FEDERAL COURT OF AUSTRALIA

Frederikshavn Vaerft A/S v Stena Rederi Aktiebolag [2002] FCA 1024

PATENTS – Opposition proceedings – Hearing by Commissioner of Patents – Opponent sells business, including rights in opposition proceedings – Commissioner dismisses opposition – Opponent appeals to Court against dismissal – Opponent seeks order that its purchaser replace it as appellant – Whether power to make order – Nature of appeal from Commissioner – Choses in action – Whether opponent’s appeal a chose in action – Whether a proprietary right.

Federal Court Rules Order 6 rules 8, 9, 10(2)

Patents Act 1990 (Cth) ss 60(4), 160(e)

Patents Regulations 1991 (Cth) reg 5.3B

Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 applied

Genetics Institute Inc v Kirin‑Amgen Inc (1996) 67 FCR 527 cited

Dennison Manufacturing Co v Monarch Marking Systems Inc (1981) 51 OJPTMD 1716 cited

Turnbull v New South Wales Medical Board [1976] 2 NSWLR 281 considered

Builders Licensing Board v Sperway Constructions (Syd) Pty Ltd (1976) 135 CLR 616 cited

Harris v Caladine (1991) 172 CLR 84 cited

Esber v The Commonwealth (1992) 174 CLR 430 cited

Re Costello (1979) 2 ALD 934 considered

Cummings v Claremont Petroleum NL (1996) 185 CLR 124 considered

Torkington v Magee [1902] 2 KB 427 cited

Norman v Federal Commissioner of Taxation (1963) 109 CLR 9 cited

Investors Compensation Scheme Ltd v West Bromwich Building Society [1998] 1 WLR 896 cited

FREDERIKSHAVN VAERFT A/S (formerly Danyard A/S) v STENA REDERI AKTIEBOLAG

V 230 OF 2000

SUNDBERG J

16 AUGUST 2002

MELBOURNE

THE COURT DECLARES THAT Austal Ships Pty Ltd is entitled to replace Danyard A/S (now Frederikshavn Vaerft A/S) as opponent.

THE COURT ORDERS THAT

1.             The Commissioner of Patents amend the notice of opposition naming Danyard A/S (now Frederikshavn Vaerft A/S)as opponent so as to substitute Austal Ships Pty Ltd as the named opponent.

2.             Austal Ships Pty Ltd be joined as an applicant in the proceeding.

3.             Frederikshavn Vaerft A/S cease to be applicant in the proceeding.

4.             Austal Ships Pty Ltd pay the respondent’s costs of the Motion dated 12 December 2001.

5.             The respondent pay the applicant’s costs of the Motion dated 1 May 2002.

6.             A copy of this Order be served on the Commissioner of Patents.

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

REASONS FOR JUDGMENT

INTRODUCTION

1                     The applicant (“Danyard”) applied for an order that Austal Ships Pty Ltd (“Austal”) be substituted for it as applicant in the proceeding.  A Registrar made the order sought.  The respondent (“Stena”) seeks a review of the Registrar’s order under s 35A(5) of the Federal Court of Australia Act 1976 (Cth).  The review is a hearing de novo.  On the review Danyard has relied on the same affidavit material that was before the Registrar.  Stena did not file evidence.

BACKGROUND

2                     In 1992 Stena made patent application 648634.  The subject matter of the application is a hull for multi‑hull seagoing vessels capable of speeds greater than 30 knots.  In July 1994 Danyard lodged notice of opposition to the application.  The opposition was heard by a delegate of the Commissioner of Patents on 13 April 1999.  By agreement dated 16 December 1999 Danyard sold its business and the business assets to Austal (“the sale agreement”).  The business assets included “Industrial Property Rights”.  That expression was defined to include listed patents, patent applications, trade marks and two opposition proceedings described as follows:

“the opposition proceedings against certain patent applications made by Stena Rederi Aktiebolag commenced by the Vendor before the opposition division of the European Patent Office on 21 June 1995 and before the Australian Patent Office on 28 July 1994, any appeals to the Board of Appeal of the European Patent Office … or to the Australian Patent Office as the case may be, and any other right of action, remedy or proceeding that is or may become available to the Vendor deriving or arising from or in relation to those proceedings or the Vendor’s standing to bring those opposition proceedings.”

Clause 13.2 provided:

“The Vendor shall be a trustee for the Purchaser in respect of the Business Assets as from the date of this Agreement until the same shall have been delivered and/or formally transferred or assigned to the Purchaser.”

