The Grain Pool of Wa v Commonwealth

• Jurisdiction: Australia Federal only
• Judge: Gaudron,Gleeson CJ,McHugh,Gummow,Hayne,Callinan JJ
• Judgment Date: 23 March 2000
• Neutral Citation: 2000-0323 HCA E,[2000] HCA 14
• Docket Number: P34/1998
• Date: 23 March 2000
• Court: High Court

The Grain Pool of Western Australia

Plaintiff

and

The Commonwealth of Australia & Anor

Defendants

[2000] HCA 14

Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ

P34/1998

HIGH COURT OF AUSTRALIA

The Grain Pool of WA v The Commonwealth

Intellectual Property — Plant Variety Rights — Whether Plant Variety Rights Act 1987 (Cth) was valid — Whether s 82 of Plant Breeder's Rights Act 1994 (Cth) is valid — Scope of s 51(xviii) of the Constitution — Patents of inventions — Nature of varieties of intellectual property — Whether s 51(xviii) requires novelty or inventiveness.

Constitutional Law — Commonwealth Constitution — Legislative powers of the Parliament — Meaning of — Relevance of meaning of words in 1900.

Words and Phrases — ‘patents of inventions’, ‘origination’, ‘breeding’, ‘intellectual effort’, ‘inventiveness’, ‘novelty’, ‘process’, ‘product’, ‘patent’.

Constitution, s 51(xviii).

Plant Variety Rights Act 1987 (Cth).

Plant Breeder's Rights Act 1994 (Cth).

Representation:

G Griffith QC with W Harris for the plaintiff (instructed by Mallesons Stephen Jaques)

D M Bennett QC, Solicitor-General of the Commonwealth with K J Howard and A R Beech for the first defendant (instructed by Australian Government Solicitor)

T A Gray QC with R A Cameron and M A Perry for the second defendant (instructed by Corsers)

Interveners:

W C R Bale QC, Solicitor-General of the State of Tasmania with S B Kaye intervening on behalf of the Attorney-General of the State of Tasmania (instructed by Crown Solicitor for Tasmania)

R J Meadows QC, Solicitor-General for the State of Western Australia with R M Mitchell intervening on behalf of the Attorney-General for the State of Western Australia (instructed by Crown Solicitor for Western Australia)

ORDER

1. The questions reserved on 18 June 1999 are answered as follows:

(a) Is the Plant Variety Rights Act 1987 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?

Answer: No, it was supported by s 51(xviii) of the Constitution.

It is unnecessary to decide whether it was supported by any other head of Commonwealth power.

(b) Is the Plant Breeder's Rights Act 1994 (Cth) or any part thereof invalid in that it is not supported by s 51(xviii), (xxix) or (xxxix) of the Constitution or any other head of Commonwealth power?

Answer: No, it is supported by s 51(xviii) of the Constitution. It is unnecessary to decide whether it is supported by any other head of Commonwealth power.

2. Costs of the questions reserved to be dealt with by the Justice disposing of the action.

Gleeson CJ, Gaudron, McHugh, Gummow, Hayne and Callinan JJ.

The issues

1 The plaintiff is a statutory authority established under the Grain Marketing Act 1975 (WA). In an action instituted in this Court, the plaintiff claims various relief including a declaration that two laws of the Commonwealth are invalid. There are before the Full Court questions reserved under s 18 of the Judiciary Act 1903 (Cth) as to the validity of these laws. The first law is the Plant Variety Rights Act 1987 (Cth) (‘the Varieties Act’), which commenced on 1 May 1987. It was repealed, with effect from 10 November 1994, by s 78 of the second law, the Plant Breeder's Rights Act 1994 (Cth) (‘the Breeder's Rights Act’).

2 The Varieties Act provided for the grant of what it called plant variety rights in new plant varieties. Pursuant to s 26 of that statute a grant was made on or about 19 January 1990 in favour of the Tasmanian Department of Primary Industry and Fisheries in respect of what was identified as Franklin barley. Section 32 provided for plant variety rights to subsist for a period of 20 years, commencing on the day of acceptance of successful application. The repeal of the Varieties Act by s 78 of the Breeder's Rights Act also brought into operation the transitional provisions of Pt 9 (ss 81–86) of the new statute. Section 82, broadly, provided that plant variety rights under the previous statute were to be treated as plant breeder's rights under the new statute.

