Farbridgo v. The Registrar of Parents.
Present: Wljeyewardene and Rose JJ.FARBRIDGE, Appellant, and THE REGISTRAR OFPATENTS, Respondent.'
74—D. C. Inly. Colombo, 82.
Patents—Extension of term of patent—Points for consideration by Court—Right of appeal from decision of District Court—Patents Ordinance(Cap. 123), ss. 28, 36.
A decision of the court made under section 28 (3) of the PatentsOrdinance is subject to an appeal to the Supreme Court.
Where the petition of a patentee for an extension of the term of hispatent is referred to the court the court will, under section 28 (4) of thePatents Ordinance, consider whether (a) the petitioner has proved thathis invention is of great practical utility, (6) the patentee’s accountsshow clearly and precisely how he has been remunerated in respect ofhis patent, (c) there are other circumstances favourable to the grant ofan extension.
A PPEAL from a judgment of the District Court of Colombo. The
-C appellant, who was the patentee of an invention, presented apetition to His Excellency the Governor praying for an extension ofthe term of his patent. The petition was referred by the Governorto the District Court of Colombo.
H. H. Basnayake, Acting Attorney-General (with him H. W. R. Weera-swriya, C.C.), for the Crown, took a preliminary objection.—Undersection 28 of the Patents Ordinance there is no right of appeal to theSupreme Court from* a “ decision ” of the District Judge. See TheCounty Council of Kent and the Councils of the Boroughs of Dover &Sandwich1. Sectiou 28 is a self-contained section.
fWiJEYOTAitDENE, J. referred to section 36.] That section refers tocases under sections 30, 31, 32, 33 and 34. The word “ decision ” insection 36 is the equivalent of a judgment, whereas the word “ decision ”in section 28 is not the equivalent of a judgment—In re an Arbitrationbetween Knight and the Tabernacle Permanent Building Society2 ; VitaMunicipality v. Gangaram Lotyaji Jadhev.3
H. V. Perera, K.C. (with him D. W. Fernando), for the petitioner,appellant.—So far as the English Act is concerned there is an expressprovision that no appeal lies—section 92 of the 1907 Act as amended bythe Act of 1932. The case of The County Council of Kent and theCouncils of the Boroughs of Dover db Sandwich (supra) has no applicationto the facts of the present case, but the reasoning is applicable. The“ decision ” contemplated in section 36 is a decision by Court. Thesame meaning should be given to the word “ decision ” in section 28.The report to the Governor has a legal significance -»nd the decision of thecourt is a decision of a court acting judicially—The King v. Electricity
1 (1891) 1 Q. B. D. 725.
* (1892) 2 Q. B. D. 613.
J. IT. A 61168-658 <4/46>
(ln<l) A. I. R. Bombay 184.
(1**9) 1 K. B. 171.
194 WUEYEWARDENfi J.—Farbridge v. The Registrar of Patents.
[At this stage Counsel was requested to argue on the merits.]
The application was for an extension of a patent. The matters to beconsidered by the District Judge in such an application are indicated insection 28 (4)—namely, the nature and merits of the invention in relationto the public, the profits made by the patentee, and the other circumstancesof the case. The Judge must find whether the patentee was adequatelyremunerated within the fourteen years. The merit which has to be shownis that the invention is one of great practical utility. The Judge haserred when he said that “ the acid test of utility is the quantum of sales”.The quantum of sales is dependent on utility but that is not the onlything. See Terrell on Patents, 8th ed., p. 298. The question of degreeof utility of the invention is only ancillary. The main question isadequate remuneration. The question whether the period of the patentshould be extended depends on adequacy of remuneration, which inturn depends on the degree of utility of the invention and other circum-stances-—Terrell on Patents, 8th ed., p. 292. One cannot infer theutility of the invention by the number of sales as there is no method ofcorrelating them. The invention from its very nature cannot reasonablybe expected within a short period to come into general use. The Judgehas found that the applicant has not been adequately remunerated.Therefore the applicant should succeed.
