FEDERAL COURT OF AUSTRALIA

Jones Tulloch Pty Ltd v Commissioner of Patents [2016] FCA 1108

ORDERS

THE COURT ORDERS THAT:

1.    The application be dismissed.

2.    The applicant pay the respondent’s costs as agreed or taxed.

3.    If the intervener wishes to claim costs, the intervener is to file and serve notice of its claim and a short written submission in support within 7 days and the applicant, if it opposes the claim, is to file and serve a short written submission in reply within a further 7 days thereafter.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

JAGOT J:

1    The only real issue in this matter is whether a delegate of the Commissioner of Patents misconstrued the definition of “relevant proceedings” in the Patents Act 1990 (Cth) (the Act) and, as a result, misapplied s 97(4) of the Act.

2    A “relevant proceeding” is defined for the purposes of the Act as follows (see s 3 and Sch 1):

relevant proceedings, in relation to a patent, means court proceedings:

(a)    for infringement of the patent; or

(b)    for revocation of the patent; or

(c)    in which the validity of the patent, or of a claim, is in dispute.

3    Section 97 concerns the re-examination of a standard patent. To the extent relevant, it is in these terms:

(2)    Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re-examine the complete specification.

…

(4)    Where relevant proceedings in relation to a patent are pending, the Commissioner must not re-examine the complete specification relating to the patent under subsection (2).

(5)    Where:

(a)    the Commissioner has started to re-examine a complete specification relating to a patent under subsection (2); and

(b)    relevant proceedings in relation to the patent are started;

the Commissioner must not continue the re-examination.

4    The purpose of a re-examination is for the Commissioner to ascertain and report on whether the specification does not comply with sub-ss 40(2) or (3), does not satisfy the criteria in s 18(1)(a), (b) or (c), and whether the invention is a patentable invention under s 18(2) of the Act (see s 98). If the report is adverse, the patentee may file a statement disputing the report (s 99) and/or seek to amend the specification pursuant to an order from the Court (ss 106 – 7). If the re-examination takes place before the grant of the patent, then s 100A applies, and the Commissioner may refuse to grant the patent. If the re-examination takes place after the grant of the patent, then, by 101, the Commissioner may revoke the patent if there has been an adverse report and the Commissioner is satisfied that there is a lawful ground of objection to the relevant specification.

5    On 11 March 2016, the applicant applied to the Commissioner of Patents, requesting re-examination of Australian Patent No. 780330, entitled “Pharmaceutical combination of ethinyl estradiol and drospirenone for use as a contraceptive’, held by the intervener. On 27 April 2016, a delegate of the Commissioner decided that re-examination could not take place until proceedings NSD 236/2012 in this Court are concluded on the basis that these are “relevant proceedings” as defined in s 97(4) of the Act. Pursuant to s 5(1) of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (the ADJR Act), the applicant now applies to have that decision set aside on various grounds, the principal effect of which is that the Commissioner’s delegate misconstrued and thus misapplied s 97(4) of the Act.

6    In the present case, it is not in dispute that there was at one time “relevant proceedings” within the meaning of s 97(4) of the Act. For this purpose, it is sufficient to set out the particulars to the application, which are common ground:

(i)    On 4 April 2013, her Honour Justice Jagot handed down Judgment on issues of infringement of the Patent in the Matter in question: Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (No 2) [2013] FCA 279;

(ii)    On 8 May 2013, her Honour Justice Jagot made orders including a declaration as to infringement of the Patent (the Orders);

(iii)    On 19 June 2014 the Full Court of the Federal Court dismissed an appeal from the Orders;

(iv)    On 14 November 2014, an application for special leave to appeal to the High Court from these Orders was dismissed; and

(v)    The only remaining issue for determination by the Federal Court in the Matter in question is the assessment of damages payable on the basis of Orders that there was infringement of the Patent

7    The applicant’s case is that there are no longer “relevant proceedings” because all issues of validity and infringement in proceedings NSD 236/2012, which led to the judgment in Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd (No 2) [2013] FCA 279, have been finally determined (at the latest, by the refusal of the application for special leave by the High Court, exhausting all avenues for appeal). What remains in proceedings NSD 236/2012 is the claim for damages. This is because on 9 March 2012, this order was made in the proceedings:

All issues relating to infringement and validity of Australian Patent AU200065895 be determined prior to and separately from any issues of damages or compensation payable in respect of the alleged infringement of Australian Patent AU200065895.

