Tate v Haskins [1935] HCA 40

Tate v Haskins [1935] HCA 40

The Commissioner of Patents may not, after acceptance of a complete specification, refuse to grant a patent on the ground of disconformity with the provisional specification, except in the case of a post-acceptance amendment; such discretion must be exercised before acceptance under the Patents Act 1903-1933 s.42.

Parties
Applicant/appellant: William Taren Tate; Opponent/respondent: Gerald Haskins; Intervenor: Commissioner of Patents
Jurisdiction
Australia
Procedural Posture
Appeal From Patent Commissioner After Opposition Proceedings / Judgment After Hearing Appeal, With Matter Remitted to Commissioner
Outcome
appeal allowed
Legal Topics
Patents, Specifications, Opposition, Procedural Fairness, Exercise of Commissioner’s Discretion
Intellectual Property Law Patents Specifications Opposition Procedural Fairness Exercise of Commissioner’s Discretion

Case Brief

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Parties

William Taren Tate

Applicant/appellant

Gerald Haskins

Opponent/respondent

Commissioner of Patents

Intervenor

Procedural Posture

Appeal From Patent Commissioner After Opposition Proceedings / Judgment After Hearing Appeal, With Matter Remitted to Commissioner

Legal Issues

  1. 1 Whether disconformity between provisional and complete patent specifications justifies refusal of patent after acceptance
  2. 2 Whether the Commissioner has power to refuse patent on ground of disconformity after acceptance
  3. 3 When Commissioner’s discretion to address disconformity must be exercised

Ratio Decidendi

The Commissioner of Patents may not, after acceptance of a complete specification, refuse to grant a patent on the ground of disconformity with the provisional specification, except in the case of a post-acceptance amendment; such discretion must be exercised before acceptance under the Patents Act 1903-1933 s.42.

Court Disposition

appeal allowed

Orders

  • Matter remitted to Commissioner of Patents for determination according to law
  • Respondent to pay appellant’s costs