FEDERAL COURT OF AUSTRALIA
White v Designated Manager of IP Australia (No. 2) [2008] FCA 816
STATUTORY INTERPRETATION – relevance of legislative purpose, context, and history when statutory text is unambiguous and plain meaning does not lead to an unreasonable result
JUDICIAL REVIEW – functus officio – whether decision-maker may substitute new decision if earlier decision is erroneous as a matter of law – natural justice – whether applicant was entitled to comment on adverse opinion materials where the materials were not “credible, relevant or significant” in that they could be dismissed from further consideration – apprehended bias – whether administrative decision-maker may express tentative opinion prior to making final decision – circumstances in which a ground not raised below may be raised on application for review
WORDS AND PHRASES – “patent attorney,” “registered patent attorney,” “technical assistant”
Acts Interpretation Act 1901 (Cth) s 15AA
Corporations Act 2001 (Cth) ss 9, 50, 119
Legal Profession Act 2004 (Vic) ss 2.7.2, 2.7.4
Patents Act 1952 (Cth) ss 133, 134, 136, 137
Patents Act 1990 (Cth) ss 198(4), 200, 202
Patent Attorneys Regulations 1954 (Cth) reg 21
Patents Regulations 1991 (Cth) reg 20.3
Abebe v Commonwealth (1999) 197 CLR 510 cited
Attorney-General (NSW) v Quin (1990) 170 CLR 1 cited
Biochem Pharma Inc v Commissioner of Patents (1998) 82 FCR 87 cited
Chiropedic Bedding Pty Ltd v Radburg Pty Ltd (2007) 74 IPR 398 cited
Commonwealth v Verwayen (1990) 170 CLR 394 cited
Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 applied
Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) (2004) 137 FCR 573 cited
Eshetu v Minister for Immigration and Multicultural Affairs (1997) 71 FCR 300 discussed
Hill v Repatriation Commission (2005) 218 ALR 251 cited
Idoport Pty Ltd v National Australia Bank Ltd [2000] NSWSC 1141 cited
Johnson v Johnson (2000) 201 CLR 488 cited
Kowalski v Domestic Violence Crisis Centre Inc (2001) 113 FCR 67 cited
Macleod v Queen (2003) 214 CLR 230 cited
Re Minister for Immigration and Multicultural Affairs; Ex parte Miah (2001) 206 CLR 57 cited
Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 209 CLR 597 cited
NABE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) (2004) 144 FCR 1 cited
Re Refugee Review Tribunal; Ex parte Aala (2000) 204 CLR 82 applied
Saraswati v Queen (1991) 172 CLR 1 followed
Salomon v Salomon & Co Ltd [1897] AC 22 referred to
Sons of Gwalia Ltd v Margaretic (2007) 81 ALJR 525 cited
SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs (2006) 228 CLR 152 cited
SZIGW v Minister for Immigration and Citizenship [2007] FCA 203 cited
SZKTI v Minister for Immigration and Citizenship [2008] FCAFC 83 cited
VAAD v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 117 cited
VEAL v Minister for Immigration and Multicultural and Indigenous Affairs (2005) 225 CLR 88 cited
Zhang De Yong v Minister for Immigration, Local Government and Ethic Affairs (1993) 45 FCR 384 cited
Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 1998 (Cth)
Industrial Property Advisory Committee, Patents, Innovation and Competition, report to the Minister for Science and Technology (29 August 1984)
Department of Science and Technology, Review of the Regulatory Regime for Patent Attorneys, report to the Minister for Science and Technology (June 1996)
Official Hansard (38th Parliament, 1st Session, Seventh Period), Intellectual Property Laws Amendment Bill 1998 (Second Reading, 9 July 1998)
STEPHEN WALLACE WHITE v DESIGNATED MANAGER OF IP AUSTRALIA
VID 1020 of 2007
GORDON J
3 JUNE 2008
MELBOURNE
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IN THE FEDERAL COURT OF AUSTRALIA |
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VICTORIA DISTRICT REGISTRY |
VID 1020 of 2007 |
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BETWEEN: |
STEPHEN WALLACE WHITE Applicant
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AND: |
DESIGNATED MANAGER OF IP AUSTRALIA Respondent
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GORDON J |
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DATE OF ORDER: |
3 JUNE 2008 |
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WHERE MADE: |
THE COURT ORDERS THAT:
1. The application is dismissed.
2. The applicant is to pay the respondent’s costs of and incidental to the application.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
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IN THE FEDERAL COURT OF AUSTRALIA |
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VICTORIA DISTRICT REGISTRY |
VID 1020 of 2007 |
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BETWEEN: |
STEPHEN WALLACE WHITE Applicant
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AND: |
DESIGNATED MANAGER OF IP AUSTRALIA Respondent
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JUDGE: |
GORDON J |
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DATE: |
3 JUNE 2008 |
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PLACE: |
MELBOURNE |
REASONS FOR JUDGMENT
INTRODUCTION
1 Registered patent attorneys effectively enjoy a statutory monopoly within Australia on the drafting of patent specifications for gain on behalf of others. Their number is not large - there are approximately 750 individuals currently recognised as registered patent attorneys in Australia, up from about 250 in 1996: see Professional Standards Board List of Registered Patent Attorneys as at 23 May 2008; Department of Science and Technology, Review of the Regulatory Regime for Patent Attorneys, report to the Minister for Science and Technology (June 1996) (“the Johns Committee Report”) at xiii. As a result of both the statutory monopoly and the limited number of practitioners, registration (and the qualifications) is a matter of significant consequence both to intellectual property practitioners and the consumers of their services.
2 Registration of patent attorneys is regulated by the Patents Act 1990 (Cth) (“the 1990 Patents Act”) and the Patent Regulations 1991 (Cth) (“the Regulations”). As with any guild or quasi-guild system, the fundamental conflict between the guild members and prospective entrants concerns where the barriers to entry should be set. Not surprisingly, members argue that barriers should be high in order to promote the public interest of ensuring high quality of service. Prospective entrants of course argue that barriers should be lower in order to promote the competing public interest of ensuring healthy competition and low costs of service. In this case, the age-old conflict plays out in the shape of a challenge by a prospective entrant to the construction of the Regulations regarding the work experience prerequisite to registration. For the reasons that follow, that challenge fails and the application for judicial review must be dismissed.
3 On 11 October 2007, Stephen Wallace White (“the Applicant”) was refused registration as a patent attorney by the Designated Manager of IP Australia (“the Respondent”) because he did not have the employment experience prescribed in s 198(4)(c) of the 1990 Patents Act and reg 20.3 of the Regulations. At all relevant times, the Applicant has been and remains a legal practitioner practising as a sole practitioner under the firm name “White SW Computer Law”. The Applicant is the principal of that firm. He has practised in that manner for some 14 years and, in that capacity, has been involved in intellectual property matters.
4 The Applicant seeks review of the Respondent’s decision under s 5 of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (“the ADJR Act”).
5 Section 198(4) of the Patents Act provides the Respondent 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.
(Emphasis added.)
It is not disputed that the Applicant satisfied all of the above criteria except for the employment experience prescribed by subsection (c).
