Dricon Air Pty Ltd v Waztech Pty Ltd

[1992] APO 26

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 589215 in the name of DRICON AIR PTY LTD

Title             :    Heat Pump Air-Conditioning

Action: Opposition under section 59 (Patents Act 1952)

Decision:    Issued            .  Opponent found not to have locus standi.  Opposition to continue as a bar-to-sealing action.  Invention claimed found to be prior published and not novel.  Applicant given an opportunity to amend. 

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 589215 by DRICON AIR PTY LTD, and opposition thereto by WAZTECH PTY LTD.

background

Patent application 589215 was lodged on 29 August 1986 as an application under the Patent Cooperation Treaty (application no. PCT/AU86/00254).  The application claims priority from Australian application PH 2220 lodged on 30 August 1985 by the same applicant.

Acceptance of the application was advertised on 5 October 1989.  Waztech Pty Ltd lodged a notice of opposition on 4 Jan. 1990; evidence in support was served on 3 Oct. 1990; evidence in answer was served on 2 Apr. 1991; and evidence in reply was served on 2 August 1991.

The opposition was heard in Melbourne on 18 Feb. 1992.  The applicant was represented by Mr. Ken Maddern of R K Maddern & Associates, Adelaide; the opponent was represented by Mr. Stephen Wilson of Griffith Hack & Co, Melbourne.

As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable - that is, the opposition is in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.

The notice of opposition lists all grounds of opposition that are available under section 59 of the Patents Act 1952.  However at the hearing the opponent indicated that they relied only on the grounds of prior publication and lack of novelty.

Locus standi

At the hearing, Mr. Maddern for the applicant stated that he wished to challenge the locus standi of the opponent.

In the notice of opposition, the opponent states:

"We are manufacturers of air conditioning systems of the type disclosed in this patent application and grant of patent may unfarily (sic) prejudice our business in Australia."

Mr. Maddern asserted that it has only recently come to his attention that the opponent may not be a manufacturer of air‑conditioning systems. He further stated that extra time would be required to establish the true position.

On this issue, I am conscious of the judgement of the High Court of Australia in Kaiser Aluminium & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136 at 143 in which Kitto J said:

".. it is in the public interest that a serious opposition by a person in fact entitled to oppose the grant of a patent should be dealt with on the merits, rather than it should be shut out in consequence of a failure in procedure, lamentable though that failure may be."

I expressed concern at the issue of locus being raised at this time with no evidence to support the allegation.  I noted that if the opponent wished to pursue the matter, the appropriate course of action would appear to be to adduce further evidence; that in any event if the opponent was shown not to have locus, I would still have to deal with the matters raised in the opposition (as a bar-to-sealing) even though the opposition itself would be concluded. I also noted that the issue of locus was properly decided as part of these proceedings, and that the present hearing should continue.

At the end of the hearing, the opponent suggested it may be able to produce relevant material to establish its locus, and that it would be easier for it to establish locus than for the applicant to establish the contrary.  In the event, the opponent undertook to serve relevant material on the applicant by March 3, and the applicant undertook to then indicate to me by March 13 whether it accepted the opponent has locus, or to make a request to adduce further evidence.

In the event the opponent lodged a statutory declaration by Warren Bolton, a director of the opponent company, and two sets of submissions by Stephen Wilson, the patent attorney for the opponent, to establish its case for locus standi.

The applicant lodged a statutory declaration by Richard Kenneth Maddern, the patent attorney for the applicant, and a statutory declaration by Jeffrey Ryder, a patent attorney from the firm of Callinan Lawrie.

Neither party wished to be heard further on this matter of locus. Both parties preferred to rely on the written evidence I have referred to above to prove their case.

The Bolton declaration indicates that the opponent company intends to manufacture and sell air‑conditioning systems but has not yet done so.  The company has been negotiating with a major air‑conditioning manufacturer over the last two years.  Mr. Bolton asserts that the reason his company has not yet manufactured any air‑conditioning systems is because of the existence of the present patent application which may cover the systems his company wants to manufacture.  Mr. Bolton also indicates that his company has applied for a trade mark which relates to air‑conditioning systems.

The first set of written submissions provided by Mr. Wilson refers me to Mediline A.G.'s Patent [1973] RPC 91. Graham, J. sets out four principles in relation to the question of locus. They are:

"(1) The circumstances of each case must be considered and it is wrong to lay down any hard and fast rule as to the precise nature or extent of the "interest" which justifies locus.