H. H. Baanayake Actinq Attorney-General—The English Courts haveheld that the extension of a patent is not a matter of course but is amatter of favour. In the present case the patentee has sold his rights toHoare & Co. A greater onus is therefore cast on him—Frost on Patents,4th ed., p. 220. Further, no separate accounts of the patent have beenkept. The accounts produced were compiled after presentation of thepetition. The patentee is under an obligation to keep accounts and thepetition must be dismissed if the patentee has not kept clear accounts—Frost on Patents 4th ed., p. 237. The law protects only the patentee.The licensee’s position is immaterial. Here the petitioner has failed toshow that he has suffered a loss and the fact that the licensee has lostis no consideration for an extension. As regards the matters to beconsidered in a petition for prolongation of a patent see In re Johnson’sPatentA Considerable benefit to the public must be shown. The wholepurpose of the extension is for the public good. This is a matter ofopinion on the part of the District Judge and the Appeal Court should beslow to interfere.
H. V. Perera, K.G., replied.
Cur. adv. vult.
April 8, 1946. Wijeyewaedene J.—
The appellant is the patentee of the Ceylon Patent No. 2479 relatingto “ Multiflu ” tea drier. The patent was granted for fourteen yearsterminating in June, 1943. In December, 1942, the appellant presenteda petition to His Excellency the Governor under section 28 (1) of thePatents Ordinance praying that the patent may be extended for a furtherperiod of fourteen years. That petition was referred by the Governorunder section 28 (3) of the Ordinance to the District Court of Colombo.
1L. R. (1909) 1 Ch. D. 114 at p. 118.
WUEYEWASDENE J.—Fatbridge v. The Registrar of Patents.
The District Judge found that the invention was not one of more thanordinary utility. He accepted with some hesitation the statement thatthe appellant did not make any profits during the term of the patent andheld that the failure to get adequate remuneration was not due to anyfault of the appellant. The present appeal is preferred against thejudgment of the District Judge.
A preliminary objection was taken at the hearing of the appeal on theground that no appeal lay from the finding of the District Judge. Insupport of this contention the Acting Attorney-General relied mainlyon the following authorities :—The County Council of Kent and theCouncils of the Boroughs of Dover <fc Sandwich 1 and In re an Arbitrationbetween Knight and the Tabernacle Permanent Building Society 2.
In the former case the County Council of Kent appealed from adecision of the Queen’s Bench Division upon certain questions submittedto the High Court of Justice under section 29 of the Local GovernmentAct, 1888, by the County Council of Kent and the Councils of the Boroughsof Dover & Sandwich. As the Act itself did not give a right of appealeither expressly or by implication, the Court of Appeal proceeded toconsider whether the “ decision ” given under the Act “ filled thecharacter of a judgment or order or decree or rule ” which was appealableunder the Judicature Act of 1873. It was held that, as the proceedingsin question were “ purely of a consultative character ”, the provisions ofthe Judicature Act would not give a right of appeal from a finding inthose proceedings.
In the latter case a dispute between the Building Society and Knight,a member, was referred to arbitration. During the arbitration Knightrequested the arbitrators to state a special case for the opinion of theCourt upon the question of law whether the society had the power to makecertain alterations in the rules so as to bind Knight who had not consentedto such alterations. On the refusal of the arbitrators to state a case, theywere directed to do so by an order of Court under section 19 of theArbitration Act, 1889. A case was then stated by the arbitrators and theQueen’s Bench Division expressed an opinion in favour of Knight on thequestion of law. It was held that no appeal lay from that opinion. In thecourse of his judgment Lord Esher, M.R., said :
“ The enactment now in question (section 19 of the ArbitrationAct, 1889) provides that “ any referee, arbitrator or umpire may atany stage of the proceedings under a reference, and shall, if so directedby the Court or a Judge, state in the form of a special case for theopinion of the Court any question of law arising in the course of thereference ”. The words are not “ for the determination ” or“ decision of the Court ”, so that there is not the prima facie difficultywhich existed in the case (viz. :—The County Council of Kent and theCouncils of the Boroughs of Dover <Ss Sandwich) where the statutespoke of “ the decision of the Court ”. It appears to me that whatthe statute in terms provides for is an “ opinion ” of the Court to begiven to the arbitrator or umpire ; and that there is not to bo anydetermination or decision which amounts to a judgment or order.”
