Lacme v Gallagher Group

High Court, Wellington, Civ 2004-485-2659, Fogarty J, 17 August 2005

Under the New Zealand Act, once a patent has been granted, it can be revoked in two different ways. It can be revoked by the High Court by way of application under s41. Alternatively it can be revoked by the Commissioner by an application s42. A s42 application can only be made within 12 months of the sealing of the grant and only by any person interested who did not oppose the grant.

The respondent had applied to the Commissioner for revocation of the appellant’s patent pursuant to s42 of the Patents Act 1953. The appellant opposed the respondent’s application under s42 on the ground that the respondent was a person who had opposed the grant of the patent (in separate opposition proceedings) and was therefore precluded from applying for revocation under s42. 

Following the original advertisement of the patent, the respondent had filed a notice of opposition pursuant to s21 of the Patents Act. However, it did not file the accompanying statement of the case as required by Regulation 48(1)(c) of the Patents Regulations 1954. The respondent had sought and obtained a number of extensions but it did not comply with the extensions and its opposition foundered.

At first instance the Assistant Commissioner of Patents held that filing a notice of opposition alone did not amount to the launch of an opposition under s21. In order to launch an opposition an opponent was required to comply with both the Act and the Regulations. The concept of a launch of opposition appears to have been borrowed from the United Kingdom Patent Office Practice Manual. (The Patents Act 1953 (NZ) follows the Patents Act 1949 (UK).) The appellant appealed the decision of the Assistant Commissioner. 

The key issue on appeal was whether or not the respondent had opposed the grant of the patent and was therefore barred from bringing an application for revocation pursuant to s42. 

Fogarty J allowed the appeal noting that there was no basis in the text and purpose of s42 for the UK Manual’s gloss of requiring an opponent to not only have filed a notice of opposition but also to have complied with the Regulations and filed a statement of case in time. His Honour also noted that there was nothing in the purpose of the Act which should encourage person who opposed a patent under s21 being slack as to time, taking comfort that they can get the Commissioner’s views by way of application under s42.

Fogarty J concluded that the Assistant Commissioner had fallen into error by testing the application of s42(1) against a threshold requirement of launch of opposition which was not contained in the statute. The respondent did oppose when it filed its notice of opposition and could not therefore apply to revoke the patent under s42.