(2)  The onus of establishing locus lies on the opponent or applicant for revocation.

(3)  If the opponent or applicant for revocation can show he has some genuine interest which will be prejudiced and if the opposition or application to revoke is not frivolous, vexatious or blackmailing, then locus should be granted even if the patentee can throw some doubt on the exact extent of the opponent's interest.

(4)  It is in the public interest that genuine opposition to a revocation proceeding should be permitted, as normally an opponent or applicant for revocation assists the court or the Comptroller in ensuring that the scope of the patent attacked is properly examined and limited during the application and early stages of its life."

Mr. Wilson's submissions refer me particularly to the third principle.

The Maddern declaration has attached to it an uncertified copy of the 1990 annual company return of the opponent company.  This return shows that the company has current assets of $3 and current liabilities of $261.

Also attached to the Maddern declaration are photocopied excerpts from various decided cases.  Mr. Maddern refers to these cases, the latest of which appears to have been decided in 1969.  He quotes from New Things Ltd.'s Application 31 RPC 45 as follows:

"A trading interest would also be sufficient, but the interest must be a real, definite, and substantial interest, and must not arise from something that the opponent proposes to do."

The Maddern declaration also refers to a quote from Lufft v.Weiss 73 CLR 119 as follows:

"....such an interest would be possessed by a person presently manufacturing or trading in the area covered by the applicant's Patent application."

Mr. Maddern asserts that the opponent relies only on a proposal to manufacture and trade air conditioners to establish locus standi.

The Ryder declaration has attached to it certified copies of the Certificate of Registration and Historical Company Extract of the opponent company.  The extract shows that the opponent company has issued three fully paid ordinary shares only.  These shares are owned by the two company directors.

In his written response to the applicant's declarations, Mr. Wilson submits that the figures provided in the annual return are not a basis for the conclusion that the opponent does not have the capacity to manufacture.

Mr. Wilson then alleges that New Things Ltd.'s Application and the other cases referred to in the Maddern declaration can be distinguished from the present proceedings.  In New Things Ltd.'s Application, the opponent proposed to form a company to use the invention of the opposed patent application. In the present case, the opponent company was already incorporated at the date of lodgement of the notice of opposition and "had a definite manufacturing intention".

I have considered the various decisions referred to by both parties.  It is clear to me that the requirements necessary to establish locus have been relaxed over the years.  The decided cases referred to by the applicant are all relatively early cases.  For example New Things Ltd.'s Application was reported in 1914.  The latest decision referred to by the applicant was reported in 1969 as I indicated previously.

The opponent relies on the later Mediline A.G.'s Patent which was reported in 1973.  In this case, Graham, J. in referring to Spector's Patent [1964] FSR 250 states:

"The former case, however, is also useful as pointing out, as is the fact, that the reported cases show over the years a progressive relaxation of the requirements necessary to establish locus."

The facts in Kessler's Application [1971] RPC 360 appear to most closely resemble those in the present case. A proposed opponent had not yet commenced trading in a mechanical fee recording apparatus although the opponent was actually in possession of the apparatus. Whitford, J. found that the opponent had locus.  He considered New Things Ltd.'s Application and commented:

"So when one is considering the question of what somebody proposes to do, this has got to be considered in the light of the facts of each individual case, and it cannot in my submission be sufficient to say against an opponent `Well, he has not started yet, he is merely proposing to do this.' If in fact the opponent can truly in one sense be said not to have started if he has not entered into any firm commitment, but none the less he is in fact in a position where it can readily be accepted upon the evidence that he is trying to get ahead and trying to get people interested in some activity of a trading or commercial nature he may be entitled to oppose."

I believe that the date when I should assess whether or not a prospective opponent is "trying to get ahead and trying to get people interested" should be the date of lodgement of the notice of opposition.  I am guided in this respect by the words of Graham, J. in Mediline A.G.'s Patent where he comments on what Whitford, J. has said in Kessler's Application as follows:

"I am not, at present, satisfied that, as a matter of law, it is sufficient if an opponent or applicant for revocation can only show an interest which has arisen after the date of notice of opposition or application to revoke.  He must, of course, have an interest, as Whitford, J. says, which is extant at the date of the hearing, but I think also that he must have such an interest initially at the date on which he gives notice of opposition or makes his application to revoke."