1 (1891) 1 Q. B. D. (Court of Appeal) 725.* (1892) 2 Q. B. D. 613.
196 WIJKV JhJW ABDENE J.—Partrridge v. The Registrar of Patents.
Both these cases appear to me to be clearly distinguishable from thepresent case, as section 36 of the Patents Ordinance states in expressterms that “ all decisions and orders of the Court made under theauthority of the Ordinance shall be subject to an appeal to the SupremeCourt The only provision of this Ordinance which refers to a“ decision ” of the Court is section 28 (4) where the legislature hasdescribed as a “ decision ” the finding of the District Judge on a referencemade to the Court by the Governor under that section.
It is, no doubt, true that section 28 (5) does not make it obligatory forthe Governor to act entirely in conformity with the finding of the Court.But that does not appear to be a good reason for ignoring the clearprovisions of section 36.
I would, therefore, hold against the respondent on the preliminaryobjection.
The Ordinance requires the District Judge to consider the followingmatters in coming to a decision under section 28 (4):—
the nature and merits of the invention in relation to the public ;
the profits made by the patentee, and
“ the other circumstances of the case ”.
The merit which has to be shown is that the invention is one of greatpractical utility. On an application for an extension of the term of apatent the petitioner must establish the existence of a greater degreeof merit than is sufficient to support the grant of the patent itself.
One of the tests to be applied in deciding this question of merit is theextent to which the invention has been used. (See Terrell on Patents,8th. Edn. 297). Now this invention has been patented not onlyin Ceylon but in the United Kingdom, India, Straits Settlements, Canada,the United States, Holland and Germany. The total sales for the period1931-1943 were 152. There is no evidence to show how many of thesesales were in Ceylon. The sales may, no doubt, have been reduced by thetrade depression affecting the tea market in certain places during a partof this period. There is also the fact that the invention is of such anature that its adoption necessitates to some extent, at least, the dis-placement of existing machinery and the erection of new machinery.But after making due allowance on these grounds I am unable to say onthe evidence before me that the recorded sales tend to show that theinvention is one of more than ordinary utility. The letters from thecustomers which the petitioner has annexed to his application do not helpthe petitioner much. I do not see any good reason for disturbing thefinding of the learned District Judge that the petitioner has failed to provethat his invention is one of great practical utility.
.It is well settled law that the patentee’s accounts should show clearlysaid precisely how he has been remunerated in respect of his patent.
The accounts filed by the petitioner with the petition are very unsatis-factory. The statement shows only the accounts with regard to sales inCeylon for the year ending September 30, 1939. During the pendencyof the proceedings before the District Court an accountant prepared astatement of accounts from the books of Hoare & Co., a firm of engineers,to whom the petitioner had assigned the sole and exclusive right to sell
CAHEEERATNE J.—ThamotherampiUai v. Oovindasamy.
and manufacture the heaters in Ceylon. That account shows that Hoare& Co. have suffered a loss. That result is, however, reached by calculating on an arbitrary basis the cost of labour, establishment chargesand other expenses incurred by Hoare & Co. in respect of the invention.I find it difficult to form a correct idea as to the profits, if any, made by thepatentee. I thing the District Judge has taken a view somewhat toofavourable to the patentee on this question of remuneration.
As regards the “ other circumstances of the case ” I may say that thereis no evidence whatever to show that the corresponding patents are inforce outside Ceylon. The patentee’s witnesses could not give anyevidence on this point. That too is a circumstance unfavourable to thegrant of an extension.
For the reasons given by me I would dismiss the appeal with costs.Rose J.—I agree.
FARBRIDGE, Appellant, and THE REGISTRAR OF PATENTS, Respondent