Re Robinson's Patent [1918] HCA 35

Re Robinson's Patent [1918] HCA 35

The Court found it had jurisdiction to entertain the application for patent term extension, even though it was made after expiration, due to the effect of subsequent statutes and war-time regulations expressly permitting such extensions. On the merits, the petitioner showed the invention held practical merit and the remuneration, as established on corrected accounts, was inadequate compared to the benefit of the invention. However, the petitioner's delays in exploiting the patent across Australia militated against unconditional extension. A new patent was ordered for seven years, subject to conditions ensuring the invention's availability in all states and at reasonable terms, to protect...

Parties
Petitioner: James Robinson; Caveator: Friedrich Wilhelm Arthur Anders
Jurisdiction
Australia
Judgment Date
09 July 1918
Procedural Posture
Patent Extension Application / Judgment on Application (after Full Hearing)
Outcome
Extension granted (new patent for seven years subject to conditions)
Legal Topics
Extension of Patent Term, Patent Holder Remuneration, Public Interest in Patent Extension, Practice and Procedure for Patent Extension, Jurisdiction to Extend Patents After Expiry
Intellectual Property Patents Extension of Patent Term Patent Holder Remuneration Public Interest in Patent Extension Practice and Procedure for Patent Extension Jurisdiction to Extend Patents After Expiry

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Parties

James Robinson

Petitioner

Friedrich Wilhelm Arthur Anders

Caveator

Procedural Posture

Patent Extension Application / Judgment on Application (after Full Hearing)

Legal Issues

  1. 1 Whether the High Court has jurisdiction to hear an application for extension of a patent term after expiry in light of governing statutes and regulations
  2. 2 Conditions under which a court should grant extension of a patent: adequate remuneration, public interest, merits of the invention, and compliance with procedural requirements
  3. 3 What principles and evidentiary standards apply in assessing adequacy of patent holder's remuneration

Ratio Decidendi

The Court found it had jurisdiction to entertain the application for patent term extension, even though it was made after expiration, due to the effect of subsequent statutes and war-time regulations expressly permitting such extensions. On the merits, the petitioner showed the invention held practical merit and the remuneration, as established on corrected accounts, was inadequate compared to the benefit of the invention. However, the petitioner's delays in exploiting the patent across Australia militated against unconditional extension. A new patent was ordered for seven years, subject to conditions ensuring the invention's availability in all states and at reasonable terms, to protect...

Court Disposition

Extension granted (new patent for seven years subject to conditions)

Orders

  • Petition allowed: grant of a new patent for a further term of seven years from the date of order, subject to detailed provisions and conditions regarding availability, pricing, licensing, and regular reporting, under direction and oversight of the Federal Prices Commissioner or Commonwealth Industrial Registrar.
  • Patentee to take no action regarding manufacture or sale between expiration and grant of new patent; establish depots in all Australian States; submit regular accounts and comply with directions on price, supply, and licensing.