I feel that the fact that the opponent company was first registered on 10 January 1989 weighs in the opponent's favour especially as the present application was not accepted until 5 October 1989 although it was published on 24 March 1987.

I note also that the opposition itself is certainly not frivolous, vexatious or blackmailing in nature.  Indeed, as will be evident below, the opponent has provided evidence which I have found to anticipate many of the claims.

The fact that the opponent company has been negotiating with a major air-conditioning company over the last two years does not appear to be particularly relevant to the opponent's case.  I note that the date of the notice of opposition is 4 January 1990 - i.e. in excess of two years ago.  Similarly, the trade mark application was lodged on 7 June 1990 which is after the notice of opposition.  There is no evidence before me to indicate that any negotiations were occurring before the date of opposition (cf. Kessler's Application).  Also there is no evidence to suggest that the opponent company had any know‑how to provide technical consulting.  If either situation had been shown then there would be more support for the argument that the opponent has an interest.

The financial state of the company is also not supportive of the opponent's case.  A company with current assets of $3 would not appear to have a ready capacity to commence manufacturing of air‑conditioning systems.

As indicated in the second principle from Mediline A.G.'s Patent the onus of establishing locus lies on the opponent.  I do not believe that the opponent has done so in the present case. The mere existence of a company before the date of the notice of opposition does not to my mind establish sufficient interest.

I therefore find that the opponent does not have locus standi. As a result, there is no longer an opposition.

There are three consequences which follow from my conclusion that the opponent has not established locus standi - the first is that the determination of costs may be on a somewhat different basis than had the position been otherwise; the second is that the party is not entitled to comment on any proposed amendments [see regulation 10.2(6)]; and the third is that, as there is no opponent, the established practice of offering that party a chance to be finally heard after permitting amendments to an application following an "interim" decision will not be followed.

Furthermore, whilst this finding ends the opposition, I am still obligated to consider the issues raised as a bar-to-sealing action - as in Indoor Cricket Arenas (Australia) Pty Ltd v Australian Indoor Cricket Federation 9 IPR 273, (1987) AIPC 90-395. The considerations in a bar-to-sealing action [which has its origin in Tate v Haskins (1935) 53 CLR 594], are explained in some detail in re Gould Inc 13 IPR 644, (1989) AIPC 90-560.

Thus I must take account of the evidence before me in considering whether or not to send the present application to grant.

the specification

The specification in suit relates to an air‑conditioning system. The principle object of the invention is stated (on pages 5 and 6 of the specification) to be the significant reduction of at least some of the disadvantages of existing technology in heat pump air-conditioning systems; six disadvantages are listed.  On page 5 it is also stated that the present invention greatly reduces the energy required for heating and cooling ventilation air, and obviates the need to consider indoor air treatment except for applications in unusually polluted environments.

The specification contains a prolix discussion of the general form of the invention and its advantages, with the description of the preferred embodiment commencing on page 15.  In brief, the invention can be summarised as comprising an air-conditioning system with an inlet path for air going into a room to be air conditioned, and an outlet path for air leaving that room.  The system contains a hybrid arrangement for heating/cooling the air. Firstly, there is a closed-circuit heat pump having a condenser and evaporator in the respective paths.  Secondly, there is a passive air-to-air heat exchanger which transfers heat from the exiting air immediately before it reaches the heat pump in the exit path, to the ingoing air immediately before it reaches the heat pump in the inlet path.

There are 17 claims, of which claims 1 and 10 are independent claims, and claims 16 and 17 omnibus claims.  Claim 1 is as follows:

An air-conditioning system, comprising;

a first, air-to-air heat exchanger having an inlet for connection to a supply of outside air, a first, supply air flow path, and a second, return air flow path;

a closed refrigeration system comprising second and third heat exchangers each comprising a refrigerant-to-air heat exchanger, and a heat pump;

said second heat exchanger having an air flow path connected in series with the supply air flow path of said first heat exchanger, and an air flow outlet for connection to a space to be air conditioned;

said third heat exchanger having an air flow path connected in series with the return air flow path of said first heat exchanger, and an air flow outlet for connection to the exterior of a building to be air conditioned;

connecting means for connecting said space to be air conditioned to the return air flow path of said first heat exchanger for returning air from said space to said heat exchanger; and

air impeller means for causing air to flow through said supply air flow path of said first heat exchanger and the space to be air conditioned, and for causing at least some of the return air from said space to flow through said return air flow path, through said third heat exchanger, and exhaust to atmosphere.

