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88. The majority of the Committee therefore considered that the extended jurisdiction should be exercised in only the clearest cases, and that no application should be rejected unless it were the unanimous decision of two Hearing Officers sitting together. This majority recommendation was not given effect to in the British Act of 1949, so far as the applications in their examination stage are concerned, although, as we have already stated, the Commissioner was empowered to consider the question of quantum of invention in opposition proceedings. We are in agreement with the majority of the Swan Committee that it does seem that there should be some jurisdiction in clear cases to enable applications to be refused on the ground of lack of subject-matter, but the difficulty is to ensure that it is only in such cases that such jurisdiction would be exercised to the prejudice of the applicant. In paragraph 68 of this report we have quoted Terrell on Patents (Bth Edition), at p. 65, to the effect that the question of subject-matter is one of the most uncertain issues in patent cases, depending as it does on the temperament and experience of the Judge, and it is clear that the human element probably comes into this question more than in any other. . It is essential, therefore, that if any extended jurisdiction is given enabling applications to be refused for lack of subject-matter during the examination stage the legislation should, as far as is possible, be designed to minimize this factor, otherwise irreparable harm may be done to an applicant. 89. In England the Swan Committee suggested that two Hearing Officers should be appointed, sitting together to consider the matter, and that the application should not be refused on the ground of lack of subject-matter unless both officers were in agreement. In a small Patent Office such as the New Zealand, it would be difficult to have two Hearing Officers who would have the qualifications of Hearing Officers in England. We suggest as possibly the best proposal that there should be jurisdiction given to reject applications on the ground of lack of subject-matter, but only in the clearest cases, and that such power should not be vested solely in the Commissioner. Accordingly, if the Commissioner considers that any application should be rejected on the ground of lack of subject-matter a hearing should take place before the Solicitor-General (or his nominee) and the Commissioner sitting together to hear argument; and no application should be rejected on such ground unless the Solicitor-General and the Commissioner are unanimous. No extra fees should be chargeable to the applicant by the Patent Office in respect of such a hearing. Any decision of the Solicitor-General and the Commissioner should be appealable to the Supreme Court, whose decision should be final. 90. It is recognized that such a proposal has its disadvantages, but the difficulty that we foresee if the Commissioner is empowered to reject an application without some further safeguard is that the only redress open to the applicant would be an appeal to the Court with its attendant expense. The result might be in a number of cases that a potentially valuable invention was lost because the applicant was not prepared to face the expense of an appeal. As regards the co-opting of the Solicitor-General or his nominee, it is not anticipated that this proposal will result in any substantial amount of extra work being placed on the Crown Law Office. The number of cases in which applications are likely to be rejected on the ground of lack of subject-matter should be very few. 91. It is only with considerable hesitation that we have come to the conclusion that during the examination stage jurisdiction should exist to refuse applications on the ground of lack of subject-matter, but we are impressed by the fact that at least in New Zealand the number of applications which are opposed is infinitesimal compared with the number which go forward to grant of patent in the usual way. It follows, therefore, that to confer upon the Patent Office power to consider subject-matter in opposition proceedings would give it a right in respect of only a very small minority of the applications coming before it for examination. 92. It appears that during the war years a number of inventions were referred to the War Inventions Board, and it has been suggested that some such tribunal should be constituted permanently. We do not favour any such proposal. The idea of referring patent applications to technical officers not associated with the Patent Office is not new.

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