6 Regulation 20.3(3) prescribes the “employment” for the purposes of s 198(4)(c) of the 1990 Patents Act. It provides that 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 Patents Office as an examiner of patents under the [1990 Patents] Act or the [Patents Act 1952 (Cth) (“the 1952 Patents Act”)]; and
(b) for either:
(i) 1 year continuously; or
(ii) at least 1 year within 2 continuous years.
(Emphasis added)
7 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 (reg 20.2(3)(a)(i)) or as an examiner in the Patents Office (reg 20.2(3)(a)(iii)). The Respondent proceeded to consider the application for registration under reg 20.3(3)(a)(ii) and concluded the Applicant’s employment experience did not satisfy reg 20.3(3)(a)(ii). The Respondent’s reasons for decision, in part, addressed the issue as follows:
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 of 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 subparagraph 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 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.
8 On 9 May 2008 (just 4 days before the hearing), the Applicant filed a Proposed Further Amended Application for an Order of Review (“Amended Application”). By that Amended Application, the Applicant sought to raise the following grounds of review:
(a) Construction of reg 20.3(3)(a)(ii): an incorrect construction of Reg 20.3 was adopted by the Respondent with the result that the Respondent took into account irrelevant considerations and failed to take into account relevant considerations: ss 5(1)(d), (e) and (f) of the ADJR Act (Grounds 4, 5 and 6);
(b) Failure to consider the Applicant’s application for registration under reg 20.3(3)(a)(i): ss 5(1)(a)(b) and (e) of the ADJR Act (Grounds 1, 2 and 5(b));
(c) Denial of Natural Justice and Procedural Fairness: the applicant ought not to have been refused an oral hearing and that he was denied the opportunity to put submissions on certain matters: ss 5(1)(a) and (b) of the ADJR Act (Grounds 1 and 2);
(d) Functus Officio: the decision maker was functus officio: ss 5(1)(c) and (f) of the ADJR Act (Grounds 3 and 6(b)); and
(e) Bias: s 5(1)(f) of the ADJR Act (Part of Ground 8).
9 At the commencement of the hearing, I refused the Applicant leave to include in the Amended Application an allegation that the Respondent had breached s 10 of the Racial Discrimination Act 1975 (Cth): see White v Designated Manager of IP Australia [2008] FCA 815. Although a number of the remaining grounds of review were raised for the first time in the Amended Application, the Respondent did not oppose the Applicant being granted leave to raise those issues at such a late stage. As these reasons for decision will demonstrate, each ground of review is without merit.
10 Before turning to consider each of the grounds of review, it must be noted that, to a significant extent, the Applicant’s written and oral submissions proceeded, or at least appeared to proceed, on the premise that the Court’s task involved a reconsideration of the merits of the decision. That premise is not correct. As 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.
GROUNDS OF REVIEW
(A) CONSTRUCTION OF REGULATION 20.3(3)(A)
11 It is not disputed that the factors the Respondent was required to take into account were affected by the proper construction of reg 20.3(3)(a). The issue was whether the Respondent’s construction of reg 20.3(3) (see [6] above) was the proper construction. In my view, subject to one exception which did not affect the Applicant adversely, it was the proper construction.
Express words
12 The Respondent concluded that reg 20.3(3)(a)(ii) refers to employment in a company or firm in which an employee undertakes patent work for that company or firm and does not extend to include experience in a law firm undertaken on behalf of client companies or firms. Again, subject to one issue which does not affect the outcome of the current application, the Respondent’s construction was consistent with the express words of the 1990 Patents Act and the Regulations.
13 As noted above, reg 20.3(3) prescribes the employment which satisfies s 198(4) of the 1990 Patents Act. It prescribes two elements: the nature of the employment and a time period. Three separate capacities of employment are specified:
1. as a technical assistant in a patent attorney’s office (reg 20.2(3)(a)(i));
2. in a company practising in patent matters on behalf of the company or a related company within the meaning of the Corporations Law (reg 20.2(3)(a)(ii)); and
3. in the Patents Office as an examiner of patents under the 1990 Patents Act or the 1952 Patents Act (reg 20.2(3)(a)(iii)).
The time element is addressed in par (b) of reg 20.2(3).
14 Insight into the purpose of the experience requirements in reg 20.3(3) can be gleaned by reading ss 200 to 202 of the 1990 Patents Act to understand the meaning of and difference between the terms “registered patent attorney” and “patent attorney” in the context of reg 20.3(3). First, s 200 provides that a registered patent attorney, who need not be a legal practitioner, is entitled to transact all business and conduct all proceedings under the 1990 Patents Act, save that he or she may not deal with court proceedings: s 200(3). Secondly, ss 200(1) and 201(7) state that a “patent attorney” - who may be either a “registered patent attorney” or a “legal practitioner” - is someone who applies for patents, prepares specifications, or gives advice about the validity or infringement of patents. Finally, s 202 provides that a legal practitioner who is not a registered patent attorney may do everything that a registered patent attorney may do except prepare specifications. The net effect is that a legal practitioner, such as the Applicant, who gives advice about patent applications, validity, and infringement, may properly hold himself out as a “patent attorney” (at least for some purposes - whether the Applicant would qualify as a “patent attorney” for purposes of reg 20.3(3)(a)(i) is a separate question: see [49]-[51] below). In other words, the difference between a legal practitioner and a registered patent attorney is that only the former may deal with court matters and only the latter may draft specifications. Read in this context (ie that the preparation of patent specifications is the only area of patent law that is the exclusive domain of registered patent attorneys), it would seem apparent that the capacities in reg 20.3(3) are intended to prescribe three separate ways a person may gain the experience necessary to gain entry to this exclusive domain – namely, experience in drafting and construing patent specifications.
15 At no time did the Applicant satisfy the literal meaning of any of the capacities of employment specified in reg 20.3(3)(a). The Applicant accepts that at no time has he been employed in the Patents Office as an examiner of patents. Moreover, as the facts demonstrated, at no time has he been employed in a company practising in patent matters on behalf of the company or a related company ((a)(ii)). Assuming for the sake of argument that a law firm may be considered a company for the purposes of the regulation, the Applicant’s evidence was that he was employed in his own law firm, White SW Computer Law. However, he conceded that he had not practised in patent matters on behalf of his law firm (as opposed to on behalf of his clients). Moreover, the Applicant provided no evidence that the client companies on whose behalf he had practised were related companies to his law firm within the meaning of s 50 of the Corporations Act 2001 (Cth) (“the Corporations Act”), which provides that holding companies and subsidiaries of corporations are related. Finally, the Applicant, a sole practitioner, presented no evidence that he was employed as a technical assistant in a patent attorney’s office ((a)(i)); to the extent that he submitted that, for purposes of the regulation, he should be considered to have been employed as his own technical assistant, that submission is rejected as absurd on its face as well for the reasons discussed below.
16 In spite (or perhaps because) of the Applicant’s failure to qualify under the plain meaning of the regulation, the Applicant submitted that the plain meaning or construction of reg 20.3(3)(a) adopted by the Respondent was too narrow and should not be preferred “to one which advances / promotes the purpose of the legislation or underlying object of [reg] 20.3”. In particular, he submitted that reg 20.3(3)(a)(i) and (ii) should be extended to include a legal practitioner in the position of the Applicant on the basis that:
(1) reg 20.3(3)(a)(ii) should be construed to include a legal practitioner “employed (on a professional basis) for one or more companies (either [the] firm or [the] firm’s clients) in relation to patent matters (either on behalf of [the] firm or [the] firm’s clients) (emphasis added); and
(2) for the purposes of reg 20.3(3)(a)(i), he “did and is conducting the business as a patent attorney” and that the statutory declarations supplied by his firm’s clients demonstrate that the tasks undertaken by him are “exactly, although on a more advanced level, those that a technical assistant would ordinarily undertake”.
