Decided 20 March 1906 Ruling court High Court of Australia | End date March 20, 1906 | |
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Full case name Potter v Broken Hill Proprietary Company Limited Citation(s) (1906) 3 CLR 479, [1906] HCA 88 Judge(s) sitting Griffith CJ, Barton and O'Connor JJ. | ||
Potter v Broken Hill Pty Co Ltd (1906) 3 CLR 479, was a significant Australian court case, decided in the High Court of Australia on 20 March 1906. The case was an influential decision in Australian Private International Law which is generally regarded as based on an extension of the Moçambique rule to actions for infringement of patents.
Contents
Facts
'Potter obtained a patent in Victoria for the separation of metals from sulphide ores and a patent for the same process in New South Wales. Potter claimed that (as well as a threatened infringement of the Victorian patent in Victoria) the defendant company (now BHP Billiton) had infringed the New South Wales patent at its mine in New South Wales. Broken Hill denied novelty and utility, but also said that an action for the infringement in New South Wales of a New South Wales patent was not justiciable in the Victorian courts.'
Judgement
'The question of justiciability was argued as a preliminary matter before the Full Court of the Supreme Court of Victoria, which decided by a majority that the claim was not justiciable, and an appeal to the High Court of Australia was dismissed.'
In a key statement affirming the application of the Moçambique rule, Griffith CJ stated:
He further went on to say:
'As already mentioned, the decision is generally regarded as based on the Moçambique rule. Although the Moçambique rule is one of the elements in the conclusion of the High Court, an examination of the way in which the case was argued, and of the reasoning of the High Court, shows that it is a decision extending the act of state doctrine to foreign patents.'
Australia
In 2002 the High Court indicated that it would like to reconsider this authority:
United Kingdom
'It received no attention in the English case-law until it was mentioned by Lord Wilberforce in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508, 536 as authority for the proposition that the Moçambique rule applied in Australia. It was only from the 1980s that it came to be regarded as a significant authority in the field of transnational intellectual property litigation: Def Lepp Music v Stuart-Brown [1986] RPC 273; Tyburn Productions Ltd v Conan Doyle [1991] Ch 75 (both copyright cases).'
The 2011 United Kingdom Supreme Court decision of Lucasfilm v Ainsworth significantly eroded much of the underpinning of this case and of the Moçambique rule, at least within the UK.