8    For the reasons below, I consider that the delegate’s conclusion was correct.

9    As outlined in paragraph (a) of the definition, “relevant proceedings” means court proceedings “for infringement of the patent”. It may be accepted that on 8 May 2013, I made declarations and orders in proceedings NSD 236/2012 which included the following:

THE COURT DECLARES THAT:

1.    The First Respondent (Generic Health) has infringed each of claims 3 and 11 of Australian Patent No. AU200065895 (the Patent) by importing, keeping, selling, supplying, and offering to sell and supply tablets containing Drospirenone 3mg and Ethinyloestradiol 30µg under the name "Isabelle" (the Isabelle Product) in Australia without the licence or authority of Applicants.

2.    The Second Respondent (Lupin) has infringed each of claims 3 and 11 of the Patent by authorising Generic Health to import, keep, sell, supply, and offer to sell and supply the Isabelle Product in Australia without the licence or authority of Applicants.

THE COURT ORDERS THAT:

…

7.    Generic Health and Lupin pay to the Applicants damages (including additional damages pursuant to section 122 (1A) of the Patents Act 1990, if any) or, at the Applicants' option, an account of profits, to be assessed pursuant to the procedure contemplated in order 10(a) or order 10(b).

…

10.    Following inspection of the affidavit filed and served in accordance with Order 8 above, and any discovery requested by the applicants in accordance with Order 9, the Applicants make an election for:

(a)    an inquiry into damages (including additional damages pursuant to section 122(1A) of the Patents Act 1990); or

(b)    the taking of account of profits,

in respect of all infringements of the Patent, such election to be made within 28 days of the completion of inspection of the affidavit and any discovery ordered and provided in accordance with orders 8 and 9 of these Orders.

10    As noted, the appeal against these orders was dismissed and an application for special leave from this dismissal was itself dismissed.

11    I have also made various orders for the remaining issue of damages to be decided (damages having been the election of the patentee). Proceedings NSD 236/2012 are listed before me for hearing on 8 to 19 December 2016. Section 122 of the Act will be relevant for the assessment of damages. It provides that:

(1)    The relief which a court may grant for infringement of a patent includes an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.

(1A)    A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:

(a)    the flagrancy of the infringement; and

(b)    the need to deter similar infringements of patents; and

(c)    the conduct of the party that infringed the patent that occurred:

(i)    after the act constituting the infringement; or

(ii)    after that party was informed that it had allegedly infringed the patent; and

(d)    any benefit shown to have accrued to that party because of the infringement; and

(e)    all other relevant matters.

12    The principles relevant to statutory construction are not in doubt. The words of the statute are of “paramount significance” but must always be read in the context of the legislation as a whole (Nominal Defendant v GLG Australia Pty Ltd [2006] HCA 11; (2006) 228 CLR 529 at [22]). Further, it is necessary to apply s 15AA of the Acts Interpretation Act 1901 (Cth), which states that:

In interpreting a provision of an Act, the interpretation that would best achieve the purpose or object of the Act (whether or not that purpose or object is expressly stated in the Act) is to be preferred to each other interpretation.

13    The relevant conjunction for present purposes is “court proceedings…for infringement of the patent”. The word “for” is a preposition. The function of the word “for” is to express a relationship between two matters (here, the proceedings and the infringement). The question is thus the character of the relationship between “the proceedings” and “infringement” which the definition of “relevant proceedings” requires. In particular, is it necessary that the proceedings be one in which a claim that a patent has been or is being infringed remains for determination or is it sufficient that the proceedings be one in which a claim for relief consequential upon a finding and order that there has been infringement of a patent remains for determination? The applicant contends that the former position is correct, with the consequence that proceedings NSD 236/2012 were not “relevant proceedings” when the request for re-examination was made. The Commissioner and patentee contend that the latter position is correct, with the consequence that proceedings NSD 236/2012 were “relevant proceedings” when the request for re-examination was made (and will remain so until final determination of the claim for damages for infringement).

