Potter v Broken Hill Pty Co Ltd
Potter v Broken Hill Pty Co Ltd, 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.
Facts
Charles Potter was an analytical chemist who lived in Melbourne, Victoria who in 1901 obtained patents in New South Wales and Victoria for a froth flotation process using sulphuric acid to separate silver, lead and zinc ores from waste. The Broken Hill Proprietary Company, now BHP, was incorporated in Victoria and operated a silver, lead and zinc mine Broken Hill. Guillaume Delprat, the General Manager of BHP, claimed to have discovered a similar process, and this was used at BHP's mine. Potter commenced proceedings in the Supreme Court of Victoria. BHP denied the novelty and utility of the patented process, but also that an action for the infringement in New South Wales of a New South Wales patent was not justiciable in Victoria. The question of law whether the claim was justiciable in Victoria was referred to the Full Court. Potter was represented by Higgins while BHP was represented by Isaacs. A majority of the Supreme Court held that the Victorian Courts had no jurisdiction to deal with the suit as the cause of action was local to New South Wales. Potter appealed to the High Court.Judgement
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.'
Judicial consideration
Australia
In 2002 a majority of the High Court indicated that it would like to reconsider this authority, with Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ stating "We also would reserve for further consideration in an appropriate case the Moçambique rule, and the standing of Potter v Broken Hill Propriety Co Ltd."The matter arose again in the High Court in 2011 where French CJ, Gummow, Hayne, Crennan, Kiefel and Bell JJ noted that Potter v Broken Hill Propriety Co Ltd
the High Court has not reconsidered the standing of Potter v Broken Hill Propriety Co Ltd.
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 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 273; Tyburn Productions Ltd v Conan Doyle Ch 75.'The 2011 United Kingdom Supreme Court decision of Lucasfilm Limited v Ainsworth, significantly eroded much of the underpinning of this case and of the Moçambique rule, at least within the UK.
Cases referring to this case
;AustraliaPetrotimor Companhia de Petroleos SARL v Commonwealth Regie Nationale des Usines Renault SA v Zhang. Nudd v Taylor. As authority for the application of the Moçambique rule to foreign immovables being accepted into Australia.Dagi v Broken Hill Proprietary Company Limited . Inglis v Commonwealth Trading Bank.;United KingdomLucasfilm Limited v Ainsworth, Hesperides Hotels Ltd v Muftizade. Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd.