Commissioner’s Decision not Irrelevant on Appeal

The Full Court of the Federal Court has overturned the decision of Jessup J in Sherman v Commissioner of Patents [2008] FCA 1026.

The Full Court was not persuaded that s160(a) of the Patents Act, which provides that on hearing an appeal against a decision of the Commissioner, the Federal Court may admit further evidence orally, or on affidavit or otherwise, resulted in the evidence before the Commissioner was automatically evidence in the appeal.

However, the Court held that:

Evidence as to the decision of the delegate is relevant on two bases. First, the fact that it was made is a fact on which the jurisdiction of the Court depends … Secondly, the substance of the decision on novelty and inventiveness (considered as a statement of the delegate’s opinion) is a matter that the Court may take into account: see [21] above. This is because the delegate (in contrast to the Court) is credited with having some technical expertise.

Further, as evidence of the Commissioner’s decision is both relevant and admissible, so too is the material upon which that decision was based, including prior art and witness declarations filed during the opposition, because “in order to understand the delegate’s decision, it is necessary to have regard to the material that the delegate thought pertinent to his decision”.

This decision reopens the prospect of the Commissioner playing an important public interest role in proceedings where the opponent decides not to contest an appeal.