Ferocem Pty Ltd t/as New Age Automotive Electronics Pty Ltd
[1993] FCA 1061
•19 Feb 1993
| IN THE FEDERAL COURT OF AUSTRALIA | ) ) | ||
| NEW SOUTH WALES DISTRICT REGISTRY |
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| ) | |||
| GENERAL DIVISION | ) |
BETWEEN: FEROCEM PTY LIMITED t/as NEW AGE AUTOMOTIVE ELECTRONICS PTY LIMITED
First Applicant
CELTIN PTY LIMITED t/as NEW AGE INTERNATIONAL EXPORTS PTY LIMITED
Second Applicant
AND: HIGH TECH AUTO TOOLS PTY LIMITED
First Respondent
MICHAEL SKOVRON
Second Respondent
ALAN SKOVRON
Third Respondent
19 February 1993
REASONS FOR JUDGMENT
LOCKHART J.
This is a motion by the three respondents for an order that the proceeding be stayed until such time as the Commissioner of Patents issues a decision concerning the grant of letters patent in respect of an application by the first respondent for a standard patent number 621477.
The relevant facts may be briefly stated. The first respondent is the proprietor of Australian petty patent number 621027, which is the subject of the present proceeding. That petty patent was granted on 15 January 1992, and it is currently in force. The application of the first respondent for the standard patent has been lodged and advertised.
An opposition was lodged by the first applicant to the grant of the standard patent. The
first applicant requested from the Commissioner of Patents an extension of time to serve
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evidence in support of its opposition. The first respondent objected to that extension. The delegate of the Commissioner gave a decision on 3 December 1992, namely, that no appropriate case for extension had been made out by the first applicant, and the delegate refused to grant the extension sought.
The application for extension by the first applicant was on the basis that the opponent wished to have the evidence in support of the opposition under section 59 of the Patents Act substantially identical with the evidence in this proceeding. The first applicant has filed grounds of opposition which are before the Court. It has also filed a statement of grounds of particulars of objection which is also before the Court. The first applicant has now lodged an appeal to this Court from the decision of the delegate declining to extend time.
Another judge of the Court dealt with the matter at an interlocutory stage yesterday and gave certain directions with respect to the preparation of the appeal from the Commissioner's decision for hearing. The claims of the petty patent and the claims in the complete specification of the application for the standard patent are said to be substantially the same. It is accepted by all parties for the purposes of today's proceeding that they are substantially the same.
It would appear that if the proceedings in this Court by way of appeal from the decision of the delegate of the Commissioner are heard and determined by April this year, then it is likely that the Australian Intellectual Property Office will reach a decision whether or not to grant the letters patent by April of next year. If this Court upholds the decision of the delegate, then various steps will be taken, which appear to include the following - namely, that there will be no evidence in support of the particulars of opposition, and the Commissioner will have to make a decision as to whether he will consider any of the grounds of objection under the prior art referred to in the particulars.
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If the Commissioner indicates that he intends to refer to those documents in reaching his decision, then it will be necessary for the applicant to file evidence in answer. That could be done, so I am informed, by August of this year. If the evidence is filed, and a period of three months would be allowed for evidence in reply - that is the normal practice - that would take the matter through to mid-November. It would seem, from what I have been told, that a hearing before the Commissioner could be expected by February of next year, and that a decision is likely to be given within 60 days of that date, in accordance with normal practice.
In the event that this Court decides that the delegate's decision was wrong, then the first applicant would be entitled to put evidence in support of its opposition to the grant of the Australian patent. If the evidence in support is restricted to the matters put before this Court in the present proceeding before me, and that evidence could be filed immediately, then it would be expected that the time schedule referred to by me earlier could also apply.
In the result, it seems probable that a decision in relation to the grant of the standard patent would be given by April 1994. If the Commissioner grants the application for a standard patent, it will be necessary for the first respondent to withdraw the petty patent to allow sealing of the standard patent by virtue of the provisions of the Patents Act 1990.
In the present proceeding the amended statement of claim alleges that the petty patent was, at all material times, liable to be revoked - see paragraph 7(a) and (b). The applicants have filed particulars of objection, and those particulars of objection are before the Court. The applicants rely on an action for unjustifiable threats within s. 121 of the Patents Act, and the basis of that allegation is that the Australian petty patent is invalid.
The first respondent has filed a cross claim in the present proceeding, alleging
infringement of the petty patent, and the defence to that cross claim asserts that the petty patent is
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invalid. Hence the validity of the petty patent plainly raises the principal issue in the proceeding presently before me, although, of course, the questions of infringement and of unjustifiable threats are also live issues.
In the case of the standard patent, the amended statement of claim asserts that each of the claims of the complete specification would be invalid if a standard patent had been granted in respect of the complete specification. The applicants also rely upon unjustifiable threats, and the basis of that claim is the invalidity of the claims of the complete specification.
The applicants have filed a substantial body of affidavit evidence in the current proceeding, dealing with the issues of invalidity which are raised in the amended statement of claim and in the defence to cross claim. It would appear that the same evidence, or substantially the same evidence, would be relied upon in the opposition proceedings currently before the Australian Intellectual Property Office in respect of the standard patent application.
The respondents have undertaken, by consent, without admissions to the Court, not to publish or distribute to any person any letter in the terms of the letter from Messrs Arthur S. Cave & Co, Patent Attorneys, which is referred to in the evidence, and which is said to constitute the threat, or at least to be part of the threat.
The affidavits relied on by the applicant with respect to invalidity in this proceeding were filed by December of last year. It is now for the respondents to file evidence dealing with the issues of invalidity and infringement, and it is expected that, in order to prepare that evidence, it will be necessary for the respondents to spend substantial money and devote considerable time to that end.
The respondents put their case for the stay - in the light of those facts which I have
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narrated - on a number of bases. It is asserted that it is preferable for the Commissioner to determine whether or not to grant the standard patent, and to inquire into its validity and to issue a decision, without that issue contemporaneously being determined in the Federal Court. The current undertaking given to the Court by the respondent is said to protect the applicants adequately, pending the final hearing of this proceeding.
It is said that the real issue between the parties concerns infringement and validity of both the petty patent and the standard patent, if the latter be granted. The respondents intend to argue that the Court is not entitled to examine the invalidity prospectively of the subject matter of an application currently before the Patents Office, and it may be that the issue will be a non-issue, if that submission is upheld. This is the submission made on behalf of the respondents.
It is also said by the respondents that if the Commissioner is to refuse the grant of a patent, then an appeal might be lodged to this Court, and the first instance decision thereon ultimately be the subject of an appeal to a Full Court of this Court, and the matter might even proceed to the High Court. It is said to be more conducive to the interests of justice between the parties, if such an appeal were to occur, that it be dealt with and heard at the same time as any appeal from the decision given by the Court in this proceeding. The respondents are prepared to consent to a joinder with this present proceeding before me of any proceedings on appeal from any decision of the Commissioner to grant or refuse the standard letters patent.
The applicants oppose the motion for a stay. They concede, as I indicated earlier, for present purposes that the issues as to validity in the proceeding currently before me are likely to be substantially the same as the issues that would be raised in relation to the objection to the standard patent, but they say that the case, although it has been on foot for a long time, is nevertheless one that is getting close to the stage of being ready for hearing. It is likely that the hearing of the present proceeding could be commenced in November of this year.
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In my opinion, the motion should not succeed. The case is before the Court. It is well advanced in its preparation. There certainly remains work to be done, as I have indicated, especially on the part of the respondents; but it does seem feasible that the matter will be heard later this year, and I think the applicants are entitled to have their case proceed and not stayed for a period of what would be at least 12 months, pending the outcome of the application for the standard patent and the opposition thereto.
In the long run, the best interests of the respondents will not be affected adversely by the continuation of the present proceeding. Accordingly, the motion is dismissed.
Costs of the motion shall be the applicant's costs in this proceeding.
I certify that this and the preceding seven (7) pages are a true copy of the reasons for judgment herein of the Honourable Mr. Justice Lockhart.
Associate
Dated: 19 February 1993
| Counsel for the Applicant | : | Mr D K Catterns |
| Solicitors for the Applicant | : | Henry Davis York |
| Counsel for the Respondents | : | Mr M Ellicott |
| Solicitors for the Respondents : | Maclarens | ||
| Date of Hearing |
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| Date of Judgment |
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