Bartlem Pty Ltd v Peter Cameron Fisher

[1999] APO 20

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Petty Patent   :          664820 in the name of Bartlem Pty Ltd, and notice under s.28 by Peter Cameron Fisher

Title:          Improvements to drive mechanisms

Action:          Review of taxation of costs

Decision:          Issued            .

Abstract

A patent attorney was listed as the informant in a s.28 notice. Costs had been awarded in his favour. In reviewing a taxation of costs:

·    Assertions that the attorney was in fact an agent for someone else did not change the fact that he himself was the informant; and

·    Costs in respect of preparation for a hearing, and for attendance at a hearing by a patent attorney, relate to costs incurred when the party had engaged a patent attorney or solicitor to represent them. Mr Fisher represented himself, and is therefore not entitled to be awarded these costs (even though he is a registered patent attorney).

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Petty patent 664820 in the name of Bartlem Pty Ltd, notice under s.28 by Peter Cameron Fisher, and review of a taxation of costs.

BACKGROUND

On 25 June 1997 a delegate of the Commissioner awarded costs against the patentee, in a decision upholding matters raised in a s.28 notice. On 17 November 1998, Mr Fisher sought taxation of costs, claiming costs as follows:

Preparation of case for hearing  $360
Attendance at hearing by Peter Fisher  $540
Attendance at hearing by Hamish Fraser  $540
Hearing fee  $500
  TOTAL  $1940

The patentee objected to the first three items. On 5 January the parties were advised that the taxing officer was disallowing the third item above; and that costs had been taxed at $1400.

The patentee objected to this taxation, and it is now before me for review [Reg 22.8(4)]. The basis of the objection is quite straightforward. In essence, the patentee argues that the S.28 notifier represented himself at the hearing; he had not engaged any person to represent him in the matter; accordingly claims for preparation of case for the hearing, and the attendance at the hearing by either himself or Mr Fraser, is without justification.

On 22 January Mr Fisher stated that he agreed with the costs as taxed by the taxing officer, but submitted that in the event the patentee objected to the taxed costs:

“The following facts become important:

• [the patentee] is well aware that Mr Fisher filed the S.28 notice on behalf of Cox-RPM Pty Ltd;

• Mr Findlay Andrews, the representative of Cox-RPM Pty Ltd, was overseas at the time that the section 28 Notice needed to be filed

• The notice was filed under the name of Mr Fisher as agent for Cox-RPM Pty Ltd

• Mr Fisher has no personal interest in the above patent

• Cox-RPM Pty Ltd incurred professional fees in relation to the preparation of the Hearing and attendance of the Hearing by Mr Fisher.”

In response, the patentee observed inter alia that no good reason had been advanced as to why the notice was filed in the name of Mr Fisher as opposed to Cox-RPM Pty Ltd.

DECISION

The s.28 notice is in the name of Peter Cameron Fisher of Fisher Adams Kelly, Patent and Trade Mark attorneys. There is no reference in the 5-page document, to it being filed on behalf of another person.

Six statutory declarations were filed in support of the s.28 notice. None of the declarants are identified with Cox-RPM Pty Ltd. One declaration refers to “…. provided to [Mr Fisher] by his client CMMC Pty Ltd”. I note that this 'client' is not Cox-RPM Pty Ltd. But in addition, there is a declaration by a director of CMMC Pty Ltd. That declarant states that he is not authorised to make the declaration on behalf of CMMC because it is receivership; but that he is making the declaration in support of Mr Fisher’s s.28 notice. Nothing in these declarations gives rise to any reasonable inference that the s.28 informant was Cox-RPM, or indeed any person other than Mr Fisher.

In the matter of appearances, the hearing officer stated in his decision:

"Mr Fisher, patent attorney of Fisher Adams Kelly, Brisbane, represented himself.  He was assisted by Mr Hamish Fraser, solicitor of McCullough Robertson."

The decision makes no reference to Mr Fisher acting as an agent for someone else.

Prima facie, Mr Fisher himself is the s.28 informant.

Mr Fisher suggests that the reason he was named as the informant was because the representative of Cox-RPM was overseas at the time. This does not, in my view, provide an explanation. If Mr Fisher, as attorney for Cox-RPM, had instructions to file the s.28 notice, there is no apparent reason for not naming Cox-RPM as the informant. On the other hand, if he did not have instructions, there can be no basis for asserting that he filed it on their behalf, or as their agent.

I conclude that the s.28 informant is Mr Fisher personally. It follows that any alleged relationship with Cox-RPM Pty Ltd (or anyone else) is irrelevant to assessing the costs that are awardable against the patentee.

The costs claimed by Mr Fisher include preparation for hearing, and his attendance at the hearing. I think both these items relate to the situation where the party engages a patent attorney or solicitor to represent them at the hearing. Mr Fisher represented himself. The fact that he is a registered patent attorney is of no particular relevance – it only meant that (presumably) he was better able to represent himself than the typical self-represented person. Accordingly, as a self-represented person I do not think that Mr Fisher is entitled to claim costs for preparation for the hearing, or for appearing at the hearing. I disallow these two items.

The taxing officer disallowed the costs with respect to the attendance of Mr Fraser. That disallowance has not been contested. As recorded in the hearing officer’s decision, Mr Fraser was not representing Mr Fisher. I therefore do not consider there to be any reason consequential upon my findings above, to re-consider the disallowance of costs with respect to Mr Fraser.

CONCLUSION

Of the costs sought by Mr Fisher, all items except the Hearing Fee are disallowed. Costs are allowed in the amount of $500. A certificate of costs for that amount will now issue.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the patentee       :  Pizzeys, Brisbane

Patent attorneys for the informant    :  Fisher Adams Kelly, Brisbane