26.4. Production of documents under s 61(1): Precedent

There have been very few requests for access to unpublished documents under s 61(1)(b) of the Designs Act (or s 56(1)(b) of the Patents Act 1990 or the equivalent s 55(1)(e) of the Patents Act 1952).

Section 55(1)(e) of the Patents Act 1952 was judicially interpreted in Secton and Vortoil v Delawood and Ors (Supreme Court of Victoria, unpublished):

In s 55(1)(e) I consider that the words ‘before the Commissioner or in a legal proceeding’ govern not only the preceding word ‘produced’ but also the preceding word ‘inspected’. The power to order inspection, conferred by the section, is so far as relevant confined to ordering and inspection ‘in a legal proceeding’. It may be – and it is unnecessary to decide – that the power extends in a proper case to ordering that the unpublished application and specifications be made available for inspection by the Court, in a proceeding about to be issued, as soon as the proceeding is issued, that is to say, at a future date provided that, by the future date, the legal proceeding is constituted, but I am clearly of the opinion that no order may be made under the section for inspection in relation to legal proceedings contemplated where the inspection may take place before relevant legal proceedings have been properly instituted; and the better view is, I think, that no order for inspection in relation to court proceedings may be made at all until such proceedings have been properly constituted. The inspection can take place only in the course of, and for the purpose of, ‘live’ legal proceedings.

Note that this quotation refers largely to the powers of a court.

The handling of a request to the Commissioner of Patents under s 55(1)(e) of the Patents Act 1952 was referred to in Magee v Farrell (1986) AIPC 90-296.

Note also Max-Planck-Gesellschaft zur Forderung der Wissenschaften EV & anor v Amgen Inc (1998) AIPC 91-434.