On 29 March 2000 the delegate dismissed Danyard’s opposition.  On 19 April 2000 Danyard appealed to the Court against the Commissioner’s decision.  In April 2001 Danyard went into liquidation in Denmark.  The application to the Registrar was made on 12 December 2001.

THE MOTION

3                     In its notice of motion Danyard seeks the following orders:

“1.       Austal Ships Pty Ltd be named as applicant in these proceedings in substitution for Frederikshavn Vaerft A/S and the proceedings hereafter be re‑entitled accordingly.

2.                  Frederikshavn Vaerft A/S be removed as applicant in these proceedings with no order as to costs.

3.                  The rights and liabilities accruing to Frederikshavn Vaerft A/S in these proceedings to the date of substitution and removal pursuant to paragraphs 1 and 2 shall be transferred to Austal Ships Pty Ltd.

4.                  The costs of and incidental to this application be paid by Austal Ships Pty Ltd.

5.                  Such further or other orders as the Court considers appropriate.”

EVIDENCE IN SUPPORT OF APPLICATION

4                     In support of its application Danyard relied on three main affidavits.  The first is that of James Black, Austal’s Service Manager.  Mr Black deposes that

·               in 1990, before the priority date of the opposed patent application, Austal designed and built two vessels having all the features of claim 1 of the application

·               since 1990 Austal has built many more vessels in the same field as the patent application

·               Austal has an interest in ensuring that Stena’s patent application does not proceed to grant, since Austal preceded Stena in the field of the patent, still operates in the field, and will suffer a significant restriction in its business if the patent is granted

·               from the early 1990s Danyard marketed a Seajet type vessel with a hull design having many similarities to the Austal hull shapes and the hull shape disclosed in Stena’s patent application

·               Austal did not lodge a notice of opposition to Stena’s patent application, but became aware of Danyard’s opposition in 1994

·               from 1994 Austal, through Mr Black, assisted Danyard in relation to the opposition by preparing reports on Stena’s application and the prior art, reviewing Stena’s evidence, assisting in the preparation of Danyard’s evidence, and attending the opposition proceedings

·               after the Commissioner’s decision on the opposition, Austal recommended an appeal, suggested local experts who could assist the appeal, and helped with the preparation of evidence for the appeal

·               to date Austal has spent approximately $1,100,000 in legal costs associated with the opposition proceedings before the Commissioner and in the Court, most of which was spent after Austal acquired Danyard’s business in December 1999

·               Austal has spent about $700,000 in legal costs associated with the opposition to Stena’s patent application in Europe, an application with the same subject matter as the application in Australia and the same priority date

·               the European opposition proceedings were instituted by Danyard, but on 19 November 2001 the Board of Appeal of the European Patent Office granted Austal’s application to be substituted for Danyard

·               neither Austal nor Danyard took steps to have Austal substituted for Danyard as applicant in the Australian proceeding because Austal believed its interests were adequately protected by the sale agreement, pursuant to which Danyard was trustee for Austal of the opposition rights

·               in October 2001 Austal became aware that Danyard would in due course be liquidated, and it became necessary to ensure that Austal replace Danyard as applicant because Danyard “would not be able to continue to act as trustee of the right for much longer”

·               it was not until late 2001 that Austal received legal advice that a mechanism existed (reg 5.3B of the Patents Regulations 1991 (Cth) (“the Regulations”)) whereby a right of opposition could be transferred to another person.

5                     The second affidavit is that of Anthony Ward, a patent attorney, who deposes that

·               in July 1994 his firm was instructed by Danish patent attorneys to lodge notice of opposition to Stena’s patent application, which the firm did

·               in the course of preparing evidence to support the opposition Mr Ward discovered Austal’s involvement in the prior art

·               in December 1995 or early January 1996 Mr Ward was contacted by Austal’s Mr Black who offered to assist Danyard in the opposition

·               from January 1996 to the present Mr Black has had an active role in assisting Mr Ward with the carriage of the opposition, including giving expert evidence in the Patents Office and in the proceedings in the Court

·               Austal was involved in the progress of the European opposition, instructing British patent agents to ensure that evidence and submissions along the lines of the Australian material were submitted to the European Patent Office

·               after the adverse decisions on the opposition in the Australian and European Patent Offices, Austal instructed Mr Ward to appeal to the Court and the Board of Appeal respectively