Claim 10 is a method claim, as follows:

A method of air conditioning comprising impelling an air flow through a supply air flow path of an air-to-air heat exchanger, through an air flow path of a second heat exchanger being a refrigerant-to-air heat exchanger of a closed refrigeration system of a heat pump, through a space to be air conditioned, and returning said air flow through a return air flow path of said air-to-air heat exchanger thereby exchanging  enthalpy between said supply and return air flows, and discharging the return air through a third heat exchanger being another refrigerant-to-air heat exchanger of said closed system, while operating the heat pump to cause flow of refrigerant through both said refrigerant-to-air heat exchangers functioning respectively in evaporator and condenser modes.

evidence

The evidence in support of the opposition consists of a short declaration by Stephen Henry Wilson, the patent attorney for the opponent.  The declaration refers to US specifications 3640090 and 4023949, which are asserted to prior publish or render not novel the claims of the application.  It also includes a specification, and abstracts of 5 other specifications, of Australian patent specifications, which are asserted to demonstrate that reverse cycle air-conditioning is part of the common general knowledge in Australia before the priority date.

The evidence in answer is a declaration by Frederick Daniel Cole, the marketing director of the applicant company.  He disputes the relevance of the evidence in support on a number of grounds.  With respect to US 3640090, he asserts that it is applicable to a different field to the present invention; and that this citation uses a heat pipe rather than an air-to-air heat exchanger.  With respect to US 4023949 he observes that in the citation "a minor portion only of the useful air, downstream of the dry side of the heat exchanger, is passed over the evaporator of a vapour compression refrigeration system".  With respect to the remaining citations, he asserts that none of them give reference to utilising a hybrid air‑conditioner "in reverse".

The evidence in reply is a declaration by Warren R Bolton, a director of the opponent company.  With respect to US 3640090, he asserts that heat pipes are heat exchangers, and displays Chapter 35 of the American Society for Heating Refrigeration and Air-conditioning Handbook 1983 (ASHRAE Handbook 1983).  He also notes that the specification in suit, on page 7 lines 13 to 20, references a number of alternative heat exchangers to its preferred embodiment, including heat pipes.  With respect to US 4023949, he notes that the specification states that "if the entire air stream were to pass by the evaporator coil, the drop in temperature would be insufficient to reach the dew point but with only a small amount of the air being so passed, the dew point is passed and the air dehumidified", and asserts that this is disclosing the possibility of all air passing through the evaporator.

submissions

Mr. Wilson for the opponent submitted that all the claims were either prior published or not novel on the basis of the two cited US specifications.  He proceeded to purportedly identify each feature of the claims (and in particular the independent claims 1 and 10) in each of the citations in turn.

Mr. Maddern submitted , quoting from Intellectual Property in Australia by Lahore, that

"A prior publication will only anticipate a subsequent invention if it discloses all of the essential integers of the invention and normally a document will be required to disclose a result rather than disclose a method which may or may not lead to a particular result.

If, however, a person following the instructions contained in the prior publication will invariably achieve a particular result which covers the claim in question then the contribution may be sufficient to anticipate the claim even though no result is disclosed."

He submitted that the present invention related to air‑conditioning of a spaces such as a dwelling, office etc., and that US 3640090 was not relevant because it was directed to a different application than the present invention (viz. "large volume cold storage warehouses", and "large produce ripening rooms such as tomato repack storage vaults.")

With respect to US 4023949, Mr. Maddern undertook a detailed discussion of one of the examples of the citation, asserting that the alleged results given for the example could not be achieved in the absence of some other unstated step.  I asked the applicant (and the opponent) whether they had undertaken any tests or experiments in relation to this invention to establish the correctness or otherwise of either what is said in the specification, or what they assert to be the case; no such tests have been undertaken.  I therefore accord little weight to this submission - rather I note that this citation is clearly a `paper anticipation', and the strict rules governing such citations,  clearly enunciated by the Privy Council in Canadian General Electric Co. Ltd. v. Fada Radio Ltd., (1930) 47 RPC 69 at page 90, apply - viz.

