Advanta Seeds Pty Ltd and Commissioner of Patents
[2022] AATA 1366
•26 May 2022
Advanta Seeds Pty Ltd and Commissioner of Patents [2022] AATA 1366 (26 May 2022)
Division:GENERAL DIVISION
File Number(s): 2020/8517
Re:Advanta Seeds Pty Ltd
APPLICANT
AndCommissioner of Patents
RESPONDENT
AndNufarm Australia Limited
OTHER PARTY
DECISION
Tribunal:Deputy President I R Molloy
Date:26 May 2022
Place:Brisbane
1. The decision of the Commissioner of Patents under s 223 of the Patents Act 1990 (Cth), dated 24 November 2020, to refuse the Applicant’s application for an extension of time for the payment of a renewal fee for Australian Patent 2009304572 (“the Patent”) is set aside.
2. In lieu thereof the Tribunal extends the time for payment of the fee in respect of the Patent to 9 April 2019 by which time it is understood that the fee had been paid or to 26 June 2022 if payment of the fee has not been finalised or any further action is required in respect of payment.
3. In lieu of the decision of the Commissioner of Patents awarding costs against the Applicant, the parties are to bear their own costs of the hearing before the Commissioner’s delegate.
...............[SGD].........................................................
Deputy President I R Molloy
Catchwords
Intellectual Property – Patents – failure of applicant to pay continuation fee on or before due date – application for extension – extension granted – form of order – costs of hearing before the Commissioner of Patents – jurisdiction of Tribunal to order such costs – exercise of discretion - parties to bear their own costs.
Legislation
Administrative Appeals Tribunal Act 1975 (Cth).
Patents Act 1990 (Cth).
Cases
G S Technology Pty Ltd v Commissioner of Patents [2004] AATA 1391.
Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1983) 13 IPR 551.
Re Solar-Mesh Pty Ltd v Commissioner of Patents (1985) 38 ALD 136.
REASONS FOR DECISION
Deputy President I R Molloy
26 May 2022
ORDERS AND COSTS
On 6 May 2022, I gave my decision in this matter and, in accordance with the request of the Applicant (“Advanta”) and the Other Party (“Nufarm”), invited submissions as to the form of orders and costs. I have received written submissions including proposed orders from each of those parties. I am informed that the Commissioner does not wish to be heard.
Orders
I am satisfied that the appropriate order in respect of the decision granting an extension of time to pay what was described as the fifth renewal fee, due on
6 October 2017, is that the time for payment be extended to 9 April 2019, by which time it is understood the fee had been paid, or to 26 June 2022 (one month from now) if payment of the fee has not been finalised or any further action is required with respect to payment.
This is consistent with the orders made by Downes J in G S Technology Pty Ltd v Commissioner of Patents [2004] AATA 1391.[1]
[1] G S Technology Pty Ltd v Commissioner of Patents [2004] AATA 1391, page 12, [43].
Nufarm submits that before the Commissioner, the Applicant applied for an extension of 20 months to pay the renewal fee due on 6 October 2017. Nufarm submits that the Commissioner does not have power to grant an extension of time “other than what is applied for, and consequently the Tribunal does not have the power either.”[2] Nufarm proposes that the time for the payment of the renewal fee due on 6 October 2017, should be “extended to 6 June 2018”[3] which I assume is an error and meant to read “6 June 2019”.
[2] Nufarm’s Submissions on Orders and Costs dated 20 May 2022, [5].
[3] Ibid, [6].
In any event, I am not satisfied that the Tribunal’s jurisdiction to make the correct and preferable decision is limited in the way that Nufarm contends. Advanta was successful before the Tribunal and an order should ensure it has the practical benefit of that decision.
The submissions alluded to possible late payment of subsequent renewal fees. This order has nothing to say on that matter. If it arises then it is a matter for the Commissioner, as the Applicant accepts, and not for the Tribunal.
Costs
The question of costs is limited to the hearing before the Commissioner. I am satisfied that I have jurisdiction to deal with that issue as explained by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents (No 2) (1983) 13 IPR 551 (“Kimberly-Clark”) at 568. I prefer the reasoning of the Tribunal in Kimberly-Clark to the later decision of Deputy President Forgie in Re Solar-Mesh Pty Ltd v Commissioner of Patents (1985) 38 ALD 136. As the Applicant submits, it does not appear that Deputy President Forgie was referred to the earlier decision of Jenkinson J in Kimberly-Clark.[4]
[4]The Commissioner has power to deal with the question of costs pursuant to s 210 of the Patents Act 1990 (Cth) on the application for an extension of time and did. I accept that under s 43 of the Administrative Appeals Tribunal Act 1975 (Cth) the Tribunal has all the powers and discretions that are conferred on the person who made the reviewable decision including, in this case, the power to award costs before the Commissioner. As I have said, costs of the hearing before the Tribunal does not arise.
Advanta submits that it should be awarded costs before the Commissioner. It submits, citing examples, that it is conventional before the Commissioner that costs follow the event, including in successful applications for an extension of time pursuant to s 223 of the Patents Act. The Applicant points out that all successful applications under s 223 of the Patents Act are from applicants who have committed an error or omission which has resulted in the failure to do some “relevant act”. This does not disqualify the applicant from the benefit of a costs order.[5]
[5] Ibid, [12].
Advanta submits that the decision in Kimberly-Clark, in which Jenkinson J reasoned that because “the applicant’s agents’ errors made the application extension necessary”, and the other party in that case “incurred costs of the application in the reasonable protection of its own interests”, it would have been a proper exercise of the power “to order the applicant to pay those costs even if the delegate had decided to grant the extension.” It is submitted that this is not in line with current practice.[6]
[6] Ibid, [14].
Advanta also submits that its failure to realise its reliance on purported errors relating to the Anaqua system before the delegate was misplaced is not a reason for a “special” costs order. The errors and omissions, which saw Advanta succeed before the Tribunal, were also relied on before the Commissioner’s delegate.[7]
[7] Ibid, [17].
Nufarm submits it does not follow that because the delegate’s decision was set aside, that Nufarm should pay the costs of that proceeding. The proceeding was caused by the Applicant’s failure to comply with the requirements of the Patents Act. As a result, the Applicant has sought the indulgence of an extension of time. In these circumstances it is not appropriate that the Tribunal makes any order in relation to costs relating to the hearing before the Commissioner.[8]
[8] Nufarm’s submissions, [12].
The question of costs is a matter of discretion. I take into account that the Applicant was successful in having the delegate’s decision refusing an extension of time set aside. I also take into account that the application to the Commissioner was necessitated by the errors or omissions of the Applicant. I appreciate what Advanta says about its erroneous reliance on the Anaqua system before the delegate, and on what it says about the current practice before the Commissioner. I also take into account Nufarm’s submissions.
In all the circumstances I consider the appropriate order is that the parties bear their own costs of the hearing before the delegate.
| I certify that the preceding 14 (fourteen) paragraphs are a true copy of the reasons for the decision herein of Deputy President I R Molloy |
..............[SGD]..........................................................
Associate
Dated: 26 May 2022
| Date submissions received: | 20 May 2022 |
| Counsel for the Applicant: | Mr John Hennessy SC and Mr Ben Gardner |
| Solicitors for the Applicant: | Baker McKenzie |
| Solicitors for the Respondent: | Australian Government Solicitor |
| Counsel for the Other Party: | Mr Ben Fitzpatrick |
| Solicitors for the Other Party: | Phillips Ormonde Fitzpatrick |
Advanta’s Submissions on Orders and Costs filed 20 May 2022, [8].
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