Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed)

Delnorth Pty Ltd sought to appeal a decision of the Delegate of the Commissioner of Patents, Mr Major, who had refused to grant Delnorth Pty Ltd the patent claimed in Australian Patent Application No 2004249786 (the Patent Application). The claimed patent concerns flexible roadside fence posts. The Delegate had refused to grant the patent on the ground that it did not involve an inventive step and thus did not meet the requirements of s 18(1)(b)(ii) of the Patents Act 1990 (Cth). The present proceeding was commenced on 7 May 2009. Before the final hearing, an Administrator was appointed to the respondent. Ultimately, the respondent withdrew its opposition to the grant of the claimed patent. The applicant sought to make orders in the proceeding in the following terms: (1) An order that the applicant’s appeal be allowed. (2) An order that the opposition by the respondent to the grant of the patent be refused. (3) An order that the Patent Application proceed to grant. (4) An order that the proceeding be stood over to 22 April 2010 in order to deal with the question of costs. The court held that, in circumstances such as the present, where there is an appeal from a decision of the Commissioner of Patents to refuse to grant a patent application but no one tenders any evidence at the hearing of the appeal in support of any ground of opposition to the grant of the patent or otherwise seeks to oppose the appeal, there is no ground of opposition to the grant of the patent application that the Court can uphold. In the present case, there being no opposition to the making of the orders sought by the applicant and no evidence tendered in opposition to the grant of the patent claimed in the Patent Application, the reasoning of Lindgren J in Cadbury Schweppes Plc v Effem Foods Pty Ltd (2006) 69 IPR 584 compelled the Court to make orders substantially in the terms of the orders sought by the applicant. The appeal was allowed and the Patent Application proceeded to grant.