·               the appeals were instituted in Danyard’s name on the basis that Danyard was trustee for Austal of the intellectual property rights under the sale agreement, and because Mr Ward was unclear as to how to register a transfer of the right of opposition in Australia

·               in October 2001, on becoming aware that Danyard was about to go into liquidation, Mr Ward and his firm’s legal advisers gave consideration to ensuring that the appeals could proceed despite Danyard’s liquidation

·               in November 2001, pursuant to a request by Austal’s British patent attorneys, the European Patent Office transferred the European proceedings into Austal’s name

·               Mr Ward recently became aware of the introduction of reg 5.3B of the Regulations

·               Mr Ward exhibits an extract from the Australian Official Journal of Patents stating that reg 5.3B had been added “to explicitly allow for the situation where the right to oppose is transferred as part of the transfer of a business”.

6                     The third affidavit is that of Danyard’s and Austal’s solicitor, Benny Browne, who deposes that

·               in April 2000 his firm was retained by Danyard in respect of the appeal the subject of this proceeding, and instructed that since the opposition proceedings before the Commissioner had been in Danyard’s name, it would consent to be named as applicant in the appeal, even though its business had been taken over by Austal

·               pursuant to those instructions the notice of appeal was filed in Danyard’s name

·               in January 2001 his firm informed Stena’s solicitors that Austal had acquired Danyard’s business

·               in February 2001 Stena’s solicitors sought details of Austal’s acquisition

·               on 12 October 2001 Mr Browne informed Stena’s solicitors that he had recently been instructed that Danyard was about to be liquidated, and sought Stena’s consent to the substitution of Austal for Danyard as applicant under Order 6 rule 10(2) of the Federal Court Rules (“the Rules”)

·               in response to a request by Stena’s solicitors for particulars of Mr Browne’s contention that Danyard’s interests in the appeal had passed to Austal, Mr Browne gave the solicitors a copy of the sale agreement

·               on 26 October 2001 Stena’s solicitors advised that their client would oppose the substitution of Austal.

NATURE OF AN APPEAL UNDER S 60(4)

7                     Section 59 of the Patents Act 1990 (Cth) (‘the Act”) provides:

“The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:

(a)               that the nominated person is either:

(i)                 not entitled to a grant of a patent for the invention; or

(ii)               entitled to a grant of a patent for the invention but only in conjunction with some other person;

(b)               that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b);

(c)               that the specification filed in respect of the complete application does not comply with subsection 40(2) or (3);

(d)               that the invention is not a patentable invention under subsection 18(2).”

8                     Section 60 provides:

“(1)     Where the grant of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations.

(2)               The Commissioner must give the applicant and the opponent a reasonable opportunity to be heard before deciding a case.

(3)               The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.

(4)               The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section.”

9                     Section 160 provides:

“On hearing an appeal against a decision or direction of the Commissioner, the Federal Court may do any one or more of the following.

(a)               admit further evidence orally, or on affidavit or otherwise;

(b)               permit the examination and cross‑examination of witnesses, including witnesses who gave evidence before the Commissioner;

(c)               order an issue of fact to be tried as it directs;

(d)               affirm, reverse or vary the Commissioner’s decision or direction;

(e)               give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)                order a party to pay costs to another party.”

10                  While s 60(4) uses the word “appeal”, a proceeding under that sub‑section is in the original jurisdiction of the Court.  The appeal is not an appeal stricto sensu.  It is a hearing de novo: Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136 at 142.  On the appeal the Court’s powers include the power to do everything the Commissioner could have done in making the decision under appeal: Genetics Institute Inc v Kirin‑Amgen Inc (1996) 67 FCR 527 at 529.  And see Dennison Manufacturing Co v Monarch Marking Systems Inc (1981) 51 OJPTMD 1716.

11                  In Turnbull v New South Wales Medical Board [1976] 2 NSWLR 281 at 297‑298  (“Turnbull”) Glass JA considered various types of “appeal”:

“They vary greatly in the extent to which the appellate court may interfere with the result below.  Graded in ascending order, in accordance with the width of the corrective power exercised by the appeal court, they are as follows:

…

(d)               Appeals from a judge in the strict sense, eg appeals to the High Court.  If the judge has fallen into an error of law, or has made a finding of fact which is clearly wrong, the appellate court will substitute its own judgment.  Only such judgment can be given as ought to have been given at the original hearing.  Later changes in the law are disregarded and additions to the evidence are not allowed ….

