HIGH-TECH Auto Tools Pty Limited v FRANCIS HEDLEY Horwood

[1993] APO 5

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 621447 in the name of HIGH-TECH AUTO TOOLS PTY LTD.

Title:    An Electronic Fuel Injector Cleaner Apparatus and Method.

Action: Application for costs in a withdrawn opposition filed under section 59 of the Patents Act 1952 by FRANCIS HEDLEY HORWOOD.

Decision:    Issued            .  Costs awarded to applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 621447 by HIGH-TECH AUTO TOOLS PTY LIMITED and costs in an opposition under section 59 of the Patents Act 1952 by FRANCIS HEDLEY HORWOOD.

background

Application No. 621447 by HIGH-TECH AUTO TOOLS PTY LTD(HIGH-TECH) was filed in January 1990 and advertised accepted in the Official Journal dated 12 March 1992. A notice of opposition under regulation 5.3(1) of the Patents Act 1990 was filed by FRANCIS HEDLEY HORWOOD's solicitors on 16 March 1992. A statement under regulation 5.4 was filed on behalf of Mr Horwood on 16 April 1992. And on 29 April 1992 an application under section 223(2) for an extension of time to serve the statement was filed by Mr Horwood's solicitors. On 26 May 1992 HIGH-TECH objected to the application for an extension of time and filed an application for dismissal of opposition. Mr Horwood's solicitors withdrew his opposition in a letter filed on 28 May 1992.

REQUEST FOR COSTS

HIGH-TECH's attorneys, in a letter dated 27 May 1992 state as follows:

"As the Opponents(sic) have now withdrawn their opposition, we respectfully ask for costs in respect of this matter and enclose a suitable application"

This letter also included submissions on the question of costs.

The office sent a copy of this letter to the opponent's solicitors accompanied by a letter which states as follows:

"..your client has 14 days from the date of this letter to either ask to be heard or to provide any written submissions"

Mr Horwood's solicitors did not reply to this letter within 14 days.  But on 15 September 1992 filed a facsimile letter dated 10 September 1992 which reads in part as follows:

"We are unable to complete our written submissions by 11 September 1992.  Accordingly, we formally request to be heard.
...To avoid the time and cost necessarily involved in attending a hearing, we request that we be given until 2 October 1992 within which to provide you with written submissions."

I wrote to Mr Horwood's solicitors on 26 October 1992 and allowed his client 14 days from then to file written submissions.  I did not receive any further written submissions from Mr Horwood's solicitors.

DECISION

In my view Mr Horwood's opposition is a proceeding under the Patents Act 1990 even though Part V of the 1952 Act applies to the opposition (subsection 234(3)). Consequently I have to consider HIGH-TECH's request for an award of costs under section 210 and regulation 22.8 of the Patents Act 1990.

HIGH-TECH has not requested amendment of its specification as a result of Mr Horwood's opposition.  In these circumstances I consider costs, if any, should be awarded to HIGH-TECH.

HIGH-TECH's patent attorney, Mr P Taylor of Davies Collison Cave, made submissions which read as follows:

"..the listing of costs in the 8th Schedule of the Patent Regulations 1991 No.71 do not include costs in respect of an Application for Dismissal of an Opposition.  However, I respectfully submit that as we have already lodged the Application for Dismissal which involved preparation in some detail of our reasons for dismissal, that a suitable figure for lodging the application for Dismissal could be equated to the award of costs as evidence in answer."

Mr Taylor enclosed with his letter a bill for the taxing of costs which included amounts for:

-receiving and perusing Notice of Opposition,
-receiving and perusing Statement of Grounds and Particulars,
-preparing and lodging Application for Dismissal inclusive of filing reasons, and
-official fee for lodgement of Application for Dismissal of Opposition.

According to regulation 22.8(1) I must not award costs, other than the costs specified in schedule 8, unless each party to the proceedings has had a reasonable opportunity to make a submission on the award of those costs.  I consider both parties have had a reasonable opportunity to make such submissions.  And common law does not impose upon me the task of ensuring they take the best advantage of the opportunity to which they are entitled(Sullivan v Department of Transport 20 ALR 322 at page 343). I note the first and fourth items on the bill of costs are covered by parts 1 and 2 of schedule 8. I also note the second and third items on this list are not covered by parts 1 and 2 of schedule 8.

Mr Horwood's notice of opposition states a copy of the notice was served on the applicant.  Therefore I am satisfied HIGH-TECH is entitled to the first item on the bill of costs.

Mr Horwood filed a statement under regulation 5.4.  But paragraph 1 of HIGH-TECH's application for dismissal of opposition states as follows:

"The opponent did not serve the Statement of Grounds and Particulars on the Applicant within 1 month from the date when the Notice of Opposition was lodged at the Patent Office"

Mr Horwood was not granted an extension of time to serve the statement on HIGH-TECH before he withdrew his opposition.  Thus, in my view, Mr Horwood did not serve a statement under regulation 5.4 on HIGH-TECH.  Therefore I consider HIGH-TECH cannot claim costs for receiving and perusing this statement.  Consequently I am satisfied HIGH-TECH is not entitled to the second item on the above bill of costs.

According to regulation 5.5(1) HIGH-TECH could request dismissal of the opposition after the statement under regulation 5.4 was served.  But I have found Mr Horwood did not serve such a statement.  Therefore I consider HIGH-TECH cannot claim any costs associated with its application for dismissal of opposition.  Consequently I am satisfied HIGH-TECH is not entitled to the third and fourth item on the bill of costs.

In summary I award item 3 from part 1 of schedule 8 to HIGH-TECH as its costs in this opposition.

M. Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Solicitors for the opponent        :  Henry Davis York, Sydney