactory explanation for the delay had been given);

• the "nature of the evidence served establish[ed] that a serious and substantial opposition [was] in train";

• since the declaration of Mr Smith was already in evidence, a fairer result of the opposition proceedings would be achieved if all available evidence were admitted.

Mr Catterns contended that these submissions directed the delegate's attention to the importance of the evidence upon which Goninan sought to rely. He also contended that there was no reason to think that the delegate, who reserved his decision, did not read the statutory declarations before preparing his reasons.

The delegate acknowledged in the body of his reasons that Goninan had argued that the outcome of the substantive opposition would
be "more correct", if an extension of time were granted to allow the remainder of the evidence to be included in the opposition. The question the delegate posed for himself was whether this factor, and others relied upon by Goninan, outweighed the "private interests" of ABB and the fact that Goninan had not made out a proper case justifying an extension of time. It will be remembered that ABB had conceded that the proceedings would not be further protracted should an extension of time be granted, because Goninan had already served the remainder of its evidence.

The manner in which the delegate posed the issue is not inconsistent with his having taken into account the nature and significance of the evidence upon which Goninan sought to rely. I also accept that the fact that the delegate did not specifically advert to the nature and significance of that evidence does not necessarily mean that he failed to take these matters into account. However, in my view, if the reasons are read as a whole, I think it emerges clearly that the delegate did not address his mind to the nature and significance of the evidence upon which Goninan proposed to rely.

The delegate expressed the view that the public interest would not be greatly compromised if the extension were to be denied, because Goninan had not been "shut out entirely". In context, I think that this is a reference to the fact that Goninan had already been granted one extension of time and had served some evidence within the extended period. The balance of the delegate's reasons shows that he considered that the key factor
in his decision was that Goninan was seeking a second extension of time without ever having made out a proper case for any extension at all. He expressed the view that the

"public interest would not be best served in the long run if I were to allow the present unjustified extension after the previous unjustified extension has been allowed".

This unequivocal language does not suggest that the delegate weighed in the balance the nature and significance of the evidence upon which Goninan sought to rely, before concluding that a second extension should not be granted. The point is made clearer by the delegate's subsequent reasoning. He said this:

"It seems ludicrous that a party could be granted a further short period after having not made out a proper case when that party has already received a short extension of time after not earlier making out a proper case." (Emphasis added.)

In my view, this is not the language of a decision-maker who has considered the substance of the evidence upon which the opponent in opposition proceedings seeks to rely. The point of the delegate's unequivocal language is to demonstrate that an opponent, who has already received one unjustified extension, should not be regarded as eligible to receive a second unjustified extension.

Like Burchett J in Ferocem, I have every sympathy with the delegate's desire to insist upon the maintenance of proper
standards. I do not suggest that it was not open to the delegate to take into account Goninan's failure, not merely on one occasion, but on two occasions, to provide a satisfactory explanation for the delays in finalising its evidence. Indeed, it was open to the delegate to give considerable weight to this factor. However, he could not regard the absence of any proper explanation as being such a powerful consideration that it obviated the need to address the nature and significance of the evidence upon which Goninan wished to rely in the opposition proceedings. This is what I think the delegate did. He thereby prevented himself from giving genuine consideration to a relevant matter, namely, the public interest in opposition proceedings being determined on their merits.

Conclusion

For the reasons I have given, the delegate's decision should be set aside. Mr Kerr, in his final submissions, did not dispute that if I came to this conclusion the matter should be remitted to the delegate for further proceedings to be determined according to law. ABB should pay Goninan's costs of the application. No order should be made in respect of the Commissioner's costs.

I certify that this and the preceding 28 pages are a true copy of the Reasons for Judgment of the Honourable Justice Sackville.

Associate:

Dated: 23 May, 1997

Heard: 1, 2 May, 1997

Place: Sydney

Decision: 23 May, 1997

Appearances: Mr P. Kerr, Solicitor, Allen Allen & Hemsley, appeared for the applicant.

Mrs A. Bennett SC, instructed by the Australian Government Solicitor, appeared for the Commissioner.

Mr D.K. Catterns QC, instructed by Clayton Utz, Solicitors, appeared for the second respondent.

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