FEDERAL COURT OF AUSTRALIA

White v Designated Manager of IP Australia [2008] FCA 815

Human Rights and Equal Opportunity Commission Act 1986 (Cth)

Patents Act 1990 (Cth)

Patent Regulations 1991 (Cth)

Racial Discrimination Act 1975 (Cth)

Advanced Switching Services Pty Ltd v State Bank of New South Wales t/as Colonial State Bank (2001) ATPR 41-848

Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 66 IPR 19

STEPHEN WALLACE WHITE v DESIGNATED MANAGER OF IP AUSTRALIA

VID 1020 of 2007

GORDON J

13 MAY 2008

MELBOURNE

THE COURT ORDERS THAT:

1.         The applicant is granted leave to file his Further Amended Application for an Order of Review dated 9 May 2008 but excluding proposed grounds 9, 10 and 11.

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

REASONS FOR JUDGMENT

1                          Stephen Wallace White (“the Applicant”) seeks review of a decision by the Designated Manager of IP Australia (“the Respondent”) to refuse his application for registration as a patent attorney.  The registration of patent attorneys is regulated by the Patents Act 1990 (Cth) (“the 1990 Patents Act”) and the Patent Regulations 1991 (Cth) (“the Regulations”).  On 11 October 2007, the Applicant was refused registration as a patent attorney on the basis that he did not meet the requirement of employment experience in s 198(4)(c) of the 1990 Patents Act and reg 20.3 of the Regulations.

2                          Section 198(4) of the 1990 Patents Act provides that the Designated Manager must register as a patent attorney a person who:

(a)        is ordinarily resident in Australia; and

(b)       holds such qualifications as are specified in, or ascertained in accordance with, the regulations; and

(c)        has been employed as prescribed for not less than the prescribed period; and

(d)       is of good fame, integrity and character; and

(e)        has not been convicted of a prescribed offence during the previous 5 years; and

(f)        is not under sentence of imprisonment for a prescribed offence.

3                          Regulation 20.3 sets outs the “prescribed employment” for the purposes of s 198(4)(c) of the 1990 Patents Act.  It provides the person must be employed:

(a)        in any of the following capacities:

(i)         as a technical assistant in a patent attorney's practice;

(ii)        in employment in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporations Law;

(iii)       in the Patent Office as an examiner of patents under the Act or the 1952 Act; and

(b)       for either:

(i)         1 year continuously; or

(ii)        at least 1 year within 2 continuous years.

4                          The Applicant contends that his experience in his own law firm practising in intellectual property matters satisfies the employment conditions for registration as a patent attorney in reg 20.3(3)(a)(i) or (ii).  In the decision under review, the Respondent noted that the Applicant had not claimed to be employed as a technical assistant in a patent attorney’s office or in the patents office.  Accordingly, the Respondent proceeded to consider the application for registration under reg 20.3(a)(ii).  The Respondent concluded that the Applicant's experience in his own law firm did not fall within reg 20.3(a)(ii).  The reasons for decision recorded the following consideration of the issue:

5.4       In examining the evidence supplied by Mr White relating to employment, I considered that I was required to determine whether Mr White’s legal practice – White SW Computer Law – of which Mr White is the principal and in which he appeared to practice in intellectual property matters - met the requirements of regulation 20.3(3)(a)(ii) ...

5.5       I was of the view that I had to decide, specifically, whether Mr White was a person in employment in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporation (sic) Law - such employment being for either 1 year continuously or at least 1 year within 2 continuous years.

…

5.8       On a plain reading of regulation 20.3(3)(a)(ii) I considered that the circumstance which clearly meets a plain reading of the Regulation is the usual circumstance where an employee of a company or firm is employed by that company or firm to undertake the patent work necessary for that company or firm to apply, prosecute and maintain its own patents.

5.9       I considered that Mr White was not, at the time of his application, employed by the company whose patent matters were being prosecuted.  He was in fact, employed by his own firm.  Mr White's firm was not prosecuting its own patent matters but the matters of others.

5.10     In addition to my reason above, I was also the view that, whilst many client firms may have used the services of White SW Computer Law over a number of years, it is not clear that this type of instruction met the test of being employed “continuously” for one year.  The services provided would have been intermittent and interspersed with other clients’ legal matters.

5.11     I also considered Mr White’s assertion that the "employment in a company practising in patent matters on behalf of the company" could be read to include employment in a legal firm practising in patent matters.  In my view, this assertion is not contemplated by regulation 20.3(3)(a)(ii).  Looking at the sub-paragraph in context it is clear that the [1990 Patents] Act draws a distinction in relation to the sort of work a person could do in each circumstance.  For example, a person on their own behalf, or as an employee of a company on behalf of the company, could draft their own specifications for a patent application.  A person, who is not a registered patent attorney, cannot do this in any other circumstances, including as a legal practitioner working in a legal practice practicing (sic) in patent matters.  In fact it is an offence pursuant to section 201 of the [1990 Patents] Act.

5                          On 24 April 2008, the Applicant served his Statement of Facts and Contentions.  Four days later, on 28 April 2008, the Applicant served a proposed Further Amended Application for an Order of Review (“the Amended Application”).  The Amended Application was dated 9 May 2008.