"Any information as to the alleged invention given by any prior publication must be for the purpose of practical utility, equal to that given by the subsequent patent.  The latter invention must be described in the earlier publication that is held to anticipate it, in order to sustain the defences of anticipation.  Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result.  It must also be shown that the specifications contain clear and unmistakable directions so to use it.  It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own."

With respect to the interpretation of claim 1, and in particular whether claim 1 required that all the air passing through the first heat exchanger must pass through the second heat exchanger, Mr. Maddern asserted that the specification constitutes a dictionary for the claims, and that when read in the light of the description claim 1 must necessarily be construed as requiring that all the air from the first heat exchanger passes through the second heat exchanger.

decision

The opposition was based on two citations - viz. US 4023949 and US 3640090. For this decision, it is convenient to consider these citations in turn.

US 4023949

There are two possible differences between the invention claimed and the disclosure US 4023949.

Firstly, this citation does not disclose that all air should pass through the second heat exchanger.  Indeed the passage commencing at column 6 line 40 clearly teaches away from such an arrangement.  Mr. Maddern's asserts (relying on the description as a dictionary for the claims) that claim 1 must necessarily be construed as requiring that all the air from the first heat exchanger passes through the second heat exchanger.

However I disagree with Mr. Maddern's assertion. I note Minerals Separation North America Corporation v. Noranda Mines Ltd., (1952) 69 RPC 81 at page 93, wherein Lord Reid said:

"The Appellants contend that there is in the earlier part of the specification a definition of the word "xanthate" as used by the Patentee which is in effect a "dictionary" and that, as the Patentee has shown that he intends the word to be understood in a limited sense throughout, that limited sense ought to be attached to the word when it occurs in claim 9.  Their Lordships do not doubt that it is possible for a patentee to make his own dictionary in this way.  If he has put something in the earlier part of the specification which plainly tells the reader that for the purpose of the specification he is using a particular word with a meaning which he sets out, then the reader knows that when he comes to the claims he must read that word as having that meaning.  But this is an awkward method of drafting ... and it is in all cases incumbent on a patentee who chooses to adopt this method to make his intention plain to those who read the specification."

In the present case the specification (on page 1) provides a definition of "heat pump", "supply air", and "return air". Other than for these terms, I do not believe that there is any suggestion in the body of the specification that the words in the claims should be given anything other than their plain meaning. Consequently I do not agree with Mr. Maddern's submission.  The claim merely requires that the second heat exchanger has an air flow path connected in series with the supply air flow path of the first heat exchanger; it does not include a requirement that all air should pass through the second heat exchanger.  Therefore I believe that this integer of claim 1 is found in US 4023949.

The second possible difference is that US 4023949 does not disclose a heat pump.  US 4023949 discloses a vapour compression refrigeration unit as part of its system, whereas claim 1 discloses a heat pump as part of its closed refrigeration system.  In this respect I disagree with the submission made by Mr. Wilson at the hearing that the compressor indicated as 48' in Figure 5 of the drawings of the citation constitutes a heat pump.  There is no suggestion anywhere in this document that the refrigeration unit's operation can be reversed - such a capability is a characteristic of heat pumps, and indeed the definition of a heat pump on page 1 refers to cooling and heating.  Therefore US 4023949 does not disclose all the essential integers of claim 1.

Furthermore, US 4023949 is directed to the field of evaporative refrigeration systems.  It seems to me that a heat pump with its ability to heat as well as cool is not a mechanical equivalent to, or a mere workshop variation of, the refrigeration unit of the evaporative refrigeration system disclosed in US 4023949 - see R.D. Werner & Co. Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679. It follows that I consider the claims to be novel over US 4023949.

US 3640090

This citation discloses the use of a heat pipe for air-to-air heat exchange.  Claim 1 of the present specification includes within its scope any form of air-to-air heat exchanger.  One example of an air-to-air heat exchanger provided in the body of the specification (see page 7, lines 13 to 20) is a heat pipe.

Mr. Maddern submitted that US 3640090 is directed to a different field from the present invention.  I note column 4, lines 71 to 73, of the citation, where it states that a thermowheel is intended

"for air conditioned or heated enclosure use whereas this invention is an apparatus intended for refrigeration use." 

