This article first appeared in The Watermark Journal Vol 23 No 4 (December 2006)
The High Court of Australia hears appeals against the decisions of lower courts in Australia including the Federal Court of Australia. However, there is no automatic right to have an appeal heard by the High Court. The aggrieved party must apply for leave to appeal and persuade the Court in a preliminary hearing that there are valid reasons for the appeal to be heard.
The Special Leave procedure enables the High Court to control the nature and volume of appeals heard by the court. This article highlights the basic factors upon which an application for leave to appeal is granted or refused, and concludes with two recent decisions of the High Court in relation to applications for Special Leave to Appeal.
Criteria for Special Leave to Appeal
Section 35A of Judiciary Act 1903 (Cth) confers a broad discretion on the High Court to determine whether or not to grant Special Leave to Appeal.
In considering whether to grant an application for Special Leave to Appeal to the High Court under this Act or under any other Act, the High Court may have regard to any matters that it considers relevant but shall have regard to:
(a) whether the proceedings in which the judgment to which the application relates involved a question of law:
(i) that is of public importance, whether because of its general application or otherwise; or
(ii) in respect of which a decision of the High Court, as the final appellate court, is required to resolve differences of opinion between different courts, or within the one court, as to the state of the law; and
(b) whether the interests of the administration of justice, either generally or in the particular case, require consideration by the High Court of the judgment to which the application relates.
The High Court applies s35A to applications for Special Leave and has a well developed jurisprudence in the area. The majority of the cases heard in relation to intellectual property matters fall into the first category of s35A, relating to questions of law. In such cases close attention is required to identifying the principle of law in question; accurate and sufficient support in precedent or, if what is propounded is new, that it is a logical development on what has gone before1.
Grounds for refusal
The High Court refuses Special Leave requests more often than it grants them. Reasons for declining Special Leave to Appeal are varied but include2:
- the judgment appealed from is correct or not sufficiently doubtful;
- the appeal is unlikely to succeed;
- the case has little or no relevance beyond the parties to the dispute;
- the case is not a suitable vehicle for the resolution of the legal issue;
- the appeal does not involve a question of law of sufficient public importance;
- an appeal is not in the interests of justice;
- the appeal is against an interlocutory order;
- the appeal challenges a previous decision of the High Court and there is insufficient reason to reconsider that decision; and
- the appeal turns on a question of fact.
The High Court of Australia has recently considered the following matters in relation to intellectual property:
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd  HCA Trans 322 (16 June 2006)
This case involved a patent in the name of Lockwood Security Products Pty Ltd (“Lockwood”) for a deadlock which can be unlocked from the outside. Initially Full Federal Court judgment was given against Lockwood and the claims were held to be not fairly based on the specification. Lockwood applied for Special Leave to Appeal to the High Court and was successful. The High Court reversed the Federal Court decision, held that the claims were fairly based on the specification and ordered the Federal Court to deal with the remaining issues in relation to the case. Lockwood and Doric Products Pty Ltd (“Doric”) appeared in the Federal Court again and the main issue was whether the invention was obvious to a person skilled in the art and whether the invention was part of the common general knowledge (CGK). The Full Federal Court gave its decision in favour of Doric and concluded that the invention was in fact part of the CGK and as such lacked inventive step. Again, Lockwood applied for Special Leave to Appeal to the High Court and in the preliminary hearing, Lockwood convinced the High Court that the Federal Court had erred in applying the principles of obviousness in its judgement. This application for Special Leave was allowed based on the facts of the case, and also because the High Court was not convinced that the law of inventive step had been correctly applied in the Full Federal Court’s judgement.
Pfizer Overseas Pharmaceuticals & Ors v Eli Lilly & Company & Ors  HCA Trans 271 (2 June 2006)
This matter related to Pfizer’s patent for Viagra. The Federal Court at first instance held that claim 10 was invalid on various grounds including fair basis. The patent specification only described compounds which fell within a particular formula and, as claim 10 was not limited to these compounds, the claim was not fairly based. Both Pfizer and Eli Lilly and Company appealed aspects of the first instance decision to the Full Federal Court. The Full Federal Court on appeal considered Heerey J.’s finding on the issue of fair basis. French and Lindgren JJ. upheld Heerey J.’s decision and concluded that claim 10 was not fairly based on the matter described in the specification. Pfizer applied for Special Leave to Appeal to the High Court and claimed the Full Federal Court’s decision raised construction of s 40(3) of the Patents Act 1990 relating to fair basis as a crucial issue. The appeal was dismissed on the basis that the differences between the majority and the minority in the Full Federal Court related to a question of construction of the specification. It was stated that the outcome of the case turned upon the application of well-established principles to the particular facts and circumstances, and that the case did not appear to raise an important and novel issue of law suitable to a grant of Special Leave to Appeal.
The Special Leave procedure acts as a “gate keeping” mechanism controlling the nature and volume of appeals made to the High Court. A significant factor in deciding the outcome of an application for Special Leave is whether the case raises a question of law of significant public importance. However, the High Court has demonstrated it may take on judgements of subordinate courts for review when the legal determination is considered wrong.
1. Advocacy and Special Leave Applications in the High Court of Australia, The Victorian Bar - Continuing Legal Education, 22 November 2004, speech by The Hon Justice Kenneth Hayne.
2. ALRC Report 92 The Judicial Power of the Commonwealth: A Review of the Judiciary Act 1903 and Related Legislation19. Appellate Jurisdiction of the High Court