American Can Company v the Broken Hill Proprietary Company Limited and Comalco Limited

[1987] APO 32

In the Matter of the Patents Act 1952

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In the Matter of Application No. 469937 for Letters Patent by AMERICAN CAN COMPANY

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In the Matter of Opposition thereto by THE BROKEN HILL PROPRIETARY COMPANY LIMITED

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In the Matter of Opposition thereto by COMALCO LIMITED.

DECISION OF THE ACTING DEPUTY COMMISSIONER OF PATENTS:
Background
         In my decision in these matters dated 26 June, 1979, I found that each opponent had established its opposition to this application on one of the grounds specified, namely that the complete specification did not comply with section 40.  I allowed the applicant 60 days in which to propose amendments to its specification so as to remove the deficiencies and cause compliance with section 40.
         On 20 August, 1979, the applicant lodged a section 77 request to amend the complete specification.  However as each opponent lodged notice of appeal to the decision in the Supreme Court of Victoria, the section 77 action was held in abeyance pending finalization of the appeals.  On 16 May, 1984, the Court ordered by consent that the respective appeals be dismissed.

Subsequent to proceedings under section 79, the request to amend was directed to be advertised.  The parties were advised of this action by letter dated 27 August, 1986.  The advertisement appeared in the Official Journal dated 4 September, 1986, and in the absence of opposition, the amendment request was allowed on 8 January, 1987, the amendments being incorporated into the complete specification at that time.
         By letter dated 28 August, 1986, The Broken Hill Proprietary Company Limited (BHP) notified withdrawal of its section 59 opposition.  After allowance of the section 77 amendments, Comalco Limited were asked by letter dated 11 March, 1987 whether it wished to be heard before a final decision issued ‑ no advice was received to that effect within the time allowed.  Accordingly I can now finalise the section 59 oppositions.
Decision
         I am satisfied that the amendments remove the grounds for my earlier findings concerning non‑compliance with section 40.  I am further of the opinion that there are no lawful grounds of objection to the application and complete specification as now amended.  I direct therefore that the application and complete specification as amended proceed to sealing, subject to any appeal.
Costs
         In my earlier decision in this matter I indicated that I would award costs when finally determining the oppositions.  There are two distinct aspects to the question of costs, firstly those costs associated with the oppositions to the date of advertisement of the section 77 request, and secondly, costs after that date.
         Firstly, in my earlier decision I found in favour of each opponent on one of their respective grounds for opposition, namely non‑compliance with section 40.  The section 40 deficiency in the specification was a serious one requiring significant amendment to the description and claims for it to be overcome.  In addition it is evident that due to the nature of the accepted specification, the opponents not unreasonably alleged other grounds of opposition and provided evidence in relation thereto.  Furthermore the opponents independently prepared and filed evidence and were separately represented at the joint hearing of the two oppositions.  Accordingly I am of the opinion that each opponent is fully entitled to its costs in this matter up to the date of advertisement of the section 77 request, notwithstanding BHP's notice of withdrawal of the opposition subsequent to the earlier decision.
         Secondly, as to costs after advertisement of the section 77 request, as BHP had withdrawn its section 59 opposition prior to that date, no award of costs arises for that opposition.  In respect of the opposition by Comalco Limited, the applicant is entitled to its costs although it seems that no claimable costs have been incurred.
         In summary I award costs up to the date of advertisement of the section 77 request against the applicant in respect of (i) the section 59 opposition by BHP and (ii) the section 59 opposition by Comalco Limited.  After advertisement of the section 77 request, I award costs against Comalco Limited in respect of its opposition.

(G.J. Baker)

Patent Attorneys for the applicant  : Phillips Ormonde & Fitzpatrick
Patent Attorneys for BHP           : Sandercock Smith & Beadle