Concorde Trading PTY LTD v Croner Trading PTY LTD

[1994] APO 79

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 571375 in the name of CONCORDE TRADING PTY LTD

Title:    Jumpball

Action: Request by Concorde Trading PTY LTD to dismiss opposition under subsection 104(4) by Croner Trading PTY LTD

Decision:    Issued            . 

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 571375 by Concorde Trading PTY LTD and request under subregulation 5.5(1) by Concorde Trading PTY LTD for Commissioner to dismiss opposition under subsection 104(4) by Croner Trading PTY LTD.

background

Patent Application No. 571375 was advertised as accepted on 14 April 1988. Croner Trading PTY LTD filed a notice of opposition under subsection 59(1) of the Patents Act 1952 to the grant of a patent in respect of the application on 13 July 1988.

A hearing of the substantive opposition and other special leave applications was held in Canberra on 17 June 1992 and the written decision issued 25 September 1992.  The opposition succeeded on the ground of non-compliance with S.40 and want of novelty, but, the hearing officer concluded that there was patentable subject matter disclosed in the specification and gave Concorde 60 days to propose amendments.

Concorde filed proposed amendments on 18 November 1992 in order to overcome the deficiencies raised in the opposition.  Croner subsequently filed comments in relation to the proposed amendments on 25 January 1993.  The amendments were considered by an examiner, in light of the opponents comments, and were advertised for opposition on 11 March 1993.

Croner filed a notice of opposition to the allowance of the amendments under subsection 104(4) of the Patents Act 1990 on 11 June 1993. Croner filed their statement of grounds and particulars on 13 September 1993.

Concorde filed a request for dismissal of the opposition on 13 October 1993 which was set down for hearing on 15 December 1993.

Croner served evidence in support of the opposition on 13 December 1993.

Both parties were represented at the hearing.  The applicant was represented by Mr John Walsh, Patent Attorney of Davies Collison Cave, Sydney.  The opponents were represented by Mr Paul Kildea, Patent Attorney of P.F. Kildea acting on behalf of Phillips Ormonde & Fitzpatrick.

SUBMISSIONS

Mr Walsh for the applicant at an early stage in his submissions stressed the uniqueness of this case and it's present situation.  He stated that most if not all dismissal cases to this point have dealt with opponents who have not had access to a tribunal in respect to any issue in respect of the opposition.  He doubted if there was any other case quite like this one, especially because dismissal actions are a new phenomenan under the 1990 act.

Mr Walsh highlighted the distinction between the general run of cases and the present case by outlining the history of the case.  He indicated that the opponent had a substantive opposition which was heard and a written decision issued.  The applicant had a chance to amend the specification

At this point Mr Walsh requested the Commissioner to exercise his discretionary powers under paragraph 5.5(3) and dismiss the opposition forwith.  Paragraph of 5.5(3) the regulations states:

" The Commissioner may dismiss the opposition whether or not
       the applicant has requested dismissal of the opposition."

Mr Walsh asked for a ruling as to whether the Commisioner was willing to envoke his discretionary powers under paragraph 5.5(3) and dismiss the opposition without a formal application by the applicant and before any submissions were made.

I indicated that I was not willing to dismiss the opposition at this early stage and would prefer to have submission from both parties on the matter before envoking any discretionary powers. 

COSTS

Mr Walsh for the applicant submitted that in the event that the application for dismissal is dismissed, in view of the justification for the applicant bringing this dismissal action, both in the public interest and in the applicant's own interest, that no award of costs should be made.  Mr Kildea argued that the dismissal action was taken in the full knowledge of the practice note and the previous decisions concerning dismissal and asked that the award of costs be made in favour of the opponent.

WANDA GUNAWARDANA
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne