Continental Pet Technologies Inc v SCI Operations Pty Limited

official notice

decision of a delegate of the commissioner of patents

Application : No. 630595 in the name of CONTINENTAL PET TECHNOLOGIES, INC.

Title: Base Configuration for an Internally Pressurized Container

Action: Opposition under section 59 of the Patents Act 1952 by SCI OPERATIONS PTY LIMITED; Opposition withdrawn; Award of costs.

Decision: Issued . Costs awarded to the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 630595 by CONTINENTAL PET TECHNOLOGIES, INC., opposition under section 59 of the Patents Act 1952 by SCI OPERATIONS PTY LIMITED

background

Patent application number 630595, lodged under application number 26754/88, in the name of Continental PET Technologies, Inc. was advertised accepted on 5 November 1992. A notice of opposition was filed by SCI Operations Pty Limited on 5 February 1993.

The opponent was granted a one month extension of time to 5 May 1993 to serve its statement of grounds and particulars. Following this, a further one month extension was sought. The opponent was asked to elaborate the reasons it had advanced for this extension, but no response to this was forthcoming. On 18 June 1993 the applicant requested dismissal of the opposition. On 22 June 1993 the Delegate of the Commissioner advised the opponent that he proposed to dismiss the opposition under the provisions of reg 5.5(3), and allowed the opponent ten days in which to comment. On 24 June 1993 the opponent withdrew the opposition. Withdrawal was advertised in the Official Journal on 15 July 1993.

decision: costs

The applicant has asked for an award of costs. Despite having been asked to comment on the matter of costs, the opponent has not done so. The only costs specified in Schedule 8 of the Patents Regulations 1991 that the applicant is entitled to are costs associated with receiving and perusing the notice of opposition.

The opposition was withdrawn on 24 June 1993. I award costs against the opponent.

A.J. EVANS
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne
Patent attorneys for the opponent : H.R. Hodgkinson & Co, Milson's Point

CaseChat Overview and Summary

Continental Pet Technologies Inc. filed a patent application for a base configuration for an internally pressurized container. SCI Operations Pty Limited opposed this application. The opposition was subsequently withdrawn, and the applicant sought an award of costs. The decision of the Delegate of the Commissioner of Patents was that the applicant was entitled to costs associated with receiving and perusing the notice of opposition.

The legal issues before the court included whether the opponent's failure to respond to requests for elaboration on the extension of time and the Delegate's proposal to dismiss the opposition warranted the dismissal of the opposition under section 5.5(3) of the Patents Regulations 1991. The court also had to determine whether the applicant was entitled to costs under Schedule 8 of the Patents Regulations 1991.

The Delegate of the Commissioner of Patents found that the opponent's failure to respond to requests for elaboration justified the dismissal of the opposition under section 5.5(3). The Delegate also found that the applicant was entitled to costs associated with receiving and perusing the notice of opposition. The Delegate awarded costs against the opponent and the decision was published in the Official Journal.

The Delegate of the Commissioner of Patents awarded costs to the applicant. The opponent did not respond to the request for comment on the matter of costs. The applicant was entitled to costs associated with receiving and perusing the notice of opposition, as specified in Schedule 8 of the Patents Regulations 1991. The costs were awarded against the opponent.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established