14    The potential ambiguity associated with the word “for” is not unknown to the law. In Unsworth v Commissioner for Railways (1958) 101 CLR 73 at 87, Fullagar J said that the “prepositional phrase ‘in respect of’ is wider than the preposition ‘for’”. Taylor J referred to this observation in State Government Insurance Office (Qld) v Crittenden (1966) 117 CLR 412 at 416, noting that “in respect of” had been said by Mann CJ in Trustees Executors & Agency Co Ltd v Reilly [1941] VLR 110 at 111 to have “the widest possible meaning of any expression intended to convey some connexion or relation between the two subject-matters to which the words refer”, and “for” may be used interchangeably with “in respect of”, depending on context. In Deputy Commissioner of Taxation v Dick [2007] NSWCA 190; (2007) 242 ALR 152, dealing with the meaning of s 1318(1) of the Corporations Act 2001 (Cth), Santow JA said at [93]:

I consider “for” is used in the broader sense as equivalent to “in respect of”, taking its meaning from its statutory context. Thus, in the parallel subs (2) of s 1318 the phrase “in respect of” is used equivalently to “for” in the preceding subs (1). That interchangeable use of “for” and “in respect of” make it plausible to attribute the wider denotation of the phrase “in respect of” to both s 1318(1) and (2). In other contexts, it has been said that the phrase “in respect of” has a wider ambit than the term “for”: Unsworth v Cmr for Railways (1958) 101 CLR 73 at 87 per Fullagar J. But in statutory contexts like this the two expressions have been held to be essentially co-extensive: State Government Insurance Office (Qld) v Crittenden (1966) 117 CLR 412 at 414–17 per Taylor J.

15    Section 97(4) is not the only provision of the Act in which the definition of “relevant proceedings” appears. The definition is used in a number of other provisions. Accordingly, in addition to s 97(4):

(1)    The Commissioner must not make any decision on an application for an extension of time if “relevant proceedings” are pending, without the leave of the Court (s 79A(b)).

(2)    The Commissioner must not re-examine the complete specification for an innovation patent if relevant proceedings in relation to the innovation patent are pending (s 101K(2)).

(3)    The Commissioner must not continue a re-examination of a standard or innovation patent if relevant proceedings in relation to the patent are started (s 97(5)(b) and s 101K(3)(b)).

(4)    The Commissioner must not revoke a standard or innovation patent “while relevant proceedings in relation to that patent are pending” (s 101(3) and s 101J(4)).

(5)    The Commissioner may revoke a certificate of examination issued in relation to an innovation patent if the Commissioner is satisfied that, amongst other things, there are no relevant proceedings are pending (s 101EA(1)(c)).

(6)    If relevant proceedings in relation to an innovation patent are pending, the Commissioner must not make a decision about an opposition in relation to the patent without the leave of the court (s 101P).

(7)    In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent request or the complete specification in the manner specified in the order (s 105(1)).

(8)    A complete specification relating to a patent must not be amended, except under s 105, while relevant proceedings in relation to the patent are pending (s 112).

(9)    Where relevant proceedings in relation to a patent are pending, the Commissioner must not accept an offer to surrender the patent (s 137(4)).

(10)    The Commissioner must not make a declaration or rectify the Register of Patents while relevant proceedings in relation to the patent are pending (s 191A(5)).

16    These provisions mainly constrain the power of the Commissioner. As a result, it is not difficult to infer that one purpose of the provisions must be to avoid the Commissioner taking action which will affect the status of a patent (such as revoking or amending a patent), while there are proceedings before the court about the infringement, validity or revocation of that patent. The statutory scheme thus ensures that the Commissioner is not to take action which will change the status of a patent while the Court is seized of a “relevant proceeding”.

17    It is also relevant that for the constraints on the powers of the Commissioner to operate the “relevant proceedings” must be “pending”. “Pending” is a familiar concept in the context of legal proceedings. Certain powers were traditionally granted “pendente lite”, that is “while the proceedings were continuing”. Because the constraints on the Commissioner’s powers operate only while “relevant proceedings” are “pending”, the constraints are temporary. Once “relevant proceedings” are no longer “pending”, there is no constraint.

