HARSHAW CHEMICAL COMPANY'S PATENT

97 REPORTS OF PATENT, DESIGN AND TRADE MARK CASES 20th May, 1965 [1965] [No.4] IN THE PATENT O'FFICE 9th, 10th and 11th March, and 13th May, 1964. HARSHAW CHEMICAL COMPANY'S PATENT Patent-Extension-War loss-" Hostilities between His Majesty and any foreign 5 state"-Korean war-s-Extension refused. Patents Act, 1949, s. 24. An application for extension of the term of a patent relating to a method of electroplating using nickel, lrvas made on the ground of war loss based on the difficulty of developing the invention over the period of nickel scarcity caused by the 10 Korean war. Held, that the patentee had failed to show loss under section 24 " by reason of hostilities between His Majesty and any foreign state," because the Democratic People's Republic of Korea was not a "' state" recognized by H.M. Government at any relevant time. 15 Obiter. If North Korea was a " state," then the facts were such as to justify a finding that " hostilities" had existed. Courtaulds Ltd.'s Application [1956] R.P.C. 208; Ransburg's Patent [1960] R.P.C. 242; Mangold's Patent (1951) 68 R.P.C. 1, and The Arantzazu Mendi [1939] A.C: 256 H.L., considered. 20 The applicants, The Harshaw Chemical Company, were the registered proprietors of letters patent No. 622,761, dated 31st March, 1947, relating to a method of bright nickel plating. Their application for an extension in respect of war loss was opposed by W. Canning & Co. Ltd. (Canning), Wilmot-Breeden Ltd., and Albright & Wilson (Mftg.) Ltd. (Albright). The applicants asked for an extension of six years based 25 entirely on the shortage of nickel between 1950 and 1957 which they alleged was caused by the Korean war. The opponents contended that the shortage of nickel was not occasioned" by reason of hostilities between His Majesty and any foreign state" and asked that the Comptroller or one of the opponents should inquire from the Foreign Office as to whether there were any hostilities with a foreign state. The 30 Foreign Office's reply to an inquiry by the Comptroller was in these terms: - 35 " The United Kingdom was one of the States which as Members of the United Nations participated in the hostilities against the so-called Democratic People's Republic of Korea. These hostilities lasted from June 25, 1950, to July 27, 1953. The decision to send United Kingdom troops to Korea was taken on July 26, 1950; these troops arrived in Korea on August 29, 1950. 98 [No.4] REPORTS OF PATENT, DESIGN ANI) TRADE MARK CASES [1965] Harshaw Chemical Co?s Patent iExtensiont The Democratic People's Republic of Korea was not recognised by either His late Majesty's Government or Her Majesty's Government as an independent sovereign State at any time during the above-mentioned period of hostilities, and it has not subsequently been so recognised by Her Majesty's Government." The remaining facts and the arguments presented by counsel appear from the 5 following decision of Mr. S. H. Biles, dated 13th May, 1964. Vivian Price instructed by Mathys & Squire, appeared for the applicants. Peter Ford instructed by Marks & Clark, appeared for W. Canning & Co. Ltd. Wilson (Mfg.) Ltd., and Wilmot-Breedon Ltd. Dr. A. W. White, of Albright appeared for that company. 10 s. Mr. Biles stated the facts substantially as set out above and continued: Mr. Price argued that the absence of recognition did not alter the fact that the Democratic People's Republic is a "state." A "state" is merely a country with certain sovereignty, as, for example, a member state of the U.S.A. The Foreign Office statement admits the existence of the Democratic People's Republic as an entity, 15 and it is clear from the reference thereto in Whittaker's Almanac that it is just as much a " state ,,, as the Republic of Korea. 1\11r. Ford, on the other hand, submitted that the reference in section 24(8) of the Act to " a person who is a subject of such a foreign state is as mentioned in subsection (1) of this section" necessarily infers that a " state" within the meaning of 20 section 24 must have subjects. This in turn introduces the concept of sovereignty, which the Democratic People's Republic does not possess because it has not been recognised as an " independent sovereign state." Mr. Ford referred to " International Law" by L. Oppenheim, Volume 1, seventh edition, page 145, in support of his contention that recogIlition is a declaration, on the part of the recognising state, that 25 a foreign community or authority is in possession of the necessary qualifications of statehood, these qualifications being the existence of a people, a country, a governmerit and a sovereign government. .It followed that in the absence of recognition there was no evidence that the facts are such that the Democratic People's Republic of Korea comprised a state. Its name implied a claim for authority over the whole 30 state of Korea whereas there existed also a government in South Korea representing the" Republic of Korea." The necessary qualification of sovereignty was therefore not satisfied. Later, Mr. Ford referred to Halsbury's Laws of England, third edition, volume 15, paragraph 612, on page 336, as the authority that the courts take notice of the 35 existence and titles of foreign states which are recognised by the British Government as independent, and, as appears from the footnote (r) that the existence and status of foreign states not so recognised are not noticed by the judges. Dr. White supported Mr. Ford's arguments and stressed that the applicants had failed to supply any evidence to prove that the hostilities in Korea were between 40 the Crown and a foreign state. He submitted that section 24 must be construed strictly and that .it would be wrong for the Comptroller to hold that the Democratic People's Republic was a state under section 24 in the face of the Foreign Office statement. The history of events shows that Korea was a single unitary state divided in itself. and the l!njted N~tj01?s int~ryened in Korea to restore order and unify the 4S country. Crown intervention In a CIvIl war does not qualify for loss under section 24. In reply, ~r. ~rice argued that the Democratic People's Republic clearly possessed all the qualifications of statehood, and It was not necessary for sovereignty to be 99 [1965] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No.4] Harshaw Chemical Co.'s Patent (Extension) complete for a '" state" to exist. On recognition, the concern in the present case is with facts and not the niceties of international diplomacy. The acceptance of North Korea is evidenced by the references in the Post Office Guide on the sending of letters to North or South Korea, and the Comptroller can act accordingly under 5 section 24 without prejudicing the position of the Crown. In deciding on this question I am impressed with the force of Dr. White's argument that section 24(1) must be construed strictly. In developing this he referred to Courtaulds Ltd.'s Application [1956] R.P.C. (...truncated)