Thus the citation appears to distinguish between air‑conditioning systems to which the present claim 1 is directed, and refrigeration systems to which the citation is directed.  However the citation subsequently, in column 5, from line 23, discloses that a reversible heat pump refrigeration machine can be used in its system.  Consequently I believe that all the essential integers of claim 1 are disclosed in US 3640090 and that therefore claim 1 has been prior published by this document.

I am of the opinion that US 3640090 also prior publishes claim 10 - a method claim which is no more than the operation of the system of claim 1.  In my view the citation also prior publishes dependent claims 2 to 4.

Claims 11 and 14 include an error in their wording (as pointed out by Mr. Wilson at the hearing).  They refer to "the first said refrigerant-to-air heat exchanger" and "the first said heat exchanger of said refrigeration system", respectively.  Neither of these terms appear in claim 10 to which claims 11 and 14 are appended.  I assume that these references are meant to identify the second heat exchanger of claim 10, and on this basis they are also prior published by US 3640090.

Claims 5 to 7 and claims 12, 13 and 15 all define arrangements for spraying water through the return air flow path - such an arrangement is not disclosed in US 3640090.

Claims 8 and 9 define the inclusion of air valves in the supply and return paths to control the flow of air - such an arrangement is not disclosed in US 3640090.

At the hearing, Mr. Wilson submitted that, although the features of claims 5 to 9, 12, 13 and 15 were not specifically disclosed in the citation, the claims were not novel;  these features did not contribute to the working of the claimed invention [Griffin v Isaacs (1942) 12 AOJP 739, (1938) 12 ALJ 169].

With respect to claims 5 to 7 and claims 12, 13 and 15, I do not agree with Mr. Wilson.  The specification indicates at page 12, lines 2 to 9, and elsewhere that the provision of means to spray water through the return air flow path enables the return air to be cooled.  The supply air is consequently cooled via the air-to-air heat exchanger.  This results in an energy saving as a lower demand is placed on the compressor of the heat pump.  It seems to me that such an arrangement makes a substantial contribution to the working of the claimed system.  I find that claims 5 to 7 and claims 12, 13 and 15 do not lack novelty in the light of US 3640090.

Claim 8 defines an air inlet valve in the supply air path.  I agree with Mr. Wilson that such a valve does not make a substantial contribution to the working of the claimed system. The system functions in the same fashion whether there is more or less air being supplied.  Consequently, I believe that claim 8 lacks novelty in the light of US 3640090.

Claim 9 defines a further air valve located so that return air can be directed into the inlet air path if desired.  This arrangement is of importance when the system is in its heating mode.  The specification, on page 26, lines 1 to 5, indicates that the mixing of return air with inlet air minimises the formation of ice when the outside temperature is 2 degrees Centigrade or below.  It seems to me that this would be of some significance in the operation of the system.  Thus I am not convinced that such an arrangement makes no substantial contribution to the working of the claimed system.  I find that claim 9 does not lack novelty in the light of US 3640090.

CONCLUSION

I have found that the opponent does not have locus standi.

I have also found that claims 1 to 4, 10, 11, and 14 are prior published by, and claim 8 is not novel in the light of, US 3640090. Additionally, claims 11 and 14 do not comply with section 40 of the Patents Act 1952 because they lack clarity.

In my view, and having regard to the evidence on file, there is patentable subject matter present which, if properly defined in the statement of claims would, enable the application to proceed to sealing. Consequently, I allow the applicant 60 days from the date of this decision to propose amendments to overcome the prior publication, lack of novelty and section 40 deficiencies in the specification.

costs

Sub-section 210.(d) of the Patents Act 1990 provides that the Commissioner may award costs against a party to proceedings before him. There is no restriction in relation to the "interest" of that party.

The normal practice of the Commissioner is for costs to follow the event.  In the present circumstances, the opponent may be said to have lost the action, as I have determined that it did not establish its right to mount the action.  However, the opponent has done a public service by bringing relevant material to the Commissioner's notice, thus preventing sealing of what would be a clearly invalid patent.  It follows that had the opponent established that it had locus, it would have been successful in the opposition.

I also note that the issue of locus was raised at a most belated stage in the proceedings; indeed at the hearing it was raised only as a possible issue, with nothing of substance presented to support the contention.

Having regard to all the circumstances, it is my view that the opponent is entitled to costs in the opposition up to and including the time of the hearing; I award costs against the applicant accordingly.

D. HERALD

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  R K Maddern & Associates, Adelaide

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