I am in receipt of your minute herein of 3 June 1921.

I do not agree with the interpretation placed by the Law Officer upon the words 'any person who has applied for protection' in a foreign country, which are contained in section 121 of the Patents Act.

I have carefully considered the meaning of that expression, and am of opinion that the right given by section 121 of the Act is not one which can be transferred, but is one which is personal to the applicant in the foreign country. I think the principle of the cases re Shallenberger 6 R.P.C.550 and re Carez 6 R.P.C.552 applies with equal force to the Australian law as to the British law. For instance, under the British law the classes of persons who may make an ordinary application for a patent are more limited than is the case under the Commonwealth Act, and do not include a company applying alone. An application under international arrangements may, however, be made by a company provided it was the applicant abroad. Thus it is recognised that the right given by the section of the British Act, which deals with international arrangements, is one which is independent of the general provisions of the Act relating to the persons who may apply for patents.

I think that the right given by the corresponding section of the Commonwealth Act is similarly independent of the general provisions of the Commonwealth Act relating to the persons who may apply for patents. That is to say, though the application under international arrangements is made under section 32, it can only be made by a person qualified under section 121 to make it.

With regard to your question as to whether the decision of the Law Officer is in law a decision within the meaning of section 43 of the Act, I desire to say that, in my opinion, it is such a decision.

Section 42 of the Act provides, inter alia, that:

If the examiner reports adversely to the application or specification on any matter referred to in sections thirty-nine and forty, the Commissioner may-

(a) require compliance by the applicant within a specified time with such directions for the amendment of the application or the specification as the Commissioner sees fit to give . . .

In this case the late Commissioner directed the substitution of one applicant for another, and the Law Officer held that such a direction was not one which the Commissioner was empowered to give under section 42. I agree with the Law Officer in this respect.

Section 43 of the Act provides that:

1. An appeal shall lie to the Law Officer from any direction of the Commissioner under the preceding section.
2. The Law Officer shall hear the applicant and the Commissioner and shall decide whether and subject to what conditions, if any, the application and specification shall be accepted.

In my opinion the words 'direction of the Commissioner under the preceding section' include any direction given by the Commissioner which purports to be a direction under the Act.

The Law Officer decided-

1. that the appeal be upheld and that the Commissioner's decision be reversed;
2. that the application and specification be accepted if the Commissioner of Patents is satisfied that the Marconi Wireless Telegraph Company of America is the assignee of Roy Alexander Weagant, being the person in whose name an application for the protection of the invention referred to in the application was made in the United States of America.

I am of opinion that the decision of the Law Officer is a decision under section 43, and, having regard to the latter part of sub-section (2) of that section, is binding as such on the Commissioner in the case in which it was given.

I have already advised that I disagree with the Law Officer's interpretation of section 121 of the Act. Although the Law Officer's interpretation of that section is binding in this case, it is not, in my opinion, binding on the Commissioner in other cases, and it should, I think, be disregarded in those cases.

[Vol. 18, p. 81]