18    These factors – the function of the concept of “relevant proceedings” within the statutory scheme to constrain the powers of the Commissioner and the temporary nature of those constraints – tend to work against a narrow construction of the word “for” in the definition of “relevant proceedings”. If one purpose is to ensure that the status of a patent is not altered while a court is seized of proceedings involving the infringement, validity or revocation of the patent, then it is not unreasonable to assume that such a purpose is best served by recognising that proceedings for infringement include proceedings for relief consequential upon infringement, including monetary relief. Otherwise, the status of the patent may change in between a finding of and orders about infringement and orders about an entitlement to relief. Indeed, this situation has occurred in the United Kingdom which has parallel jurisdictions for patents operative in the form of its own courts and the European Patents Office (discussed below).

19    Section 122 is also relevant. It recognises that the relevant relief is “relief for infringement of a patent” (emphasis added). That relief includes not only injunctions (which were made in this case on 8 May 2013 consequential upon the declarations of infringement), but also monetary compensation. No-one would doubt that a proceeding in which the question of an injunction for an infringement remained outstanding would be a “relevant proceeding”. Yet an injunction is merely one form of relief consequential upon a finding of infringement. An award of damages is no different. It is merely another form of relief for an infringement.

20    Atlantis Corp Pty Ltd v Schindler (No 3) [2000] FCA 1758 (Atlantis), to which the parties referred, does not assist the applicant in the present matter. In Atlantis, the proceedings involved allegations of invalidity and infringement. The Full Court disposed of all issues in the proceedings by final orders in 1997. The effect of those orders was to confirm the invalidity of the patent, with an associated order made (order 6) that the patent be revoked. Order 6 was later stayed pending an application to amend the patent or further order. An application was made to the Commissioner to amend the patent. The Commissioner decided that “relevant proceedings” were pending, with the consequence that the Commissioner could not amend the patent, but the Court may do so under s 105(1). The patentee then filed a notice of motion in the proceedings seeking that the Court direct amendment of the patent under s 105(1). The alleged infringer argued that there were no “relevant proceedings” because it had been finally determined that the patent was invalid. The Full Court agreed saying this:

[16] In our opinion, the Court lacks power to make the order sought by Atlantis-Urriola. It seems to us that, in order to be "relevant proceedings", for the purposes of subs 105(1) of the Act, a proceeding must satisfy one of the three limbs of the definition of that expression contained in Schedule 1 of the Act as at the time when the application for amendment is made. In the present case, that was 4 November 1998. Whatever the proper characterisation of the appellate proceeding may once have been, it was not, as at that date, one in which Atlantis-Urriola were alleging, or seeking relief in respect of, infringement of the patent, or in which Mr Schindler was seeking revocation of the patent, or in which the validity of the patent was in dispute. The only relevant patent had been determined to be invalid and had been ordered to be finally revoked, and the action for infringement of it had been dismissed. These were all final orders. They were made on 24 October 1997. Accordingly, as at 4 November 1998 there was not on foot in this Court a proceeding for infringement of that patent or for revocation of that patent or in which the validity of that patent or of any of its claims was in dispute. The reservation of liberty to apply does not detract from these propositions.

[17] As we see the position, it is irrelevant that an order was made on 7 November 1997 suspending the operation of the revocation order. The fact that a suspension order was made does not derogate from the proposition that the proceeding for revocation had been finally determined two weeks earlier, on 24 October 1997.

21    It will be apparent that the Full Court approached the requirement of connection between the proceeding and the identified criteria in the definition of “relevant proceedings” (“infringement of the patent”, “revocation of the patent”, or “in which the validity of the patent, or of a claim, is in dispute”) as satisfied by the existence of an allegation or a claim for relief in the proceedings “in respect of” one or more of the identified criteria. In Atlantis, the fact that final orders had been made determining that the patent was invalid meant that there were no “relevant proceedings” pending when the application was made. If this approach is correct, then there is no doubt that in proceeding NSD 236/2012 there remains to be determined a claim for relief in respect of infringement of the patent. The claim for relief is for damages in respect of the infringements which have been found. Accordingly, if anything, Atlantis stands against acceptance of the applicant’s case.

22    Despite this, I accept that the Full Court in Atlantis was not called upon to consider the precise issue which arises in the present case. This is because, in Atlantis, there was no proceeding at the time the application was made in which there was either an allegation of infringement (or of invalidity or for revocation) or, indeed, any relief sought in respect of infringement (because the patent had been found to be invalid). The Full Court was not required to determine whether, in a proceeding in which infringement had been found and was subject to final orders, a claim for relief in respect of the infringement (whether it be by way of account of profits, damages or otherwise) meant that there were “relevant proceedings”. The present case involves this question.