In effect, the Applicant submitted that the regulation should be construed so that virtually any legal practitioner having been employed in a firm where he or she dispensed patent advice to the firm’s clients for the requisite period of time has satisfied the employment qualification for being registered as a registered patent attorney. To put it another way, the Applicant seeks to have legal practitioners exempted from the separate employment experience required by the regulation.
17 Assuming, without deciding for the moment, that reference to the underlying purpose of the 1990 Patents Act would in fact support the Applicant’s construction, I do not consider that an appeal to purpose can succeed in the circumstances of this case. As can be seen, the Applicant is effectively asking the Court to rewrite the regulations, first by substituting, at a minimum, the word “for” in place of the word “in” in reg 20.3(3)(a)(ii) so that it would read “in employment for a company practicing in patent matters”; and second, by adding a gloss so that the technical assistant and the patent attorney referred in reg 20.3(3)(a)(i) may be the same person so that the requirement effectively reads “performing tasks similar to those of a technical assistant under one’s own supervision” (or, to put it more literally and highlight the syntactic absurdity, “employed as a technical assistant in the technical assistant’s practice”).
18 I cannot accept such a construction. It is true that s 15AA of the Acts Interpretation Act 1901 (Cth) directs a court to prefer a construction promoting the purpose or object of an Act. It is also true that patent textual ambiguity is not required in order to consult purpose (ie reference to purpose may be had both to raise as well as to resolve ambiguity): Saraswati v Queen (1991) 172 CLR 1, 22; see also Kowalski v Domestic Violence Crisis Centre Inc (2001) 113 FCR 67 at [23].
19 Nevertheless, the purposive approach to statutory construction is not a carte blanche licence to courts to depart from unambiguous plain meaning. While purpose may sometimes be used to add, subtract, or clarify words in a statute or regulation (Saraswati 172 CLR 1 at 22),
… where the text of a legislative provision is grammatically capable of only one meaning and neither the context nor any purpose of the Act throws any real doubt on that meaning, the grammatical meaning is “the ordinary meaning” to be applied. A court cannot depart from “the ordinary meaning” of a legislative provision simply because that meaning produces anomalies[.]
See also SZKTI v Minister for Immigration and Citizenship [2008] FCAFC 83 at [44]-[45] (noting that where a party contends that a provision should not be given its literal or plain meaning, such a contention may lack force absent a plausible competing construction). The only exception to this rule is where the ordinary meaning would lead not just to an anomaly, but to a result that is “manifestly absurd” or “unreasonable”: Saraswati 172 CLR 1 at 22; see also Chiropedic Bedding Pty Ltd v Radburg Pty Ltd (2007) 74 IPR 398 at [23].
20 Here, the Applicant has failed to advance any plausible competing construction (ie he has failed to demonstrate any patent or even latent ambiguity in the text as a matter of ordinary syntax and grammar); I consider the text grammatically capable of only one meaning. Moreover, neither the context nor purpose of the Act (to which I have briefly referred to earlier and will come to in greater detail below) throw any real doubt on that ordinary meaning. Finally, the ordinary meaning leads to a result that is neither manifestly absurd, irrational, or otherwise unreasonable. Accordingly, I consider that there is no general judicial power to redraft the regulation even if the result in this case (that the Applicant’s work experience as a sole practitioner does not qualify him to be a registered patent attorney) were anomalous (which I do not accept), and such an amendment would in fact bring it into greater conformity with the underlying legislative purpose (which I also do not accept).
21 Although I need go no further on the construction point (save for the examination of purpose and context which I will come to), I should address the construction error of the Respondent referred to earlier, which has until now been covered up by the assumption I previously made for the sake of argument that a firm might also be considered a company within the meaning of the regulation. While it was convenient to make that assumption (in that nothing of consequence turns upon it in the present case), I should clarify that a legal practitioner in the position of the Applicant is not employed in a company (ie a firm, including a law firm, is not a company).
22 The Applicant contended that the reference to “in a company” should not be read literally but should be extended to include employment “in a company or a firm”. The Respondent adopted that construction in par 5.8 of his reasons for decision (see [7] above). I do not accept that references in reg 20.3(3)(a)(ii) to “company” should be read in that manner. A law firm, other than an incorporated legal practice, is not a company within the meaning of the Corporations Act”: see ss 9 and 119 (stating that a company means a company registered under the Corporations Act and comes into existence as a body corporate on the day of registration); Legal Profession Act 2004 (Vic) ss 2.7.2 and 2.7.4 (stating that an incorporated legal practice is a company within the meaning of the Corporations Act). The Applicant accepted that his firm is not registered under the Corporations Act. Moreover, even assuming that the definition found in the Corporations Act should not be interpolated into reg 20.3(3)(a)(ii), the ordinary common law understanding of company would not assist the Applicant either: Macleod v Queen (2003) 214 CLR 230 at [28] (stating that the essential meaning of “company” since the time of Salomon’s Case, has been as a body with a separate legal identity); see also Sons of Gwalia Ltd v Margaretic (2007) 81 ALJR 525 at [3]-[4] (observing the historical distinction, dating back to Salomon’s Case, between firms (partnerships) and companies (corporations)); Salomon v Salomon & Co Ltd [1897] AC 22. Again, the Applicant presented no evidence that White SW Computer Law is a distinct legal entity as opposed to an unincorporated sole proprietorship.
23 To the extent that the Respondent considered that employment in a firm could be considered employment in a company for the purposes of the regulation, it follows that he took an irrelevant consideration into account. However, that error may be put to one side because, on any view, it was an error which favoured the Applicant. If a proper construction of reg 20.3(3)(a)(ii) had been adopted, the result would not have been any different and thus the error was harmless: Re Refugee Tribunal; Ex parte Aala (2000) 204 CLR 82 at [104] (stating that relief on judicial review will be refused where the court is satisfied that the error did not affect the outcome of the administrative decision).
24 I now turn to a more detailed consideration of the purpose and context of the 1990 Patents Act as foreshadowed above. As these reasons for decision will demonstrate, there is nothing in the other provisions of the 1990 Patents Act or the Regulations, or the historical materials, which suggests, let alone supports, the Applicant’s construction of reg 20.3(3)(a)(i) or (ii). On the contrary, those materials all demonstrate that it was the intention of the Parliament that a person in the position of the Applicant should not be registered as a patent attorney.
Context - Other provisions of the 1990 Patents Act
25 Section 198 forms part of Pt 1 of Ch 20 of the 1990 Patents Act. Chapter 20 is entitled “Patent Attorneys”. Part 1 is entitled “Registration, Privileges and Professional Conduct”. Offences are dealt with in Pt 2.
26 Section 200, headed “Privileges”, provides that certain privileges attach to registered patent attorneys. It provides, in part, that:
(1) A registered patent attorney:
(a) is entitled to prepare all documents, transact all business and conduct all proceedings for the purposes of this Act; and
(b) has such other rights and privileges as are prescribed.
