AVERY International Corporation v MINNESOTA Mining and Manufacturing Company

[1994] APO 54

official notice

decision of a delegate of the commissioner of patents

Application        :  No.628869 in the name of AVERY INTERNATIONAL CORPORATION

Title:  Stretchable but Stable Film and Fastening Tape.

Action: Application for costs in a withdrawn opposition filed under section 59 of the Patents Act 1952 by MINNESOTA MINING AND MANUFACTURING COMPANY.

Decision:  Issued            .

Abstract:  Costs awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 628869 by AVERY INTERNATIONAL CORPORATION and costs in a withdrawn opposition filed under section 59 of the Patents Act 1952 by MINNESOTA MINING AND MANUFACTURING COMPANY.

background

Patent application no 628869 by AVERY INTERNATIONAL CORPORATION (AVERY) was advertised accepted on 24 September 1992. A notice of opposition under section 59(1) of the Patents Act 1952 was filed by MINNESOTA MINING AND MANUFACTURING COMPANY (MINNESOTA) on 24 December 1992.

MINNESOTA served its evidence-in-support within the time allowed.  Subsequently AVERY filed proposed amendments under section 104 and these amendments were allowed on 22 December 1993.  MINNESOTA then withdrew its opposition and the application proceeded to sealing on 22 April 1994.

CLAIM FOR COSTS

MINNESOTA's patent attorney filed a claim for an award for costs on 7 February 1994 as follows:

1.Notice of Opposition   $   170

2.Evidence-in-Support    $   460

On 24 March 1994 the Office informed MINNESOTA's patent attorneys that it would need to apply, under regulation 22.22 for the exercise of the Commissioner's discretionary powers in regard to the award of costs.  Such a request was filed on 7 June 1994.

The Office notified AVERY's patent attorneys of this request on 7 July 1994 and allowed 14 days for them to advise whether AVERY wished to be heard in relation to the claim for costs.  The Office received no response to this notification.

DECISION

I consider MINNESOTA's opposition is a proceeding under the Patents Act 1990 even though Part V of the 1952 Act applies to the opposition (subsection 234(3)). Consequently, I have to consider MINNESOTA's claim for an award of costs under section 210 and regulation 22.8 of the Patents Act 1990.

MINNESOTA brought the opposition proceedings before the Commissioner by filing a notice of opposition under section 59(1) of the Patents Act 1952. It then served a statement of grounds and particulars which only concerned claims 14 and 15 and the grounds of prior publication and novelty. The particulars were based on three United States patents.

MINNESOTA served this statement along with a letter which asked AVERY to consider cancelling claims 14 and 15.  AVERY did not file a request to amend before MINNESOTA served its evidence-in-support.

I consider there is no evidence AVERY intended to delete claims 14 and 15 before MINNESOTA commenced its opposition.  And AVERY did not file a request to amend until MINNESOTA served its evidence-in-support.  I also consider MINNESOTA's evidence-in-support prima facie establishes its grounds of opposition.

AVERY's request under section 104 was accompanied by a letter which explained the reason for the request was to remove grounds of objection raised in the opposition to the patent application.  The amendment proposed the deletion of claims 14 and 15.

MINNESOTA withdrew its opposition following allowance of the request to amend.  AVERY did not serve evidence-in-answer.

I am satisfied the specification was amended as a direct result of the opposition brought by MINNESOTA.  Therefore I consider MINNESOTA was successful in its opposition and is entitled to an award of costs.

I consider it is clear both items in MINNESOTA's claim for an award of costs are in respect of formal requirements of opposition proceedings.

MINNESOTA filed a notice of opposition and served it on the applicant.  Item 1 in the claim for an award of costs corresponds to the item in Schedule 8, Part 1 of the Patents Regulations for a notice of opposition (item 1).  Therefore I am satisfied MINNESOTA is entitled to the first item on the claim for an award of costs.

I think AVERY should have known from the letter which accompanied  the statement of grounds and particulars the basis on which the opposition may be settled.  That is by deletion of claims 14 and 15 from the specification.  It seems to me MINNESOTA may not have served evidence-in-support if AVERY had filed a request under section 104 to delete claims 14 and 15 soon after service of the statement of grounds and particulars.  When a request under section 104 was not filed MINNESOTA had to decide whether to serve evidence-in-support or to file an application for extension of time to serve evidence-in-support.

In my view it was reasonable for MINNESOTA to serve any evidence-in-support which it had prepared close to the end of the initial period allowed when a request under section 104 had not been filed in this period.  The alternative was to risk the evidence not forming part of the opposition because MINNESOTA could not justify an extension of time to serve evidence which it had already prepared.  Therefore I consider MINNESOTA did not serve evidence-in-support unnecessarily.

Item 2 in the claim for an award of costs corresponds to the item in Schedule 8, Part 1 of the Patents Regulations for evidence-in support (item 2).  Therefore I am satisfied MINNESOTA is entitled to the second item on the claim for an award of costs.

Therefore I am satisfied MINNESOTA is entitled to an award of costs for items 1 and 2 of the claim for an award of costs.

CONCLUSION

I award costs against the applicant, AVERY, in respect of MINNESOTA's opposition to application no. 628869.

M. Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co

Adelaide

Patent attorneys for the opponent   :  Spruson & Ferguson

Sydney