23    Virgin Atlantic Airways Limited v Zodiac Seats UK Limited [2013] UKSC 46; [2014] AC 160 (Virgin Atlantic), to which the applicant referred, also does not assist the applicant. That case involved the system of parallel jurisdiction in respect of patents between the courts of the United Kingdom and the European Patents Office (the EPO). There are no equivalent provisions to those in the Act constraining the EPO if there are proceedings about the same patent before a court of the United Kingdom. As a result, it was possible for the EPO to amend a patent retrospectively after a court had found infringement and before the court had assessed damages for the infringement. The fate of the patentee can be gleaned from the first sentence of the judgment of Lord Sumption that:

In this case, Virgin Atlantic Airways Ltd wishes to recover damages exceeding £49,000,000 for the infringement of a European Patent which does not exist in the form said to have been infringed.

24    As a result, the infringer was able to rely on the retrospective amendment of the patent to defend the claim for damages, despite the fact that the court had found infringement of the patent. The amendment, however, had changed the fundamental juridical fact relevant to the proceedings – the form of the patent.

25    The applicant in the present case relied on Virgin Atlantic to support the proposition that the position would not be untenable if it was accepted that “relevant proceedings” under the Act ceased to exist once final orders in respect of infringement and validity had been made. If anything, however, Virgin Atlantic is an example of the circumstances which the concept of “relevant proceedings” in the Act is meant to avoid. The existence of the parallel jurisdictions with respect to patents in the United Kingdom enabled the situation in Virgin Atlantic to arise. Despite contested litigation extending for a period over two years in which the patentee proved the validity and infringement of its patent, the retrospective amendment of the patent by the EPO meant that the essential juridical fact founding the consequential claim for damages did not exist, and the Court could not proceed on the basis as it had existed at all times before the amendment.

26    Considered in the context of the Act as a whole, it is not difficult to infer that the function of the concept of “relevant proceedings” in the Act is to ensure that where the Court has before it any allegation of or claim for relief in respect of the infringement, validity or revocation of a patent, the Commissioner is precluded from taking action to change the status of the patent until the “relevant proceedings” are no longer pending. There is no reason to construe “relevant proceedings” narrowly, as the applicant suggests, so that “for” encompasses only a proceeding in which there remains for determination an allegation of infringement, in contrast to a claim for relief in respect of an infringement which has been found and is the subject of a final order.

27    The only reason proposed by the applicant for such an approach is that it is common for issues of liability and quantum to be separated and there may be lengthy delay between the making of final orders on liability and on quantum, with the consequence that the patentee might enjoy a statutory monopoly for longer than might otherwise be the case. This is true, but I consider that an important purpose of the concept of “relevant proceedings” in the Act is to ensure that the status of the fundamental juridical fact – the patent – is not affected by any action of the Commissioner until the Court has finally disposed of all issues in the proceeding in respect of, relevantly, infringement, invalidity and revocation. In the case of infringement in particular, an outstanding claim for damages or an account of profits in respect of the infringement readily fits within the concept of “proceedings for infringement”. This is because the relief sought is relief for the infringement. The fact that the infringement itself is no longer in issue does not transform the proceedings, which remain undetermined, into something other than proceedings for the infringement. As Atlantis discloses, a final order to the effect that the patent is invalid may involve different considerations in that nothing then remains in the proceedings at all, or what does remain (suspension of an order for revocation in that case), cannot found a conclusion that “relevant proceedings” are pending.

28    By contrast, there are sound reasons for concluding that the purpose of the Act is best achieved by construing proceedings “for infringement” as encompassing any proceeding in which infringement has been found and has been the subject of orders (be they interlocutory or final, the classification being immaterial for present purposes), but relief consequential upon the infringement (including damages) remains to be determined.

29    First, relief is not at large. The infringements found will determine the relief available in the proceedings. The infringements are the central fact upon which any relief will depend. The relationship between the infringement and what remains to be determined in the proceedings is thus a close and essential one.

30    Second, this construction ensures that the fundamental juridical fact – the patent – cannot be changed until the “relevant proceedings” are finished. As a result, there can be no waste of time, cost and the resources of the parties and the Court from any change to the patent while the Court remains seized of the matter.

31    Third, this construction ensures that the body which is seized of the matter – the Court – has complete control over the course of the proceedings before it. The applicant’s construction would give rise to the potential for an unseemly race between a party wanting a determination of damages from the Court and a party wanting a re-examination of the patent by the Commissioner before any determination of damages.

32    Fourth, giving the word “for” a meaning of sufficient amplitude to encompass proceedings in which relief for infringement remains pending does not alter the fact that all things must come to an end, including “relevant proceedings”. Once those proceedings are no longer pending, the constraints on the Commissioner disappear. The mischief (if it be such) of mere delay in the Commissioner’s capacity to re-examine a patent, compared to the mischief of altering the juridical foundation of proceedings while they are still on foot supports this approach to construction.

33    Accordingly, I consider that the delegate of the Commissioner was right to conclude that, by s 97(4) of the Act, the Commissioner could not re-examine the patent because there are “relevant proceedings” pending in relation to the patent.

34    It follows that the application for judicial review is not sustainable and must be dismissed. As a result it is not necessary to deal with three other issues that were raised against the application, but I will deal briefly with each issue.

35    The Commissioner and patentee argued that the applicant did not have standing to bring the proceedings because it had not demonstrated that it was a “person who is aggrieved by the decision” (or purported decision, another argument dealt with below). A “person who is aggrieved by a decision” within the meaning of s 5(1) of the ADJR Act, by s 3(4), includes a person “whose interests are adversely affected by the decision”. The Commissioner and patentee argued that the applicant is not a person aggrieved within this definition because it is merely a patent attorney and consultancy firm which lodged the request for re-examination, but has not demonstrated any interest which might be affected, beyond the making of the request. Reference was made to numerous decisions explaining the interest that a person must have over and above the interests of the public at large in order to qualify as a person aggrieved including the following:

(1)    Ogle v Strickland (1987) 13 FCR 206 at 308-10 and 315, which affirms that the concept of a “person aggrieved” cannot be interpreted as including “any person”, as some “special interest” in the outcome of the decision is required. Vocational, spiritual and/or cultural interests could suffice.

(2)    Tooheys Ltd v Minister of Business & Consumer Affairs (1981) 54 FLR 421 at 437, which confirms that judicial review may only be sought by “a person who can show a grievance which will be suffered as a result of the decision complained of beyond that which he or she has as an ordinary member of the public”.

(3)    United States Tobacco Co v Minister for Consumer Affairs (1988) 20 FCR 520 at 527, which confirms that what is required is “an involvement with a case greater than the concern of a person who is a mere intermeddler or busybody”.

(4)    Right to Life Association (NSW) Inc v Secretary, Department of Human Services & Health (1995) 56 FCR 50 at 65-66, where it was stated that “[t]he applicant’s interest must not be remote, indirect or fanciful”, a test which requires more than “the satisfaction of righting a wrong or upholding a principle or winning a battle if the action succeeds or [that the person] will suffer some disadvantage other than a mere sense of loss or grievance or a debt for costs if the action fails”.

36    The Commissioner and patentee also referred to Argos Pty Ltd v Minister for the Environment and Sustainable Development [2014] HCA 50; (2014) 254 CLR 394 (Argos). In that case, French CJ and Keane J said that:

[42] The test for standing to apply for review of a decision under the ADJR Act is expressed in that Act. The applicant must be “a person aggrieved“, a criterion which may be satisfied if the applicant is a person whose interests are adversely affected by the decision. The text of the criterion, on its face, does not allow for its expansion or contraction according to the scope and purpose of the enactment under which the decision is made. It is not to be read or applied with reference to normative considerations based on the policy of the enactment. To do so by reference to individual enactments would undermine an important purpose of the ADJR Act, which was to simplify judicial review processes.

[43] Consistently with that proposition it will be necessary to have regard to the enactment under which the impugned decision is made and the legal effect and operation of the decision in order to determine how the interests of the applicant for review may be adversely affected or the applicant otherwise a person aggrieved.

37    In addition, the patentee referred to Assa Abloy Australia Pty Ltd v Australian Lock Company Pty Ltd [2005] FCAFC 246; (2005) 147 FCR 126 (Assa Abloy), which applied Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, in support of the proposition that the same approach applies in the context of intellectual property interests.