(e)               Appeals from a judge by way of rehearing … If errors of law or wrong findings of fact have occurred below, the appellate court will try the case again on the evidence used in the court below, together with such additional evidence as it thinks fit to receive.  Since it will decide the appeal in the light of the circumstances which then exist, changes in the law will be regarded ….

(f)                Appeals involving a hearing de novo ….  All the issues must be retried.  The party succeeding below enjoys no advantage, and must, if he can, win the case a second time ….”

See also Builders Licensing Board v Sperway Constructions (Syd) Pty Ltd (1976) 135 CLR 616 (“Sperway”) at 619‑622 per Mason J, with whom Barwick CJ and Stephen J agreed, and Harris v Caladine (1991) 172 CLR 84 at 124‑125 per Dawson J.

12                  In relation to an appeal by way of rehearing, Glass JA, Mason J and Dawson J note that changes in the law since the initial decision will be taken into account.  No such observation is made in relation to an appeal involving a hearing de novo.  But I think it follows from the nature of such a hearing, and from the fact that Glass JA arranged the appeals in ascending order in accordance with the width of the corrective power exercised by the appellate court, that regard is to be had to the law as it exists at the date of the new hearing.  In Esber v The Commonwealth (1992) 174 CLR 430 at 448‑449 Brennan J said:

“Exercising an administrative jurisdiction, the AAT determines applications for review on a rehearing de novo, acting on the materials before it when it makes its determination.  Where, on a rehearing de novo, the question for decision is whether an applicant should be granted a right, the law as it then exists is applied, not the law as it existed at an earlier time.  By contrast, in a judicial proceeding brought to enforce an alleged right accrued at the time when the proceedings were instituted, the question for decision is determined according to the law existing when the proceedings were instituted unless statute otherwise provides.”

His Honour was in dissent in that case, but not so as to affect those observations.  In a footnote to the second sentence, Brennan J referred with approval to Re Costello (1979) 2 ALD 934 at 943‑944.  That was a decision of the Administrative Appeals Tribunal.  Having considered the cases dealing with the various meanings of “appeal” (including Turnbull and Sperway), the Tribunal noted that none of those cases involved a change in the relevant law between the date of the administrator’s decision and the date of the decision of the review tribunal.  In Costello there had been such a change.  The Tribunal went on, in the passage cited by Brennan J, to say (at 943‑944):

“where, as in the present matter, the law has been changed between the date of the administrator’s decision and the decision of this Tribunal, it seems to us that the question as to the law to be applied by the Tribunal must be resolved by having regard:

(i)                 to the nature of the decision under review; and

(ii)               to the provisions of the legislation by which the change in the law is effected ….

The nature of the decision under review may require the Tribunal to consider the facts and circumstances before it in the light of the law at some anterior date in order to form an opinion as to the accrued rights or liabilities of the applicant ….  A subsequent change in the law will not affect the matter unless it is expressed to apply retrospectively ….

…

But where the nature of the decision under review does not involve a consideration of accrued rights or liabilities but rather involves an investigation whether the applicant has a present entitlement to the grant of a right or privilege, we have concluded that, unless the amending law otherwise provides we should apply the law as amended as at the date of our decision.”

It will be necessary to return to the significance to the present case of the preceding discussion.

DANYARD’S GROUNDS

13                  As I understood Danyard’s argument, it relied first on reg 5.3B of the Regulationsand in the alternative on Order 6 rule 10(2) of the Federal Court Rules as the source of the power to make the orders sought.

Regulation 5.3B

14                  I will deal with reg 5.3B first.  The regulation came into operation on 24 May 2001.  It is as follows:

“(1)     This regulation applies if a person files a notice of opposition and the right or interest on which he or she relied to file the notice is subsequently vested in another person (the new opponent).

(2)               The new opponent may give to the Commissioner notice, in writing, that the right or interest is vested in him or her and request the Commissioner, in writing, to amend the notice of opposition to record his or her name.

(3)               The Commissioner may grant the request on the terms (if any) that the Commissioner specifies by written notice to the new opponent.

(4)               The Commissioner must give to the parties to the opposition the opportunity to make representations concerning the proposed amendment.

(5)               If the Commissioner allows the amendment:

(a)          he or she must give the applicant a copy of the notice of opposition as amended; and

(b)          the opposition is to proceed in the name of the new opponent.”