(2) A communication between a registered patent attorney and the attorney’s client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client.
(3) Nothing in this section authorises a registered patent attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court.
(4) In this section:
“intellectual property matters” means:
(a) matters relating to patents; or
(b) matters relating to trade marks; or
(c) matters relating to designs; or
(d) any related matters.
(Emphasis added.)
27 Section 200 must be read with s 201 (headed “Offences”) and s 202 (headed “Documents prepared by legal practitioners”). Section 201 provides, in part, that:
(1) A person must not carry on business, practise or act as a patent attorney unless the person is a registered patent attorney or a legal practitioner.
Penalty: $3,000.
(2) The members of a partnership must not carry on business, practise or act as patent attorneys unless at least one member is a registered patent attorney or a legal practitioner.
Penalty: $3,000.
(3) A person must not describe himself or herself, or hold himself or herself out, or permit himself or herself to be described or held out, as a patent attorney, or agent for obtaining patents unless the person is a registered patent attorney.
Penalty: $3,000.
(4) The members of a partnership must not describe the partnership, or hold the partnership out, or permit the partnership to be described or held out, as patent attorneys, or agents for obtaining patents, unless at least one member is a registered patent attorney.
Penalty: 30 penalty units.
(5) A company must not carry on business, practise, act, describe itself or hold itself out, or permit itself to be described or held out, as a patent attorney or agent for obtaining patents.
Penalty: $15,000.
…
(7) For the purposes of this section, a person or company is taken to carry on business, practise or act as a patent attorney if, and only if, the person or company does, or undertakes to do, on behalf of someone else, any of the following in Australia for gain:
(a) applying for or obtaining patents in Australia or anywhere else;
(b) preparing specifications or other documents for the purposes of this Act or the patent law of another country;
(c) giving advice (other than advice of a scientific or technical nature) about the validity, or infringement, of patents.
(8) A person does not commit an offence against subsection (1) in respect of anything done, or undertaken to be done, by the person in the capacity of employee for:
(a) in any case - the person’s employer; or
(b) if the person’s employer is a member of a related company group - another member of the group.
…
(10) In this section:
“related company group” means a group of 2 or more companies, where each member of the group is related to each other member of the group.
(11) For the purposes of this section, the question of whether a company is related to another company is to be determined in the same manner as that question is determined under the Corporations Act 2001.
(Emphasis added)
28 Section 202 of the 1990 Patents Act provides that a legal practitioner must not prepare a specification, or a document relating to an amendment of a specification, unless the practitioner is acting under the instructions of a registered patent attorney (s 202(a)) or the amendment has been directed by an order under s 105 of the 1990 Patents Act (s 202(b)).
29 A number of principles emerge from consideration of these provisions of the 1990 Patents Act. First, the Act recognises the existence and separate roles of registered patent attorneys and legal practitioners: ss 200, 201 and 202. Secondly, both registered patent attorneys and legal practitioners may apply for or obtain patents, prepare documents for the purposes of the 1990 Patents Act and give advice (other than advice of a scientific or technical nature) about the validity or infringement of patents: ss 201 and 202 and see also Biochem Pharma Inc v Commissioner of Patents (1998) 82 FCR 87, 92 (per Hill J). However, only a registered patent attorney (or a legal practitioner under the instruction of a registered patent attorney) may draft patent specifications or a document relating to an amendment of a specification: s 202. Finally, ss 201(8) to (11) exempt from the area of work restricted to registered patent attorneys, work done for an employer (or a company which is a member of the same group as the person’s employer). Accordingly, individuals and companies may prosecute their own patent applications and draft their own patent specifications. The last principle reinforces that reg 20.3(3)(a)(ii) of the Act, properly construed, permits experience gained whilst employed by a company engaged in their own patent applications and specifications as relevant experience for the purposes of registration as a patent attorney.
30 None of those provisions support the contention that reg 20.3(3)(a)(i) and / or (ii) should be construed to include a person in the position of the Applicant as having the necessary work experience to qualify as a registered patent attorney. As noted earlier, the 1990 Patents Act clearly marks out the drafting of patent specifications as the exclusive domain of registered patent attorneys. Read in that context, that the three categories of work experience in reg 20.3(3)(a) should be directed toward the acquisition of experience in the construction and drafting of specifications is neither anomalous nor unreasonable.
Historical materials
31 Since 1981, the patents legislation and regulations have been the subject of a number of reviews, recommendations and changes. The Respondent submitted, and I accept, that since the 1980s a number of themes have emerged from the patents legislation and the regulations as they have existed from time to time: first, a concern with protecting the public from unqualified and inexperienced persons undertaking work in relation to patents; secondly, the introduction in the 1980s and the 1990s of increasing degrees of competition; and, thirdly, an attempt to balance those two themes: see Biochem 82 FCR 87 at 88. The balance has been achieved in three ways: (1) acknowledgement that prior to registration as a patent attorney, relevant experience may be gained in the public or private sector; (2) acknowledgement that the business of registered patent attorneys and legal practitioners overlaps but that registered patent attorneys (or legal practitioners under the instruction of a registered patent attorney) retain the exclusive right to draft patent specifications; and (3) adoption of a narrow exemption that permits persons to continue to prosecute their own patent applications or those of their employers.
32 In the early 1980s, the “employment as prescribed” requirement prior to registration was limited to employment for a period by a patent attorney. The period was six months for persons who had previously been employed in the Patents Office as an examiner for a prescribed period and, in other cases, for not less than one year: ss 133(3)(e), 134, 136(1) and (5) and 137 of the 1952 Patents Act and reg 21 of the Patent Attorneys Regulations 1954 (Cth).
33 In a report to the Minister for Science and Technology dated 29 August 1984 from the Industrial Property Advisory Committee entitled “Patents, Innovation and Competition”, the Committee recommended, inter alia, that the qualifying period in employment be made a uniform period of 12 months in the public and the private sector: recommendation 39(iii). The Committee explained the role of Patent Attorneys in the following terms (see para 17.1 and 17.5):
Patent attorneys are a body of professionals specialising in patent law and practice, and particularly in the searching, preparation, and prosecution of patent applications in Australia and abroad.
While patent applicants may prosecute their own applications before the Office, patent attorneys have the exclusive right under the Patents Act to prepare specifications for a fee, so they have an effective professional monopoly to handle patent applications. They advise clients in relation to patent validity and infringement and also deal with trade marks, industrial designs, and licensing.
The care and skill with which patent applications are prepared materially influence the scope and value of the protection obtained under a patent. The drafting of patent specifications and claims requires special skill and knowledge of the applicable law and practice, as well as a capacity to understand the technology involved. No amount of legal skill will avail if the subject matter is not understood. If Australian inventors are to obtain adequate protection for their inventions here and abroad, the assistance of people possessing these attributes must be available in Australia.
…
We have already commented on the important service role which patent attorneys play in preparing and filing patent applications in Australia and abroad. We believe that it is appropriate for the drafting and filing of patent specifications for reward to be the exclusive domain of a trained and regulated professional body.
The work is highly technical and it is an integral part of the whole process of effective innovation. … The Committee therefore accepts that a limited monopoly of practice by patent attorneys should be retained.
(Emphasis added.)
