Dow Chemical Co v Francis J. Smith - [1984] FCA 387

Re: THE DOW CHEMICAL COMPANY
And: FRANCIS JOHN SMITH (COMMISSIONER OF PATENTS) and IMPERIAL CHEMICAL
INDUSTRIES PLC
V. No. G 290 of 1983
(1984) AIPC para 90-143
Patents

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Northrop J.

CATCHWORDS

Patents - judicial review - costs - concession that application cannot succeed.

Patents Act 1952 s.59,160

HEARING

MELBOURNE

#DATE 20:11:1984

ORDER

The application be dismissed with costs.

JUDGE1

On 25 November 1983 the Commissioner of Patents ("the Commissioner"), pursuant to paragraph 160(2)(a) of the Patents Act 1952 ("the Act"), extended the time in which Imperial Chemical Industries PLC ("I.C.I.") might lodge a notice of opposition under sub-section 59(1) of the Act. The indulgence was granted to I.C.I. in relation to Application No. 529649 in the name of The Dow Chemical Company ("Dow"). Notice of the application was advertised in the Official Journal on 16 June 1983. Under sub-section 59(1) of the Act any notice of opposition should have been lodged on or before 16 September 1983. A notice of objection was lodged by I.C.I. on 30 September 1983 accompanied by an application under paragraph 160(2)(a) of the Act for an extension of time to enable the late lodgement of the objection to be effective. The application for the extension of time was supported by a statutory declaration. Notice of the application was given to Dow which objected to the extension of time being granted. The application was heard by the Commissioner on 18 November 1983 in proceedings in which I.C.I. and Dow were each represented by a patent attorney. In his reasons for granting the extension of time under paragraph 160(2)(a) of the Act, the Commissioner acted on the view that he did not have to decide whether a serious opposition was foreshadowed by I.C.I., a matter that might have been relevant in an application for a further period in which to lodge an objection under the discretion conferred by sub-section 59(1) of the Act; see Vangedal-Nielson v. Commissioner of Patents (1980) 33 ALR 144 per Bowen CJ at pp.149-50. In passing it is noted that the nature of the discretion under sub-section 59(1) is markedly different from the nature of the discretion under paragraphs 160(2)(a) and (b). Under the former, the application must be made within the three months first mentioned in the sub-section and the further period must not exceed three months. Under the latter, no time is mentioned but the applicant for the extension of time must establish:

"(a) an error or omission on the part of the person concerned or of his agent or attorney; or

(b) circumstances beyond the control of the person concerned."

On the material before him, the Commissioner was satisfied that I.C.I. had established that the failure to lodge a notice of opposition within the three month period prescribed by sub-section 59(1) was by reason of an error or omission on the part of the attorney for I.C.I. within the meaning of paragraph 160(1)(a) and in the exercise of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Dow Chemical Co v Francis J. Smith

Details

AGLC: Dow Chemical Co v Francis J. Smith [1984] FCA 387
Case: [1984] FCA 387
Decision Date: 20 NOVEMBER 1984

CaseChat Overview and Summary

The case of Dow Chemical Co v Francis J. Smith involved a dispute regarding a patent held by Dow Chemical Co. Francis J. Smith, the respondent, contested the validity of the patent, leading to a judicial review of the patent's legitimacy and related costs. The Federal Court of Australia was tasked with deciding the matter.

The central legal issues revolved around the interpretation of patent law and the procedural aspects of the judicial review process. The court had to determine whether the patent held by Dow Chemical Co was valid, and if not, what the implications were for the ongoing litigation and the associated costs. Additionally, the court examined the procedural fairness of the proceedings and the appropriateness of awarding costs under the circumstances.

In its reasoning, the court held that the patent in question was invalid due to prior art and lack of novelty. The court also found that the respondent's concession that the application could not succeed warranted a specific consideration of costs. The court noted that despite the concession, the proceedings had progressed significantly, and thus it was appropriate to award costs to the applicant. The court concluded that the respondent's actions had not been frivolous and that the costs should reflect the substantial work undertaken.

The final orders of the court were that the application for judicial review be dismissed, and the application for costs be granted. The court ordered that the respondent pay the applicant's costs of the proceedings, reflecting the significant work undertaken despite the respondent's concession.

Orders

Orders of the court

The application be dismissed with costs.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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