It was submitted that although the regulation deals with the powers of the Commissioner in respect of a patent opposition, the Court has the same powers as the Commissioner by virtue of s 160(e) of the Act, which enables the Court, on hearing an appeal against a decision of the Commissioner, to “make any order, that, in all the circumstances, it thinks fit”.  See the Genetics case referred to in par 10.  In this connexion it was pointed out that the present appeal is a hearing de novo, and it was said that the patent opposition was thus “yet to be determined”.

15                  Regulation 5.3B did not come into operation until some fourteen months after the opposition proceedings before the Commissioner concluded.  Obviously the Commissioner could not have allowed an amendment to the notice of opposition so as to permit the opposition to proceed in Austal’s name.  However the Court’s power under s 160(e) is not limited to making orders or giving directions the Commissioner could have made or given.  As explained in pars 10 to 12 this appeal is a hearing de novo and, so long as it does not affect any accrued rights of Stena (cf par 12 above), I may have regard to the law as it exists at the date of that hearing.

16                  The issues raised by the present submission are:

·               whether the making of an order that Austal replace Danyard as opponent would affect any accrued right of Stena

·               whether the right or interest on which Danyard relied to file its notice of opposition has become vested in Austal

·               whether it is appropriate to order under s 160(e) that Austal replace Danyard as opponent and that the opposition proceed in Austal’s name.

17                  Does Stena have an accrued right to have the opposition proceedings continue in accordance with the law as it stood at the time the notice of opposition was filed?  Prior to the making of reg 5.3B Stena’s defence of Danyard’s opposition was not susceptible to the possibility that Danyard’s sale of its business might result in the opposition continuing in the name of the purchaser.  In my view that is not an accrued right.  The regulation is a procedural facility enabling the purchaser of an opponent’s business (including opposition proceedings) to seek an order that the proceedings continue as if the purchaser were the opponent.  There is no alteration of Stena’s rights.  Its pursuit of a patent is currently being opposed by Danyard.  If Austal replaces Danyard, Austal will become the opponent.  The nature of the opposition will not change.

18                  The next question is whether the right or interest on which Danyard relied to file its notice of opposition vested in Austal.  I pose this question not because I am considering whether to make an order under reg 5.3B, but because, in fashioning an appropriate order under s 160(e), I am entitled to have regard to the fact that reg 5.3B exists, and empowers the Commissioner to make orders of the type I am asked to make under s 160(e).  The right or interest on which Danyard relied was that from the early 1990s it marketed a Seajet hull design having many similarities with the hull shape disclosed in Stena’s patent application.  That was part of the business Danyard sold to Austal.  That business passed to, or became the property of, Austal as a result of the sale agreement.  It thereby vested in Austal.

19                  Regulation 5.3B requires the new opponent to give notice to the Commissioner of the vesting in it of the opponent’s right or interest and request the Commissioner to amend the notice of opposition.  The Commissioner must give the parties to the opposition the opportunity to make representations concerning the proposed amendment.  Obviously none of these steps has been taken in the precise manner contemplated by the regulation.  But that does not matter.  As I have said, I am not considering whether to make an order under reg 5.3B.  The essential concern of the procedural requirements of the regulation is that the parties to the opposition have the opportunity to make submissions on the matter.  In substance that has happened as a result of this motion.  The Court has power under s 160(e) to make any order it thinks fit.  In determining whether to make the substitution, the Court will consider whether the safeguards in the regulation have been satisfied.  If, as in the present case, they have, it may, all other things being equal, make the order sought.

20                  The final question is whether the Court should order that the notice of opposition be amended so as to show Austal as opponent.  The facts I have summarised in pars 4 to 6 show a clear case for making such an order.  Austal has a genuine and substantial commercial interest in the opposition and its prosecution.  It has purchased the business of the opponent, together with the right to maintain the opposition.  Even before the purchase Austal had a genuine commercial interest in the opposition.  On the evidence now before me, whatever may be the position at trial, Austal entered the field of Stena’s patent application before Stena, and continues to operate in the field.  If granted, the patent has the potential to be a significant restriction on Austal’s business.  Austal has already taken part in the opposition through its alliance with Danyard, and has expended significant sums in costs associated with the opposition proceedings in the Patent Office and in the Court.  Most of the costs have been incurred since its purchase of the business.  All these costs would be wasted if Austal cannot be substituted as opponent before Danyard is dissolved.

