Decision: Issued .
Pending court action for revocation of a petty patent, and a request for an extension of term. Parties could not agree to a hearing date.

Discussion of general principles for setting a hearing, when a relevant court action is pending.

Having regard to the public interest, hearings under section 69 in respect of a request for an extension of term of a petty patent should be heard without significant delay. Deferral of the hearing until after the conclusion of a relevant court action is generally not appropriate.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 621027 by HIGH TECH AUTO TOOLS PTY LTD, a notice under section 28 by FEROCEM PTY LTD, and the date of a hearing.

background

Petty patent 621027 (Application 83484/91) in the name of HIGH TECH AUTO TOOLS PTY LTD was sealed on 15 January 1992. The Petty Patent was filed as divisional application of standard patent 621447 (application 47783/90) [which is itself under opposition by the informant of the present proceedings; and in a decision dated 3 Dec. 1992, a delegate of the Commissioner refused to grant an extension of time for the opponent to serve evidence in support of that opposition - that decision was appealed.]

On 11 December 1992 the petty patentee applied for an extension of term of the Petty Patent. On 15 December 1992 FEROCEM PTY LTD filed a notice under section 28(1) of the Patents Act 1990, together with its evidence; subsequently the petty patentee filed its evidence in response on 12 May 1993.

On 24 May 1993 both parties were informed by the Patents Office that a hearing in the matter would be set down within the next few days. In subsequent correspondence the petty patentee submitted that Patent Office practice would indicate that the matter should be deferred pending the outcome of concurrent Federal Court proceedings. On the other hand, the informant requested that the matter be set down for a hearing without further delay.

[In the concurrent Federal Court proceedings (G633/1990) the applicant in the Federal Court proceeding (the present informant) apparently alleges inter alia unjustified threats and seeks revocation of the petty patent. The respondent (petty patentee) alleges patent infringement. I understand that the hearing in that matter has been set down for 21 March 1994.]

The parties failed to reach an agreement on a date for the hearing before the Commissioner in respect of the extension of term of the petty patent.

The present matter involves a procedural issue of some importance. The Petty Patent system clearly enables court actions for revocation to be instituted but unresolved before the time at which the Commissioner would normally expect to be deciding whether…

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 Ferocem v High Tech Auto Tools

Details

AGLC: Ferocem v High Tech Auto Tools [1993] APO 58
Case: [1993] APO 58
Decision Date: 1 October 1993

CaseChat Overview and Summary

In the matter of a request by HIGH TECH AUTO TOOLS PTY LTD for an extension of term of petty patent 621027, a notice under section 28 by FEROCEM PTY LTD, and the date of a hearing, the Court was required to decide the appropriate procedure for setting a hearing date when a relevant court action was pending. The dispute arose from a request by the patentee for an extension of term of their petty patent, which was opposed by the informant. The concurrent court action was for the revocation of the petty patent, and the parties could not agree on a date for the hearing before the Commissioner.

The court considered the general principles for setting a hearing date in such circumstances, taking into account the public interest and the potential for unnecessary delays. The court held that hearings under section 69 in respect of a request for an extension of term of a petty patent should be heard without significant delay, and that deferral of the hearing until after the conclusion of a relevant court action was generally not appropriate. The court emphasised the importance of considering the public interest and the potential for a de facto extension of the term of the patent in a commercial sense, as the general public would be left in uncertainty regarding the use of the invention.

The court concluded that it was inappropriate for the Commissioner to defer a section 69 hearing for any significant period, including awaiting the decision of a court. The court found that the Commissioner should proceed with the hearing and determine the matter, even if the material before the Commissioner differed somewhat from that before the Court. The court held that the possibility that the hearing before the Commissioner may be a waste of time or money if the court came to a different finding was not persuasive, as the court and the Commissioner were at least as likely to agree.

The court ordered that the hearing into the extension of term of petty patent 621027 should proceed before the Commissioner, and not await the outcome of the copending court action. The hearing was set for November 22, 1993, commencing at 10 am. Costs were awarded against High Tech Auto Tools Pty Ltd.

This decision highlights the importance of considering the public interest and the potential for unnecessary delays when setting a hearing date in matters involving a pending court action. The court emphasised the need for hearings under section 69 in respect of a request for an extension of term of a petty patent to be heard without significant delay, and that deferral of the hearing until after the conclusion of a relevant court action was generally not appropriate. The decision also underscores the importance of the Commissioner being adequately informed of the matters before the Court, and the need for the Commissioner to proceed with the hearing and determine the matter, even if the material before the Commissioner differed somewhat from that before the Court.

Orders