34 The passages reiterated two of the themes running through the patents legislation: that patent applicants may prosecute their own applications, and further, not only that special skill is required to draft patent specifications, but that the care and skill with which such applications are prepared materially influences the scope and value of the protection obtained under a patent. These themes underpinned and continue to underpin the registration of patent attorneys.
35 The 1990 Patents Act was then introduced. A number of the Committee’s recommendations were adopted by Parliament. In the context of the registration of patent attorneys, s 198 was inserted. At that time, s 198(2)(e) provided that the Commissioner of Patents was required to register a person, inter alia, who had been employed as prescribed for not less than the prescribed period by a patent attorney. Regulations 20.3(c) and (d) of the Regulationsprovided that for the purposes of s 198(2)(e), the prescribed employment was limited to employment as a technical assistant in the conduct of the practice of a patent attorney in matters arising under the 1990 Patents Act or the 1952 Patents Act. The prescribed period was 1 year continuously or a period of not less than 1 year within a two year period. Sections 200 and 201 were also inserted in terms not dissimilar to the current provisions. Despite these changes, an inventor retained the right to prosecute his or her own patent application.
36 In June 1996, the Johns Committee Report was presented to the Minister for Science and Technology. Four recommendations of the Johns Committee Report are relevant, namely, Recommendations 3, 4, 17 and 26:
Recommendation 3 - Section 201(7) of the [1990 Patents Act] be redrafted to put beyond doubt the right of any person to engage in the provision of patent services for gain, other than the drafting of patent specifications and claims, the prosecution of patent applications and advice on patent validity and infringement.
Recommendation 4 - The right to draft patent specifications and claims, and prosecute patent applications (for gain) be limited to registered patent attorneys. In addition, the right to advise on patent validity and infringement be limited to patent attorneys and lawyers.
Recommendation 17 - The requirement for registration as a patent attorney of one-year’s experience be satisfied by experience gained in a patent attorney’s employ, in a corporate environment, or in the Patents Office. Experience in other environments be recognised also for this purpose provided that the body responsible for qualifications is satisfied that it is relevant experience.
Recommendation 26 - The legislation be amended to allow an employee working on patent matters of a company to act for related companies with common ownership.
(Emphasis added.)
37 The Johns Committee Report described the Committee’s task, the regulatory regime for patent attorneys and the proposals for change (Recommendations 3 and 4) in the following terms (Executive Summary at p xv-xvi):
The Terms of Reference asked the Committee to advise whether or not there should be a regulatory regime for patent attorneys in Australia, what the scope of any regulatory regime should be, and how any proposed regulatory system should be administered.
The Committee sought to answer the question of whether there should be unrestricted entry into the market place for patent attorney services. This involved balancing the benefits of deregulation against the costs. The comparison was not limited to the status quo versus deregulation. Other options were also identified[.]
In arriving at its recommendation to retain a regulatory regime for patent attorneys with certain modifications, the Committee has had two objectives in mind: to foster competition where it is feasible, and at the same time to safeguard the public interest. To allow unqualified persons to perform the highly specialised activity of drafting patent specifications and claims might involve unacceptably high risks. Yet in less specialised areas of patent services, competition from new entrants should be encouraged in the interests of greater efficiency and lower costs to clients.
The elements of the proposed reform package are:
…
3. the redrafting of Section 201(7) of the [1990 Patents Act] to put beyond doubt the right of any person to engage in the provision of patent services for gain, except for the drafting of patent specifications and claims, the prosecution of patent applications, and the preparation of advice on patent validity and infringement. The two former activities should remain the exclusive right of registered patent attorneys. The latter should remain the exclusive right of registered patent attorneys and lawyers (see Recommendations 3 & 4).
The Report continued to acknowledge that an inventor maintained the right to prosecute his or her own patent application: see Report, pg 3.
38 The issue of the employment experience necessary for registration as a patent attorney was also considered by the Johns Committee Report (at pgs 70 - 71) in the context of Recommendation 17:
6.4 The “One-year” Requirement
Part of the requirement of registration as a patent attorney is to spend at least one year employed by a patent attorney. The primary reason for this relates to the commercial experience, real-time drafting, and exposure to the business systems when working in a patent attorney’s office. However, the nature of experience is not specified in detail, and may be gained outside a patent attorney’s office, such as being supervised by a registered patent attorney in a corporate patent office, or in a specialist area, eg., only in trademarks. Both these examples do not appear to comply with the intended aims of the mandatory one year of experience. Further, some have argued that a broader range of relevant experience should be allowable, or even mandatory.
Currently, this requirement cannot be met by alternative employment experience or by passing additional examinations. Hence the existing registered patent attorney firms can effectively control the numbers of candidates who can gain registration.
…
The “one-year” requirement is considered unrealistic by many, because, in practice, most candidates complete many more than one year’s employment. The reality is that following appointment to a technical assistant position in a patent attorney’s office it would be an exceptional candidate who could complete all the registration requirements in less than three years.
It is also argued that corporate experience is often equivalent to work in a patent attorney’s office. Some corporate candidates have passed all the examinations and have several years of experience in patent drafting, but cannot become registered consequent to this requirement.
…
In the view of the Committee, there would be some public benefit in permitting a broader range of experience to be allowable. This would enable a slightly larger number of trainees to gain registration and thereby enhance competition in the market for patent services.
The purpose of the experience is not to become proficient at patent drafting, as this should be adequately assessed by the examination. The purpose is to expose the candidate to the practicalities of the office environment. Although periods of up to 5 years were suggested to the Committee, it was considered that one year was adequate for the stated purpose. Further, as explained above, it should be permissible to gain that experience in a variety of settings, not just in a patent attorney’s office.
In the light of recent developments in professional training it would be desirable to replace relatively old-fashioned time-serving requirements, with a test of individual competency following a defined work program. This may not be practical in the case of the patent attorney profession. There are considerations of confidentiality of an attorney’s or trainee’s work that would preclude the production of a detailed portfolio of achievements. However, if the current examinations [Patent Attorney Practice, Parts I and II], achieve their desired objective, they should be close to fulfilling the demands of competency tests, in themselves.
39 In addition, the report (in Ch 7.4 at pgs 90-91) went on to recognise a particular anomaly in s 201 (as it then existed) whereby a person could draft patent specifications for their direct employer but not for a company in the same group of which the employer was a member.
40 The Applicant placed considerable emphasis on these passages in support of a wider construction of reg 20.3(a). However, neither the passages quoted nor the subsequent amendments to the patents legislation passed in 1998 support a wider construction. Whilst it is clear that the Johns Committee recommended allowing a broader range of pre-registration experience to satisfy the employment requirements, the 1998 legislative changes did not adopt those recommendations except to:
(1) insert the phrase “on behalf of someone else” in s 201(7) to make it clear that the prohibitions in the Act were limited to work performed for gain for others; and
(2) permit a person to prosecute a patent application for an company in the same corporate group as the person’s employer: see ss 201(8) to (11).
See also the Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 1998 (Cth)and the Second Reading Speech, Official Hansard (38th Parliament, 1st Session, Seventh Period), Intellectual Property Laws Amendment Bill 1998 (Second Reading, 9 July 1998).
41 As the review of the historical materials makes clear, none of the changes prior to or in 1998 were directed to permitting legal practitioners who merely provide advice in intellectual property matters to satisfy the employment capacities prescribed in reg 20.3(3)(a). As the Respondent submitted, if it had been intended to broaden the pre-registration capacities to include such a person, one would have expected the regulations to have been amended to expressly refer to such a category. They do not.