6                          By the Amended Application, the Applicant sought to raise a number of grounds of review including contentions that:

1.         an incorrect construction of the Regulation was adopted, with the result that the Respondent took into account irrelevant considerations and failed to take into account relevant considerations (Grounds 5(a), 5(b) and 6);

2.         the Applicant ought not have been refused an oral hearing and further, that he was denied the opportunity to put submissions on certain matters (Grounds 1 and 2);

3.         the Respondent failed to consider the Applicant’s registration under Reg 20.3(3)(a)(i) (Grounds 1(ii), 1(iii)(4), 2 and 5(b));

4.         the decision maker was functus officio (Grounds 3 and 6(b)); and

5.         an allegation of a denial of procedural fairness (Ground 8). 

7                          Despite the fact that a number of these grounds were raised for the first time in the Amended Application, the Respondent did not oppose the Applicant being granted leave to raise these issues at such a late stage.

8                          The Respondent, however, did oppose the Applicant being granted leave to add proposed Grounds of Review 9(a), (b), (c), 10 and 11.  The substance of those grounds was that the Respondent had contravened s 10 of the Racial Discrimination Act 1975 (Cth) (“the RD Act”).  The proposed grounds stated that:

9(a)      New Zealand legal practitioners, being of New Zealand national origin, and having passed New Zealand patent attorney exams are entitled to immediate registration as patent attorneys in New Zealand without necessarily having any practical experience (other than that to satisfy admission as a lawyer) nor any technical qualifications.

Particulars

The Applicant relies on regulation 154 of the Patent Regulations 1954 (NZ).

(b)       Pursuant to Trans-Tasman Mutual Recognition Act 1997 (Cth) the Respondent accepts and recognises that a New Zealand legal practitioner once registered as a patent attorney in New Zealand is entitled to be immediately registered in Australia as a patent attorney notwithstanding that they have no practical experience (other than their legal qualification) nor any technical degree requirement.

Likewise the New Zealand Office accepts that Australian patent attorneys having passed the Australian patent attorney exams and satisfied the other requirements of the Act are entitled to immediate registration in New Zealand as equivalent professions (and or professionals) for the purposes of the Trans-Tasman Mutual Recognition Act 1997 (NZ).

(c)        The Applicant’s national or ethnic origin is Australian.

He has been admitted to legal practice in Australia and passed similar exams to those required for admission as a patent attorney in New Zealand which exams have in effect been recognised as equivalent by reasons of the matters pleaded in sub-paragraph 9(b) above.

He is entitled to be registered as New Zealand legal practitioner pursuant to Trans-Tasman Mutual Recognition Act 1997 (Cth).

He has been denied registration as a patent attorney in Australia by reason of his purported lack of employment experience in patent matters (which is denied) whereas if he was of New Zealand national or ethnic origin then no employment experience is required at all for a legal practitioner to be registered as a patent attorney in New Zealand and thereafter such a person would be entitled to be immediately registered in Australia as a patent attorney (without any employment experience at all) pursuant to the Trans-Tasman Mutual Recognition Act 1997 (Cth). 

10.       The Applicant also relies on section 18B of the HREOA [sic].

11.       The Applicant is entitled to relief pursuant to Part IIB and section 46P of the HREOA in that the Respondent has engaged in unlawful discrimination as defined in section 3 of the HREOA as set out in paragraph 9 above. 

9                          The Respondent opposed the Applicant being granted leave to raise a contravention of s 10 of the RD Act on the grounds set out in ss 46PO and 46PH of the Human Rights and Equal Opportunity Commission Act 1986 (Cth) (“the HREOC Act”). 

10                        Section 46PO provides that:

(1)       If:

(a)        a complaint has been terminated by the President under section 46PE or 46PH; and

(b)        the President has given a notice to any person under subsection 46PH(2) in relation to the termination;

any person who was an affected person in relation to the complaint may make an application to the Federal Court or the Federal Magistrates Court, alleging unlawful discrimination by one or more of the respondents to the terminated complaint.

(2)       The application must be made within 28 days after the date of issue of the notice under subsection 46PH(2), or within such further time as the court concerned allows.

(3)       The unlawful discrimination alleged in the application:

(a)        must be the same as (or the same in substance as) the unlawful discrimination that was the subject of the terminated complaint; or

(b)        must arise out of the same (or substantially the same) acts, omissions or practices that were the subject of the terminated complaint.

11                        “Unlawful discrimination” is defined in s 3 of the HREOC Act to include any act, omission or practice that is unlawful under Pt II or IIA of the RD Act.  Section 10 of the RD Act forms part of Pt II of the RD Act.

12                        Accordingly, before the Applicant is entitled to commence proceedings in this Court alleging unlawful discrimination, he must have lodged a complaint with the Human Rights and Equal Opportunity Commission (“the Commission”) (see s 46P of the HREOC Act) and that complaint must have been terminated by the President of the Commission (see ss 46PE and 46PH of the HREOC Act).  Any application to the Court must then be made within 28 days after notification of the termination of the complaint under s 46PH(2):  s 46PO(2) of the HREOC Act. 

13                        In the present case, the Applicant has not complied with any of these requirements.  The application for leave to rely upon the Amended Application to raise an alleged contravention of the RD Act is refused.  The proposed amendment is obviously futile.  It would have been struck out if it had appeared in the original application for review:  Advanced Switching Services Pty Ltd v State Bank of New South Wales t/as Colonial State Bank (2001) ATPR 41-848 at 43,486; Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 66 IPR 19 at [11]-[12].

14                        Accordingly, I would grant the Applicant leave to file and rely upon the Amended Application but excluding proposed grounds 9, 10 and 11. 

Associate:

Dated:         13 May 2008