Continental White Cap, Inc. v W.R. Grace & Co., Conn

[1992] APO 17

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 583673 in the name of Continental White Cap, Inc.

Title:    Method of forming Plastisol Gaskets in Container Closures Fabricated from Synthetic Plastic Resin

Action:    Opposition under section 59 (patents Act 1952); Application withdrawn at time of hearing; Award of costs.

Decision:    Issued            .  Costs in respect of the hearing awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 583673 by Continental White Cap, Inc., and opposition thereto by W.R. Grace & Co., - Conn.

background

Continental White Cap, Inc. lodged patent application no. 583673 on 21 October 1986 under application no. 64296/86.  It was advertised as accepted on 4 May 1989, and W.R. Grace & Co., - Conn. lodged a notice of opposition on 20 July 1989.  Evidence was duly filed by both parties, and in due course the opposition was set down for a hearing in Canberra on 8 April 1992

withdrawal of the application

On 6 April 1992, two days before the scheduled hearing, the attorney for the applicant (Mr. John McCormack, patent attorney of Griffith Hack & Co, Melbourne) rang the opposition clerk in the Patent Office and indicated the applicant intended to withdraw the application, and he would not be attending the scheduled hearing; he also indicated that he would contact the opponent on the matter.  From this conversation, the opposition clerk concluded that the opposition hearing scheduled for 8 April would not proceed.

It transpired that whilst Mr. McCormack did contact the attorney for the opponent, there was no agreement regarding withdrawal of the opposition.  Consequently, the attorney for the opponent appeared in Canberra at the appointed time for the hearing into the opposition.

Immediately prior to the hearing I noted there was no notice of withdrawal of the application on the file.  Having regard to the contact Mr McCormack made with the opposition clerk, I rang Mr McCormack to ascertain whether or not he intended to withdraw the application.  He indicated that although he understood the applicant's intention was to withdraw the application, he did not have explicit instructions to that effect.  He subsequently advised me that the application would be withdrawn; on that basis I did not conduct a hearing on the substantive opposition, but merely heard the opponent on the matter of costs.

On 13 April the applicant filed a letter stating

"... and now advise you that we are formally withdrawing the above application."

I take this to be a notice of withdrawal under section 141 of the Patents Act 1990, which provides that a patent application is to be treated as having been withdrawn if, and only if, the applicant lodges a written notice of withdrawal signed by the applicant.

costs

When an opposition ceases by withdrawal of either the opposition or the application, it is usual for the parties to have reached an agreement regarding costs.

In the present case, withdrawal of the application did not actually occur until after the appointed date of the hearing.  Although some communication between the respective attorneys took place in the days prior to the hearing, it appears that no clear agreement (or understanding) was reached regarding withdrawal of the application; in the event, the opponent (but not the applicant) appeared at the appointed time.

If the withdrawal of the application had taken place before the day of the hearing (or a clear agreement on withdrawal reached between the parties), undoubtedly the opponent would have been saved the time and costs of preparation and attendance at the hearing.

Mr Paul Jones (patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne) for the opponent submitted that in the circumstances they should be awarded full costs; furthermore the costs should be as between attorney and client rather than taxed costs.

The practice of the Commissioner is that costs follow the event. Where a party to the proceedings withdraws, it might be argued that the other party has 'won' and is thus entitled to costs. However, public interest considerations suggest that a party to proceedings should be able to withdraw without incurring a mandatory award of costs against them - costs should not be a disincentive to withdrawal.  On the other hand, a party whose actions clearly put the other party to unnecessary expense should have costs awarded against them in respect of those expenses.

My view of the present matter is:

1. the opponent is entitled to taxed costs in respect of matters directly associated with the hearing set for 8 April, and

1. as I have not in any way considered the merits of the opposition, and there has been no suggestion that the actions of the applicant in defending their application up to the time of the hearing were vexatious, I should make no other award of costs.

I do not consider the circumstances that led to the opponent attending the hearing justifies any variation from the scale of costs specified in Schedule 8 to the Patents Regulations 1991.

conclusion

The application was withdrawn under section 141 on 13 April 1992. I award costs to the opponent, but only in respect of matters directly associated with the hearing set for 8 April 1992 - ie. the preparation of case for, and attendance at, the hearing.

D. HERALD

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Melbourne

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