Almeth Pty Ltd and Austpac Technology Pty Ltd v Wimmera Industrial Minerals Pty Ltd

[1997] APO 41

official notice

decision of a delegate of the commissioner of patents

Application  :          No.6674437 in the name of Almeth Pty Ltd and Austpac Technology Pty Ltd

Title:          PRIMARY BENEFICIATION OF ILMENITE

Action:          Award of costs following a withdrawn opposition by Wimmera Industrial Minerals Pty Ltd.

Decision:          Issued            .

Abstract

Opposition was withdrawn before the opponent had served any evidence-in-support.

Costs are not automatically awarded against the opponent when the opposition is withdrawn. 

The opposition considered to have put the applicant to unnecessary expense. 

Costs are awarded against the opponent.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No 667437 by Almeth Pty Ltd and AustPac Technology Pty Ltd and  withdrawn opposition thereto by Wimmera Industrial Mineral Pty Ltd; awarding of costs.

background

Patent application 667437 was advertised as accepted on 21 March 1996. A notice of Opposition was filed by Wimmera Industrial Minerals Pty Ltd (Wimmera) on 21 June 1996.  Wimmera served a Statement of Grounds and Particulars on the applicant on 23rd of September 1996.  Wimmera was granted an extension of time to 23rd of March 1997 within which to serve evidence-in-support.  On 24th of March 1997, the opponent applied for a second extension of time within which to serve evidence-in-support.  The opponent then withdrew its opposition on the 8th of April 1997 without having served any evidence-in-support and the application was subsequently sealed.  The applicant requested an award of costs.  Both parties filed written submissions. 

Submissions

For the applicant:

• The opposition was withdrawn without any discussions as to costs.

• In prior decided cases withdrawal of the opposition before serving evidence in support, has meant that, with no ground of opposition established costs were awarded against the opponent.

For the (former) opponent:

• The opponent decided to withdraw the opposition because the claimed process is not of concern to the opponent and not because of concerns that the opponent would be unsuccessful in the opposition.

• The statement of grounds and particulars raises (by way of example) a serious issue in the particulars of ground 4, and if raised during examination the application would not have proceeded to acceptance. 

• We believe that it is not reasonable that an award of costs be made in a situation where an opponent has withdrawn an opposition at an early stage in the proceeding and the Grounds and Particulars raises a serious issue in relation to the validity of any patent granted on the application.

DECISION

Whether costs should be automatically awarded to one party when the other withdraws was considered in Continental White Cap Inc v WR Grace & Co (1992) AIPC 90-882

“The practice of the Commissioner is that costs follow the event.  Where a party to the proceedings withdraws, it might be argued that the other party has “won” and is thus entitled to costs.  However public interest considerations suggest that a party should be able to withdraw without incurring a mandatory award of costs against them - costs should not be an disincentive to withdrawal.  On the other hand, a party whose actions clearly put the other party to unnecessary expense should have costs awarded against them in respect of those expenses.”

I will not make a mandatory award of costs against the opponent simply because they withdrew their opposition, as this would be against the public interest.  However the withdrawal of the opposition and the surrounding circumstances are still considerations that must be taken into account.

An important consideration raised in Continental White Cap Inc v WR Grace & Co (supra) is whether the actions of the opponent have put the applicant to unnecessary expense.  The opponent may have caused unnecessary expense if its opposition did not alert the applicant and the Commissioner to an application on which an invalid patent may be granted. (Robert Kenneth Prudhoe v. ICI Australia Pty Ltd 27 IPR 100 at p103.)

The grounds and particulars filed by the opponent have not been considered by the Commissioner in an opposition environment.  I consider it to be  significant that the application, which was the subject of the withdrawn opposition, has proceeded unchanged to sealing.  This circumstance, in the absence of any other evidence leads me to conclude that the opponent has not demonstrated that its opposition has alerted the applicant and the Commissioner to an application on which an invalid patent may be granted. 

I also note that the opponent has submitted that the opposition was withdrawn “because the claimed process is not of concern to the opponent and not because of concerns that the opponent would be unsuccessful in the opposition.”  There were no amendments made to the application  following its acceptance.  This apparent lack of concern by the opponent, about the monopoly now being granted to the applicant, suggests to me, that the opposition to the application may have been unnecessary and that the applicant was being put to unnecessary expense in mounting a defence. 

In addition I consider the withdrawal of the opposition without reaching an agreement with the applicant on costs, suggests to me, in the absence of other evidence, that costs were not a disincentive to withdrawal.  

Costs normally follow the event.  However “normally” does not mean always.  When an opponent withdraws an opposition at an early stage, without coming to agreement with the applicant on the issue of costs, it is my view that there may well be circumstances that would lead to costs not being awarded against the opponent.  I do not find such circumstances in this case.  I find in this case that the opponent has put the applicant to unnecessary expense.  I therefore award costs in respect to items 1 and 3 as listed and in accordance with schedule 8 the Patent Regulations against Wimmera Industrial Minerals Pty Ltd.

Ross Osborne
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :    Halford and Co,  Sydney

Patent attorneys for the opponent   :   Griffith Hack,  Melbourne