Patents: The meaning of opposing the grant of a patent - s42(1) - Lacme v Gallagher Group

A recent decision of Justice Fogarty in the High Court illustrates the dangers of putting a gloss on the words of a statute and also demonstrates the risks that are inherent in applying long-established UK Patent Office practice to the New Zealand Patents Act without careful consideration of whether the practice is appropriate having regard to the precise words of the legislation.

The respondent ("Gallagher") had applied to the Commissioner of Patents to revoke the appellant's New Zealand Patent No. 523808.

Lacme opposed Gallagher's application under s42 on the grounds that Gallagher was a person who had opposed the grant of the patent and was therefore not entitled to seek revocation pursuant to s42.

While Gallagher had filed a notice of opposition to the grant of Lacme's patent, it had failed to file a statement of case within the proscribed time and was therefore unable to pursue its notice of opposition.

In these circumstances, the Assistant Commissioner had been asked whether or not Gallagher could contend that it was a person interested who did not oppose the grant of the patent and thus could bring an application for revocation under s42. In answering that question the Assistant Commissioner held:

"I confirm the decision of the office that the applicant in the present case did not oppose the grant of the subject patent under section 21. The filing of the notice of opposition alone did not amount to the launch of opposition proceedings under section 21. The applicant is entitled to proceed with its application for revocation against the subject patent under section 42. The patentee's [Lacme] action [objection to the applicant's filing of an application for revocation] is dismissed."

Lacme contended that the Assistant Commissioner had proceeded on the basis of an error of law arguing that there is no concept in s42 of requiring an opponent to have not only filed a notice of opposition but also to have "launched the opposition".

On appeal, Justice Fogarty considered that the Assistant Commissioner had borrowed the concept of a "launch of an opposition" from the United Kingdom Patent Office Practice Manual and noted that the UKPO Manual does not cite any authority for such a gloss on the UK statute.

He also stated that the concept of whether an opposition has been "launched" does not appear in the language of the New Zealand Patents Act 1953 and in this regard stated:

"It is always dangerous to pose a question as to the application of a section in language other than that used in the section. To do so has to be justified. There is no justification in the reasoning. Thereafter the Assistant Commissioner proceeds to examine the time at which the opposition is to be considered launched.

I can find no basis in the text and purpose of s42 to justify adding the UK manual's gloss of requiring an opponent to not only have filed a notice of opposition but also complied under the regulations and filed a statement of case in time."

Accordingly, Justice Fogarty held that the Assistant Commissioner had fallen into error by testing the application of s42 against a threshold requirement of launch of opposition which is not contained in the statute. It followed that Gallagher had opposed when it filed its notice of opposition and could not apply to revoke under s42.

However, all was not lost for Gallagher, as it was still possible for it to seek to revoke the patent pursuant to s41 but that would involve applying to the High Court as opposed to the Commissioner under s42.

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