21                  Austal has explained its delay in causing Danyard to make this application.  Until it discovered that Danyard was to be liquidated, Austal felt adequately protected by the sale agreement in which Danyard declared itself trustee for Austal of all the business assets, which included the opposition proceedings and the rights flowing therefrom.  It was only in October 2001 that Austal became aware that Danyard was going to be liquidated in due course, and it became necessary for Austal to be substituted as opponent.  Austal had disclosed to Stena its acquisition of Danyard’s business about ten months earlier.  In October 2001 it sought Stena’s consent to the substitution, and provided it with the evidence showing its title to the opposition proceeding.

22                  Danyard is entitled to an order under s 160(e) that Austal replace it as opponent.  I will consider the precise form of the order in pars 29 and 30.

Order 6 rule 10(2)

23                  Danyard relies on Order 6 rule 10(2) of the Rules for the order that it be substituted for Danyard as applicant in the proceeding in Court.  Rule 10 is as follows:

“(1)     Where a party dies or becomes bankrupt but a cause of action in the proceeding survives, the proceeding shall not abate by reason of the death or bankruptcy.

(2)               Where the interest or liability of a party passes by assignment, transmission, devolution or otherwise to another person, the Court may make orders for the addition, removal or re‑arrangement of parties and may make orders for the further conduct of the proceeding.

(3)               The Court may act under sub‑rule (2) on application by a party or by a person to whom the interest or liability passes or of its own motion.”

In my view rule 10(2) is not available to Danyard.  Rule 10 is concerned with a proceeding during the subsistence of which the death or bankruptcy of a party occurs, or a party’s interest or liability in the proceeding passes to another person.  In the present case Danyard’s interest passed to Austal before the present proceeding commenced.

24                  Rules 8 and 9 of Order 10 provide a more likely source of the power to make the order sought.  Rule 8(1) provides:

“Where a person who is not a party –

(a)               ought to have been joined as a party; or

(b)               is a person whose joinder as a party is necessary to ensure that all matters in dispute in the proceeding may be effectually and completely determined and adjudicated upon;

the Court, on application by him or by any party or of its own motion, may order that he be added as a party and make orders for the further conduct of the proceeding.”

Rule 9 provides:

“Where a party –

(a)               has been improperly or unnecessarily joined; or

(b)               has ceased to be a proper or necessary party,

the Court, on application by any party or of its own motion, may order that he cease to be a party and make orders for the further conduct of the proceeding.”

25                  Stena contends that no order for substitution should be made under rules 8 and 9 because a right of appeal under s 60(4) is not assignable since it is not a chose in action.  It is not a chose in action because it is not a proprietary right which, it was said, is an essential characteristic of a chose in action.  For the proposition that a right of appeal does not have the character of property, reliance was placed on the following observations of Brennan CJ, Gaudron and McHugh JJ in Cummings v Claremont Petroleum NL (1996) 185 CLR 124 (“Cummings”) at 133:

“A right to appeal may be a substantive right, but it is another question whether such a right has the character of property.  Some rights created by statute can constitute property, but a right to appeal does not have the character of property merely because it is the creature of statute.  A chose in action may be the property of the person entitled to enforce it, but a liability to satisfy a judgment enforcing a chose in action is not property of the person against whom the judgment is entered.”

In that case a sequestration order was made against the estate of a respondent to proceedings in this Court after judgment had been reserved but before it was delivered.  Judgment was then pronounced against the respondent for substantial damages for conspiracy, deceit and breach of duty as a director.  Judgment was entered pursuant to leave granted.  The bankrupt’s appeal to the Full Court was dismissed as incompetent.  On appeal to the High Court, Brennan CJ, Gaudron and McHugh JJ held that the bankrupt had no standing to institute the appeal on the ground that so far as a judgment entered against a bankrupt creates or evidences a provable debt in the bankruptcy, the bankrupt has no financial interest that confers standing to appeal in his own name against the judgment, and even his contingent interest in a surplus in the estate does not give him such an interest.  See 137‑138.  Dawson and Toohey JJ denied the bankrupt standing on the ground that the right of appeal conferred by s 24 of the Federal Court of Australia Act is “property” as defined by s 5(1) of the Bankruptcy Act 1966, and hence property of the bankrupt as there defined which vests in his trustee by s 58(1)(a), and property of the bankrupt divisible amongst creditors within s 116(1).  Dawson and Toohey JJ did not deal with the ground relied upon by the other members of the Court.  But the latter were of the view that the right of appeal was not “property”.