42 Finally, the Applicant referred to the Trans-Tasman Mutual Recognition Act 1997 (Cth) (“the TTMRA”). In New Zealand, the requirements for registration are less onerous; a legal practitioner, upon passing the prescribed exams, is entitled to be registered as a patent attorney: s 100 of the Patents Act 1953 (NZ) and reg 154 of the Patent Regulations 1954 (NZ) (stating that legal practitioners are exempt from the employment experience requirement, which would otherwise be three years in the Patents Office, a patent attorney’s practice, or other employment deemed to be suitable by the Commissioner). Upon registration, that legal practitioner is immediately entitled to be registered as a patent attorney in Australia: s 18 of the TTMRA. The Applicant submitted that the Respondent committed a jurisdictional error because he failed to interpret the 1990 Patents Act and the Regulations consistently with the New Zealand provisions and the TTMRA. That contention is without foundation. There is no principle of statutory construction which requires a court in Australia to interpret a domestic provision of the law of the Commonwealth contrary to its express words but consistently with a provision of another country which is in different terms. The fact that the New Zealand provisions are different was referred to in the Johns Committee Report (see p 110). The Committee recommended that the relevant institutions in Australia (the then Commissioner of Patents and the Institutes of Patents’ Attorneys) work towards closer collaboration between the professions in the two countries and, if practical, develop a common set of qualifications for registration (Recommendation 31). All the Applicant’s submission establishes is that Recommendation 31 of the Johns Committee Report has not been adopted or achieved. There is no basis for the Applicant’s broader construction of Reg 20.3(3)(a), whether as alleged or all.
Conclusion
43 As noted earlier, a review of the statutory context, legislative history, and legislative purpose reveals an attempt to balance two competing objects: (1) the need to reduce barriers to entry and competition and thus reduce costs of patent attorney services; while (2) maintaining strict professional qualification requirements and thus safeguarding the public interest in receiving only high quality services. This understanding of context and purpose does not throw doubt on the construction of reg 20.3(3)(a) such as required by the High Court in Saraswati to justify judicial amendment of a statute or regulation that departs from the ordinary meaning. The legislative and regulatory scheme has hit on a compromise whereby in-house corporate patent practice (which would tend to be focused much more on out-of-court matters such as patent drafting and prosecution), but not ordinary law firm practice (which would tend to focus more on the giving of advice with respect to court-related matters such as validity and infringement proceedings), satisfies the registration requirements. This is entirely consistent with a legislative objective of partial deregulation while ensuring that high standards are maintained with respect to the complex technical arena of patent drafting and prosecution.
44 The Applicant nevertheless submitted that if that was the object of the legislation and the Regulations, then the regulation is both over and under-inclusive. It is over-inclusive in the Applicant’s submission because a person who is employed as a technical assistant for one year but spends the whole year making photocopies will nevertheless qualify for registration even though he or she has gained no experience with patent specifications. It is under-inclusive because a person who has spent a year drafting patent specifications under the supervision of a registered practitioner outside a traditional patent practice or a corporate context (eg at a university legal department) may not qualify for registration. (Whether the Respondent would or should consider a university legal department under those circumstances as a “patent attorney’s practice” within the meaning of reg 20.3(3)(a)(i) is an interesting question.) These criticisms, though not without force, do not advance the Applicant’s case. Every system of rules-based credentialing, and every bright-line rule generally, suffers from the same flaws: no doubt there are many articled clerks who spend two years in a conference room reviewing documents and never learn to draft a pleading or a contract; and, no doubt, there are many 17 year-olds who are mature enough to vote (and some 19 year-olds who are not). Despite these drawbacks, bright-line rules are preferred over case-by-case decision-making in many instances because it is judged by the rule-making authority where the advantages in administrative efficiency, transparency, and certainty outweigh the disadvantages of over and under-inclusiveness. Ultimately, the Applicant’s case boils down to the complaint that the Regulations are unfair and ought to be redrawn. However, the rule the Applicant seeks, whereby an Australian legal practitioner, having provided patent advice for the requisite period, is exempted from having to obtain further work experience in order to become a registered patent attorney, is a matter for government to provide for, not the courts. While the rejection of his application by the Respondent may seem unjust to the Applicant, it must be remembered in considering an application for judicial review that “the court has no jurisdiction simply to cure administrative injustice”: Quin (1990) 170 CLR 1 at 36.
45 For the foregoing reasons, the Applicant’s construction point fails.
(B) FAILURE TO CONSIDER THE APPLICANT’S APPLICATION FOR REGISTRATION UNDER REG 20.3(3)(A)(I)
46 A few additional words should be said in relation to the Applicant’s argument under reg 20.3(3)(a)(i). The Respondent accepts that he did not consider the Applicant’s registration under reg 20.3(3)(a)(i). That is not surprising. He was not asked to do so. The fact that the Applicant did not ask to be registered under reg 20.3(3)(a)(i) undermines his assignment of error at both the administrative and judicial review levels. With respect to the administrative level, the rule is that the decision-maker is not obligated to make a party’s case for them: Abebe v Commonwealth (1999) 197 CLR 510 at [187]. The Applicant acknowledges this rule but submits that he did make his case in his application for registration that he had “been employed as required by paragraph 198(4)(c) of the [1990 Patents] Act.” I do not accept that this general statement was sufficient to put the Respondent on notice that the Applicant was making a case under reg 20.3(3)(a)(i). I also do not accept the Applicant’s submission that the “Respondent is required at law to consider each of the provisions of 20.3(3) before he can find that a person does not satisfy them.” In the absence of evidence or materials that would clearly put an administrative decision-maker on notice of an unarticulated claim, there is no affirmative burden on the decision-maker to scour the papers and the legislation sua sponte to see if there is a basis on which a party’s case may succeed: NABE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) (2004) 144 FCR 1 at [58]-[60]; Hill v Repatriation Commission (2005) 218 ALR 251 at [105]-[107]. I am satisfied that neither the Applicant’s general statements that he had met the employment qualification nor any of the supporting materials he filed with the Respondent were such as to squarely raise his current claim that he was employed as his own (or anyone else’s) technical assistant.
47 With respect to the Applicant’s attempt to agitate the reg 20.3(3)(a)(i) argument in this Court, “[i]t is well recognised that the Court may allow a ground of appeal even where that ground was not raised in the Court or Tribunal below but only where all of the relevant facts have been established beyond controversy or where the point is one of construction or a point of law”: SZIGW v Minister for Immigration and Citizenship [2007] FCA 203 at [13] (citations omitted; emphasis added); see also Commonwealth v Verwayen (1990) 170 CLR 394 (stating that failure to timely raise a point may be deemed waiver of that point). In the instant case, it is at best questionable whether all of the relevant facts that would establish beyond controversy that the Applicant has been employed as a technical assistant are before the Court. In particular, the record does not disclose that the Applicant has ever drafted a patent specification or prosecuted a patent (which is not surprising, given that evidence to that effect might also suggest that the Applicant had committed an offence under s 202 of the 1990 Patents Act): cf Idoport Pty Ltd v National Australia Bank Ltd [2000] NSWSC 1141 at [31] (suggesting that a “technical assistant” is one who has the duty of prosecuting patent applications on behalf of clients, under the supervision of a registered patent attorney). Even accepting the Applicant’s statutory declaration at face value, it states only that he has “liaised with patent attorneys in relation to the preparation and filing of patent specifications on behalf of [his] clients.” Accordingly, the Applicant’s claim under reg 20.3(3)(a)(i) would ordinarily fail at the outset both because it was not clearly raised below and because not all of the facts necessary to make good the point have been established beyond controversy.