38    Each of the propositions of law put by the applicants may be accepted. However, apart from Assa Abloy, the cases relied upon (and there are many to similar effect) involve an application for review by a stranger to the administrative decision. For example, in Argos, the applicants were competing retail businesses or landowners. They applied for review of the Minister’s decision to approve a commercial development on the basis that their alleged interest as competing retail businesses or landowners made them persons aggrieved. The principles established in the cases cited apply to circumstances in which a stranger claims that they have been affected by an administrative decision. To be a person aggrieved in these circumstances, such a person must establish an effect on their interests over and above that of every other member of the public.

39    The present case is different. Section 97(2) provides that any person may request a re-examination. Unlike Assa Abloy, this capacity to make a request is not limited to any “person interested” or “person aggrieved”. The point in Assa Abloy is that if a statute (in that case, the Designs Act 1906 (Cth)) permits any “interested person” or “aggrieved person” to make an application, the same principles apply as under the ADJR Act – the person must have some real interest in the subject matter, over and above that of any member of the public. But, by the terms of s 97(2), all standing requirements are put to one side – any person may apply for re-examination.

40    Then we come to the ADJR Act. It may be accepted that the ADJR Act is not construed by reference to the subject matter, scope, object or purpose of other statutes (see Argos). For the ADJR Act, which imposes a requirement of standing based on the concepts of an aggrieved or interested person, the person challenging the decision must be a person whose interests are adversely affected in some way by the decision, over and above any impact on the public at large. However, the answer to this question in the present case – is the applicant a person whose interests are adversely affected in some way by the decision over and above any impact on the public at large? – is obvious. The applicant is such a person because it is the applicant, not any other person, which made the request for the patent to be re-examined. The Commissioner’s decision (if it be a decision at all, a matter also put in issue by the Commissioner and the patentee, and discussed below) had a real, direct, and immediate adverse effect on the applicant different from the effect on the public at large because it was the applicant’s request that the Commissioner decided could not be processed until the “relevant proceedings” were no longer pending.

41    The submissions to the contrary fail to recognise that the fact that the Patents Act vests in any person a capacity to request a re-examination means that a person who makes such a request is in a position fundamentally different from the public at large, solely by reason of the making of the request. The person who made the request, by reason of the fact of having made the request authorised by statute to be made, necessarily has an interest of the requisite kind to satisfy the test for standing under the ADJR Act in respect of a decision about that person’s request (assuming the decision is otherwise reviewable).

42    The Commissioner and the patentee also argued that there is no decision to which s 5(1) of the ADJR Act applies because the Commissioner’s delegate did not decide anything but, rather, merely made a procedural direction deferring consideration of the request until the “relevant proceedings” were no longer pending. I disagree. I consider it clear that the Commissioner’s delegate decided that the request could not be acted upon because of the operation of s 97(4) of the Act. This was a substantive decision with the requisite quality of finality (Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321 at 336-7). Geographical Indications Committee v The Honourable Justice O’Connor [2000] FCA 1877 is beside the point. It involved an attempt to challenge a direction by the Administrative Appeals Tribunal about the role a party could take in a matter before the Tribunal. There is no relevant analogy available for the present case.

43    The patentee raised s 16 of the ADJR Act which provides that the Court “may, in its discretion” make orders if a ground of review is established. The arguments put, however, also fail to recognise that it is not to the point that the applicant is a firm of patent attorneys whom, it might be inferred, might be acting for a client. Section 97(2) permits any person to make a request for re-examination. Having made the request, the applicant has a relevant interest sufficient to invoke the ADJR Act. That being so, the fact that the applicant may be acting for another person is immaterial. It cannot show bad faith. It cannot be relevant at all to any proper exercise of discretion. Nor can the fact that the Court has rejected a challenge to the validity of the patent be relevant. Equally irrelevant to any issue of discretion is the fact that the patentee, if the re-examination were to proceed, would be dealing with both the claim for damages which remains pending before the Court and the re-examination.

44    For these reasons, as I said, the only real issue is whether the Commissioner’s delegate correctly applied s 97(4) to the facts. I consider the Commissioner’s delegate did so, with the consequence that the application should be dismissed. The Commissioner should be awarded costs, but I will hear from the parties about the costs of the patentee who intervened in the proceeding.

Associate:

Dated:    12 September 2016