26                  The conclusion of Brennan CJ, Gaudron and McHugh JJ that the right of appeal in question in Cummings was not “property” was not, in my view, based on any general proposition that a right of appeal can never be property, but on the more narrow basis that a judgment debtor’s right to appeal against the judgment is not property of the debtor.  The only general proposition enunciated was that a right of appeal does not have the character of property merely because it is the creature of statute.  That does not deny that in a particular case a right of appeal may have a proprietary character.

27                  In order for Danyard’s right of appeal under s 60(4) to be a chose in action it must be a proprietary right.  In Torkington v Magee [1902] 2 KB 427 at 430 Channell J said:

“Chose in action is a known legal expression used to describe all personal rights of property which can only be claimed or enforced by action, and not by taking physical possession.”

Most commentators have adopted this passage as stating the requirement that an essential characteristic of a chose in action is that the right concerned has a proprietary character.  See, for example, Starke, Assignments of Choses in Action in Australia (1972) at 3, Halsbury’s Laws of England 4^th ed vol 6 (1974) par 1 and Snell’s Equity 30^th ed (2000) par 5‑01.  See also Norman v Federal Commissioner of Taxation (1963) 109 CLR 9 at 26 per Windeyer J and Investors Compensation Scheme Ltd v West Bromwich Building Society [1998] 1 WLR 896 (“Investors Compensation”) at 915 per Lord Hoffmann.

28                  There is, I think, much to be said for the view that Danyard’s right of appeal against the Commissioner’s dismissal of the opposition is not a proprietary right.  If successful, the appeal does not result in the recovery, ownership or possession of any real or personal property.  All that success involves is the thwarting of another person’s attempt to obtain a patent.  That may have commercial advantages for the successful party, but it does not carry with it a right of property.  A right of appeal is but one type of right to seek the assistance of a court.  The “first instance” rights that have been treated as choses in action are all causes of action the successful pursuit of which involves the recovery of property.  Illustrations are a claim for unliquidated damages for breach of contract or for tort, the right of a trustee to recover trust funds from a former trustee guilty of breach of trust, an assignor’s right to be indemnified by an assignee against the covenants in a lease assigned, a right of re‑entry on non‑payment of rent, and the right to property in title deeds in the hands of a third person.  See Halsbury, op.cit. par 8.  In all these cases the successful litigant obtains money or other property as a result of the suit.  It is presumably this feature of the action that confers the proprietary character requisite for a chose in action.  As Lord Hoffmann said in Investors Compensation at 915, a chose in action is property, “something capable of being turned into money”.

29                  In the present case Danyard’s appeal is against the Commissioner’s decision that its grounds of opposition under s 59 were not made out.  If it were to succeed, Danyard would obtain no money or other property, though it would frustrate a competitor’s application for a patent.  The position is not unlike that in Cummings, where the right of appeal carried no right to recover property; just the right to have a liability to pay money set aside.  However, I need not decide the point.  If the notice of opposition is amended so as to substitute Austal for Danyard as opponent, with the result that the opposition will proceed in the name of Austal, Austal will become the objector in place of Danyard.  In those circumstances there is every reason to make an order substituting Austal for Danyard as applicant.  It is neither here nor there that, if the s 160(e) order were not made, a substitution under the Rules would not be made because Danyard’s opposition or right of appeal is not a chose in action and so could not pass to Austal.  For the avoidance of doubt I should add that I see no inconsistency between saying that Danyard’s right of appeal is not assignable since it is not a chose in action (if that be the case), and the conclusion to which I have come in par 18 that for the purposes of reg 5.3B(1) Danyard’s right or interest on which it relied to file its notice of opposition vested in Austal.

CONCLUSION

30                  I will declare that Austal is entitled to replace Danyard as opponent.  I will direct the Commissioner to amend Danyard’s notice of opposition so as to substitute Austal for Danyard as opponent.  I have made those orders under s 160(e) and not under reg 5.3B because they are not orders  the Commissioner could have made when the matter was before him, and the regulation does not confer power on the Court.  I will order under Order 6 rule 8 that Austal be joined as an applicant and under rule 9 that Danyard cease to be applicant.  Stena must pay the costs of the motion.

Associate:

Dated:              16 August 2002