48 However, the Respondent submitted that notwithstanding that he was not asked to consider the Applicant’s registration under reg 20.3(3)(a)(i), he was prepared for the Amended Application to be considered by the Court on the assumption that the Applicant had made or intended to make application for registration under reg 20.3(3)(a)(i) and that the Respondent had rejected his registration on that basis.
49 As noted earlier, the Applicant’s contention was limited to the assertion that he “did and is conducting the business as a patent attorney” and that the statutory declarations supplied by his firm’s clients demonstrate that the tasks undertaken by him are “exactly, although on a more advanced level, those that a technical assistant would ordinarily undertake”. For present purposes, I will assume what is in fact highly doubtful - that the work undertaken by the Applicant was equivalent to that of a technical assistant notwithstanding the fact that he did not himself draft or prosecute any patents. I will further assume in the Applicant’s favour that the fact that his work was substantively equivalent to that of a technical assistant is sufficient to deem him a technical assistant within the meaning of the regulation even though he was not nominally a technical assistant (ie he did not hold himself out as a technical assistant nor was he retained by clients as such).
50 Proceeding on those assumptions, the immediate issue is to identify whose “patent attorney’s practice” the Applicant was employed by for the purposes of reg 20.3(3)(a)(i). The Applicant appeared to contend that the patent attorney was the Applicant himself. The corollary of the Applicant’s contention must be that he gained the necessary employment experience by being the technical assistant in his own practice or by supervising himself in his own patent attorney’s practice. If the Applicant’s construction were adopted, it would lead to the absurdity of the Applicant being both the principal and the assistant to the principal in his firm’s patent attorney practice. I reject that construction.
51 Moreover, it is a construction which is inconsistent with, if not directly contrary to, the express words of the 1990 Patents Act and, in particular, ss 201 and 202. It is at least inconsistent with s 201 when one understands that an individual employed in-house by a company engaged in research and development, whether or not the company employs a registered patent attorney, may gain experience in drafting patent applications by reason of s 201. That kind of employment provides the necessary experience. And it is a construction inconsistent with, if not directly contrary to, s 202 because it would permit a legal practitioner in a firm to obtain registration as a patent attorney when that legal practitioner (absent employment in one of the three capacities prescribed in reg 20.3(3)) cannot have received any exposure to drafting patent specifications because it is prohibited by s 202.
52 The Applicant placed considerable emphasis on the absence of the word “registered” in reg 20.3(3)(a)(i). As the Respondent submitted, the omission is “curious”. However, the omission does not assist the Applicant for at least two reasons. First, as Heerey J noted in Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) (2004) 137 FCR 573 at [8], “registered patent attorneys” in s 200(2) of the 1990 Patents Act means registered in Australia. If that is correct (and it was not suggested that his Honour was wrong), the practical effect of the omission may be no more than a recognition that applicants who have worked overseas as a technical assistant for a patent attorney who is not registered under the 1990 Patents Act, may still satisfy the employment requirement of reg 20.3(3)(a)(i). Secondly, even if it were accepted that reg 20.3(3)(a)(i) is not referring to a registered patent attorney (a submission I do not accept), the Applicant would have to demonstrate that he has been employed as a technical assistant in the practice of a patent attorney, practicing as a patent attorney within the meaning of s 201 of the 1990 Patents Act. As a matter of ordinary English syntax, one cannot be employed as an assistant to oneself; thus the Applicant cannot satisfy the criterion of having been employed as a technical assistant in a patent attorney’s practice.
53 The failure by the decision maker to consider this issue thus does not assist the Applicant because consideration of it would not have led to a different result: Aala 204 CLR 82 at [104]. For these additional reasons, the Applicant’s construction point fails.
(C) DENIAL OF NATURAL JUSTICE / PROCEDURAL FAIRNESS
54 The allegations were put on three bases: (1) that the Respondent “admit[ted] that the Respondent had deleted all the relevant emails which may have clearly established bias”; (2) to the extent that the Respondent had discovered materials, that documentation revealed that the Respondent did not wish to meet the applicant and the material contained other matters detrimental to the Applicant; and (3) the decision-maker had expressly made his thoughts known about the operation of reg 20.3(3)(a)(ii).
55 These grounds of review are also without merit, both independently and because, even if made out, they could not change the outcome in light of my conclusions on the proper construction of reg 20.3(3)(a) set out above.
56 First, the allegation that the Respondent had deleted all the relevant emails which may have clearly established bias is made without any factual foundation. That allegation fails at the outset.
57 Secondly, the Applicant submitted his application for registration on 22 June 2007. On 9 August 2007, he was not only told that he “would not appear to have been employed in any of [the] capacities” referred to in the regulations but was invited to put before the decision-maker any relevant information which attested to him meeting the requirements of reg 20.3(3). The Applicant then discussed his application with the Acting Secretary to the Professional Standards Board for Patent and Trade Mark Attorneys and, by email, she suggested the Applicant provide additional material in writing. The Applicant responded seeking a meeting with the decision-maker. That request was rejected and the Applicant was again invited to provide additional material in writing. On 24 September 2007, the Applicant supplied a detailed statutory declaration. On 4 October 2007, the Secretary to the professional Standards Board for Patent and Trade Mark Attorneys provided a memorandum to the decision maker which referred to the material supplied by the Applicant. In that memorandum, the Secretary expressed the view that the Applicant had not met the requirements for registration. The memorandum concluded by stating that:
[i]t would appear that [the Applicant] has not provided evidence that shows 1 year’s continuous employment doing patent work. He refers to being involved in cases with patent attorneys on the other side but does not appear to have provided any evidence from a registered patent attorney as to what he has done. In fact, he names some patent attorneys but does not submit letters from them – this further contributes to the credibility gap in his claim to have done patent work. On balance, he appears to be a lawyer straying into the field of patents or involved in IP litigation.
On 11 October 2007, the Applicant was refused registration for the reasons set out above (see [7]).
58 As was submitted by the Respondent, the Applicant was provided with ample opportunity to present any information concerning his application for registration. There was no denial of natural justice or a lack of procedural fairness.
59 Thirdly, there was no requirement for the Respondent to provide the Applicant with an oral hearing. Not only is there no general rule that decision makers making a decision affecting a person are bound to conduct a face to face interview or a hearing (see Zhang De Yong v Minister for Immigration, Local Government and Ethic Affairs (1993) 45 FCR 384 at 410, but the express words of reg 20.4 refer to written, not oral, forms of application. Even if, contrary to the view I have formed, the Respondent was obliged to provide the Applicant with an oral hearing (a view I reject), that oral hearing could not have produced a different result for the reasons discussed above.