3 Section 5 of the Varieties Act had stated:

‘Nothing in this Act requires or permits the grant of plant variety rights in respect of a new plant variety unless:

• (a) the origination of that new plant variety constituted an invention for the purposes of paragraph 51(xviii) of the Constitution; or

• (b) where Australia is a party to the Convention — the grant is appropriate to give effect to the obligations of Australia under the Convention.’

The term ‘Convention’ was defined in s 3(1) as meaning the International Convention for the Protection of New Varieties of Plants, a copy of the English text of which is set out in the Schedule to the statute 1.

4 Section 10 of the Breeder's Rights Act is in similar terms to s 5 of the Varieties Act. In particular, s 10 stipulates that nothing in the statute requires or permits the granting of plant breeder's rights in a plant variety unless ‘the breeding of the plant variety constitutes an invention for the purpose of paragraph 51(xviii) of the Constitution’ (par (b)) or, if Australia is a party to ‘the Convention’, the grant is appropriate to give effect to the obligations of Australia thereunder (par (a)). The term ‘Convention’ for the purposes of the 1994 statute is defined in s 3(1) as meaning the International Convention for the Protection of New Varieties of Plants, a copy of the English text of which is set out in the Schedule 2. It is common ground on the pleadings that Australia at the date of the writ in this action was not a party to the Convention, as so defined. It was, however, at the time of the grant in respect of Franklin barley a party to the Convention as then defined for the purposes of the Varieties Act.

5 The second defendant maintains that it is the licensee from the State of Tasmania of the Franklin barley rights, that it has the exclusive right to sell and export Franklin barley, and that the plaintiff, in selling within Australia and in exporting from this country Franklin barley, has acted in breach of the second defendant's rights.

6 The essence of the issues raised by the constitutional questions which are reserved is (a) whether the grant of rights in respect of Franklin barley under the Varieties Act was of no effect because that statute, in providing for such a grant, was beyond the legislative power of the Commonwealth and (b) whether, even if those rights were then validly granted, s 82 of the Breeder's Rights Act could not validly continue the rights in Franklin barley by reference to the new legislation.

7 The provisions in both statutes respecting the Convention were designed to engage the power of the Parliament to make laws with respect to external affairs under s 51(xxix) of the Constitution. If their validity were upheld on the other ground put forward, s 51(xviii) of the Constitution, there would be no need to consider the external affairs power. We propose then to consider first the operation of the power in s 51(xviii).

8 It should be noted at the outset that the terms of s 5(a) of the Varieties Act and s 10(b) of the Breeder's Rights Act engage the constitutional head of power as the criterion against which every grant under the legislation is to be measured to determine the efficacy of the grant. That method of drafting thus has the effect of engaging the constitutional head of power as the factum upon which the statute operates from time to time.

9 In R v Federal Court of Australia; Ex parte WA National Football League, Barwick CJ observed 3:

‘It is no doubt convenient to the Parliament and the parliamentary draftsman to avoid the risk of the unconstitutionality of a statute by using statutory definitions expressed in terms of the relevant constitutional power. By so doing, no question of the constitutional validity of the Act itself will arise so far as it concerns matters related to and dependent upon the statutory definition. But in the long run such a course may well prove highly inconvenient and costly to those affected by the statute. As in this case, the citizen may find himself litigating a constitutional question of some dimension. If I may venture to say so, it would be better if the Parliament and its draftsman assayed a definition, eg as in this case of a trading corporation, which covered those described bodies which the Parliament wished to embrace within the operation of its legislation, making for this purpose its own judgment of the ambit of its constitutional power.’

10 In the case of the two statutes presently under consideration, the legislature has gone on in the detailed provisions to assay a judgment as to the ambit of the constitutional power. However, it has included ss 5 and 10 as precautionary mechanisms to ensure grants are not made beyond the ambit of constitutional power.

11 Rather than leaving the question of validity in the unsatisfactory state, that would, as Barwick CJ pointed out, follow from relying simply upon ss 5 and 10, we should determine whether the statutes are supported by s 51(xviii) on consideration of each statute as a whole. This involves identification of those general principles by which the paragraphs of s 51 of the Constitution and the validity of laws said to be supported thereby are assessed, then the construction

of s 51(xviii), and, as a final step, the measurement of the two statutes here in dispute against the criteria established by the preceding steps.

12 The plaintiff contends that the operation of s 51(xviii) with respect to patents of inventions is limited by what it identifies as certain traditional principles of patent law. In particular, it submits that there are certain fixed minimum requirements for the ‘intellectual effort’ required of inventors respecting novelty and inventive step, that there is a crucial...