"(2) The jurisdiction of the Federal Court to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution."

Decisions under sections 35, 36, 42, 51, 60, 75, 81, 82, 100A, 101, 101F, 101J, 101N, 104, 109 and 191A may be appealed to the Federal Court.

Procedure for appeals

The procedure for an appeal is set by the Federal Court Rules including those that are particular to patent appeals included in Division 34.3 - Intellectual Property. As provided in Rule 34.24, a notice of appeal of the Commissioner’s decision must be filed within 21 days of the date of the decision. The Federal Court provides a specific form for intellectual property appeals and the notice must include the matters required by Rule 34.24.

Note: The notice of appeal must be served on the other parties to the appeal and on the Commissioner within 5 days of filing with the Court.

Where the decision is in relation to oppositions and other inter parte proceedings, the Commissioner is not normally a party to the appeal and should not be named as a respondent – see 7.14.1 Appeals to the Federal Court (Role of the Commissioner).

Once served with the notice of appeal, the Commissioner is required within 14 days to lodge documents necessary for the hearing of the appeal with the Court and to provide each party to the appeal a notice of the documents filed – see Rule 34.30.

Nature of appeals

An appeal to the Federal Court is a proceeding in the original jurisdiction of the Court and is not an appeal in any technical sense. The appeal must be decided upon the evidence adduced before the Court and is in the nature of a rehearing de novo. The Court “stands in the shoes” of the Commissioner and exercises the judicial power of the Commonwealth in deciding the same controversy that was before the Commissioner.

Pursuant to Federal Court Rule 34.31, evidence before the Commissioner may be admissible in the appeal with the leave of the Court, however the provisions of the Evidence Act apply to the admissibility of such evidence.

See:

Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company [1969] HCA 7 at [13]; (1969) 120 CLR 136 at 142-3
New England Biolabs Inc v F Hoffmann-La Roche AG [2004] FCAFC 213 at [23]
Sherman v Commissioner of Patents [2008] FCA 1026.

Effect on implementing the decision

When the Commissioner issues a decision, it will normally have immediate effect unless the delegate decides otherwise. Where, pending an appeal, implementation has the potential to significantly prejudice the interests of one party over another or to create public confusion, the Commissioner may however decide to stay implementation of the decision or at least certain consequential actions during the appeal period and, if an appeal is filed, until the appeal is determined or discontinued. For example, if dismissing an opposition the Commissioner will generally not proceed to grant a patent until the appeal period has passed.

Whether or not to stay the implementation of a decision involves:

“considering the public interest and whether failure to stay the applications would permanently defeat rights or cause injustice to one or other of the parties. It involved a weighing process involving considerations of fairness and of the public interest” (Joan Margaret Martin on behalf of the Widi Mob/Western Australia/Westland Gold NL; ABC Resources Pty Ltd; WMC Resources Ltd; Resource Exploration NL and Gold Partners NL [1999] NNTTA 228).

Applying these principles in Pfizer [2005] APO 38, the Deputy Commissioner decided to stay a potential decision to rectify the Register pending the appeal period and, if an appeal was filed, until an application for a stay had been considered by the Court.

In that case the Court ordered the Commissioner not to amend the Register upon Pfizer giving an undertaking as to damages.

Amendments

Where a decision is made allowing time for proposed amendments to be made overcoming grounds of opposition and the decision is appealed, section 112A operates so that any proposed amendments can only be pursued under section 105 until the appeal is finally determined, withdrawn or otherwise deposed of – see 7.14.5 Section 105 Amendments.

The power of the Court to deal with amendments under sec 105(1A) up until the making of final orders is made clear in Meat & Livestock Australia Limited v Cargill, Inc (No 2) [2019] FCA 33. The amendments can be filed after the Court has made adverse findings on the appeal.

Once the appeal is filed, any request to amend filed with the Commissioner will be refused under reg 10.4. See Suntory Holdings v Commissioner of Patents [2013] FCA 999.

Role of the Commissioner

Section 159 provides that the Commissioner may appear and be heard at the hearing of an appeal to the Federal Court against a decision or direction of the Commissioner even if the Commissioner is not a party to the appeal. Under Federal Court Rule 34.23, the Commissioner is not a party to a proceeding other than an appeal:

from a decision of the Commissioner; and
in which there is no party in opposition to the party bringing the appeal.

Whether or not the Commissioner appears in an appeal, the role the Commissioner takes is highly dependent on the circumstances, including whether there is a contradictor to the party bringing the appeal, or whether there are significant issues relating to the integrity of the patent system.

In relation to the role of the Commissioner in proceedings in Merck & Co Inc. v Sankyo Co Ltd [1992] FCA 198 Lockhart J stated at [7]:

“[t]he rule gives the Commissioner a right of appearance and the right to be heard; but it does not define the issues on which or the extent to which he may be heard. This is a matter for the Court in each case and will vary according to the nature of the issues and the role played by the true adversaries to the litigation”.

and at [11]:

“The Commissioner should be heard fully on questions concerning his powers and procedures. His role should be limited when the parties to the proceeding are before the court and each pursues an active role. His role would then be akin to an amicus curiae. But if a party does not appear or does not argue his case before the Court , the Commissioner should, speaking generally, be allowed more latitude by the Court with respect to the issues which he wishes to address and the extent to which he seeks to present a case. Ultimately it is for the Court to control the proceeding before it. There is one important qualification, and that is that (as rule 3 provides) where there is an appeal to the court from a decision, direction or determination of the Commissioner in proceedings in which there was no party in opposition to the party who is the applicant in the Court . In such a case the Commissioner is deemed to be a party, with the full rights of a party; otherwise there will be no-one to present a view contrary to that of the applicant in the Court .”

Where the Commissioner is properly a party to an appeal (for example, an appeal against an ex parte decision), the Commissioner is usually subject to an award of costs, and may seek an award of costs, according to the normal rules of court.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023