60 Fourthly, the Applicant also submitted that he should have been informed of and been given an opportunity to respond to the Respondent’s construction of reg 20.3(3)(a)(ii). That contention was misconceived. There was no suggestion that:
1. the Applicant had been denied an opportunity to comment on adverse material from other sources (VEAL v Minister for Immigration and Multicultural and Indigenous Affairs (2005) 225 CLR 88 at [15] and [17]);
2. the Applicant’s account of crucial events was in issue so that he needed to be put on notice that his account had not been accepted (SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs (2006) 228 CLR 152 at [36]-[43]); or
3. the authenticity of the Applicant’s material was to be the subject of adverse findings so that he needed to be given an opportunity to comment on it (VAAD v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 117 at [54]-[64].
61 As these reasons for decision have demonstrated, the Applicant’s application for registration was refused because the material he provided was incapable of satisfying the requirements of reg 20.3(3) as a matter of law. The application was not refused based on any adverse view of the Applicant or other evidentiary issue.
62 Finally, a number of the Applicant’s allegations proceeded on the basis that the Respondent was under an obligation to provide the Applicant with an opportunity to comment on documents (specifically, memoranda from the Acting Secretary of the Professional Standards Board for Patent and Trade Marks Attorneys dated 4 October and 11 October 2007) which contain no more than opinions on, or rejections of, the Applicant’s material. That premise is wrong. An applicant in an administrative context is entitled to comment only on adverse information that is “credible, relevant and significant”: Re Minister for Immigration and Multicultural Affairs; Ex parte Miah (2001) 206 CLR 57 at 88-90 and VEAL 225 CLR 88 at [15] and [17]. “Credible, relevant and significant” material is “information that cannot be dismissed from further consideration by the decision-maker before making the decision”: VEAL 225 CLR 88 at [17]. As the Respondent’s letters of 9 August 2007, 10 and 11 October 2007, and 22 November 2007 demonstrate, the Respondent took the consistent view that the Applicant did not satisfy the requirements of reg 20.3(3)(a) based on a plain reading of the regulation. There is no evidence that the Respondent could not or did not dismiss from further consideration the Acting Secretary’s opinions of the Applicant’s material, given that his 11 October 2007 rejection of the Applicant’s application was for the same reason as his 9 August 2007 tentative rejection - namely, that even accepting that all of the material provided by the Applicant was true and correct, the Applicant failed as a matter of law to satisfy the requirements of reg 20.3(3)(a) - and did not turn on any credibility or evidentiary issues. That the Respondent had already tentatively reached that view before ever receiving the October memoranda from the Acting Secretary conclusively demonstrates that the memoranda played no part, much less a significant one, in the Respondent’s consideration or decision.
63 This ground of review also fails.
(D) THE DECISION MAKER WAS FUNCTUS OFFICIO
64 Next, the Applicant submitted that, on 7 August 2007, the Respondent made a decision to register him as a patent attorney and thereafter was functus officio and not able to make a later decision refusing his application for registration as a patent attorney.
65 The Applicant relied upon a document in which the Respondent placed “ticks” against three of the five names of applicants for registration as patent attorneys. The Applicant’s name was one of the names listed. At the foot of the page, a sentence read, “I direct that the above names be entered in the Register of Patent Attorneys and that Certificates of Registration be issued to them”. The Applicant’s name was not ticked. Next to his name appeared a handwritten annotation which read “prima facie does not meet employment”.
66 No decision was made to register the Applicant on 7 August 2007 because it is clear from the face of the document that the Respondent was directing only that the three persons whose names were ticked be registered while the two persons without ticks were not to be registered due to the handwritten reasons. However, even if a “decision” had been made (and it had not), the Applicant would be in no better position because the Applicant did not satisfy reg 20.3(3)(a). Any “decision” would have been a “decision” in error and without legal foundation. Accordingly, the Respondent would not have been prevented from making a later decision: Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 209 CLR 597 at [51], [52] and [54].
67 This ground of review is also without foundation.
(E) BIAS
68 In Eshetu v Minister for Immigration and Multicultural Affairs (1997) 71 FCR 300, reversed on other grounds by Minister for Immigration and Multicultural Affairs v Eshetu (1999) 197 CLR 611, Burchett J (at 317) accepted the definition of natural justice to be commensurate with the statement of principle in Butterworths Legal Dictionary (ed Nygh P, and Butt, P):
The right to be given a fair hearing and the opportunity to present one’s case, the right to have a decision made by an unbiased or disinterested decision maker and the right to have the decision based on logically probative evidence. ...
69 The Applicant did not seek to submit that the current circumstances (or any other feature of the matter) founded a case of actual bias. The Amended Application merely asserted apprehended bias. In fact, the Applicant sought, impermissibly, to use this ground to re-agitate the merits of the decision by reference to four matters: (1) that relevant documents were allegedly destroyed; (2) the manner in which the Applicant was described in documents by the Acting Secretary to lack credibility or have a credibility gap (without being given the opportunity to respond) and to have “strayed” into the field of patents; (3) that the Respondent’s decision was described by the Acting Secretary as “judicially excellent” and (4) that the decision-maker had expressly made his thoughts known about the operation of reg 20.3(3)(a)(ii).
70 None of the considerations raised by the Applicant demonstrated that the decision of the Respondent was invalid. Many of the considerations raised by the Applicant were, in fact, an attack on the merits of the decision and were in relation to facts and matters about which the Respondent and the Applicant held different views. Further, each of the first three matters was addressed and dismissed in relation to the allegation of a denial of natural justice or a lack of procedural fairness. With respect to the fourth matter, it is well settled that the expression of a tentative conclusion without more will not support a claim of apprehended bias; a decision-maker “may form tentative opinions on matters in issue, and counsel are usually assisted by hearing those opinions and being given an opportunity to deal with them”: Johnson v Johnson (2000) 201 CLR 488 at [13] (per Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ). Here, the Respondent expressed his tentative opinion to the Applicant in his letter of 9 August 2007 and expressly gave the Applicant an opportunity to respond. After reviewing the Applicant’s response, which presumably was assisted and focused by knowledge of the Respondent’s tentative opinion, the Respondent then made his decision. Under these circumstances, I do not consider that “a fair-minded lay observer might [have] reasonably apprehend[ed] that the [decision-maker] might not bring an impartial mind to the resolution of the question the [decision-maker] [wa]s required to decide”: Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 at 344 (per Gleeson CJ, McHugh, Gummow and Hayne JJ) .
71 This ground of review fails as well.
(F) OTHER GROUNDS
72 The Applicant abandoned his contention that the decision was made by a person without jurisdiction: see Ground 3 of the Amended Application. The Amended Application also identified a number of other grounds of review: see grounds 5(c), 7 and 8. The Applicant did not attempt to demonstrate an arguable error in relation to those grounds, and in the absence of any articulated argument or submission, I cannot identify any error and would treat them as also having been abandoned.
73 In the circumstances, it is appropriate to dismiss each of those grounds of review.
ORDERS
74 For those reasons, the appropriate orders are that:
1. The application is dismissed.
2. The applicant is to pay the respondent’s costs of and incidental to the application.
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I certify that the preceding seventy-four (74) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon. |
Associate:
Dated: 3 June 2008
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Counsel for the Applicant: |
The Applicant appeared in person |
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Counsel for the Respondent: |
Ms R Doyle |
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Solicitor for the Respondent: |
Australian Government Solicitor |
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Date of Hearing: |
13 May 2008 |
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Date of Judgment: |
3 June 2008 |
