Hiltive Pty Ltd v Rudolf Hartmann

[2002] APO 46

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent:  No. 735352 in the name of Hiltive Pty Ltd

Title:  Building Assembly and Method

Action:  Objection to Extension of Term under S.28.

Taxing of costs.

Decision:  Issued            .

Abstract:Patentee not entitled to costs sought for preparation for a hearing because it indicated well before the hearing that it did not intend to appear at the hearing.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 735352  in the name of  Hiltive Pty Ltd, application for Extension of Term under S.69 and notice under S.28 filed by Rudolf Hartmann. Taxing of costs.

BACKGROUND

1. Application No. 33450/01 was filed on 6 April 2001 and sealed as Petty Patent 735352 on 5 July 2001. The patentee applied for extension of the initial term on 7 July 2001, the informant filed a notice under S.28 on 5 June 2002, a hearing was set down for 26 September 2002, both parties indicated that they would not attend the hearing, but they both filed written submissions in the matter. In a decision dated 17 October 2002 I found that the claims of Petty Patent 735352 were valid, and accordingly I extended the term under S.69(2).

2. Applying the usual practice of costs following the event, I awarded costs against Rudolf Hartmann, and indicated that "since this is a S.28 matter and not an opposition these costs do not include costs set out in Schedule 8 which relate to opposition or preparing and perusing evidence".

3. In a letter dated 18 October 2002 the patentee requested taxing of costs for three items:
   1. Receiving and perusing the S.28 Notice
   2. Receiving and perusing the Evidence-in-Support, and
   3. Preparation of case for hearing.

4. The taxing officer indicated to the patentee that items 1 and 2 are not allowable costs because it is current Office practice not to allow such costs in S.28 matters, based on the decision in Thomas & Stohr v Chappell & Yates [1993] APO 6, that this practice is set out in paragraph 14.12 of the Patent Office Manual, Vol. 3, and that it was clear from my decision of 17 October that these costs were not allowable. The taxing officer also indicted to the patentee that item 3 is not allowable because there was no hearing relating to the matter.

5. The patentee's representative Mr Rainey, patent attorney, requested a reconsideration of the non-allowance of item 3, and filed written submissions. The informant's representative, Mr Griziotis, patent attorney, also filed written submissions. The patentee's submissions are summarised as follows:

   ·    The Schedule of fees clearly envisages costs relating to the preparation of a hearing, irrespective of whether the hearing proceeds.

   ·    A case for a hearing was prepared "and it was only upon discovering two days before the hearing that the notifier did not intend to appear that we decided not to appear ourselves.

   ·    The extensive written submissions filed in relation to the S.28 matter indicate that a case for hearing had been prepared.

   DECISION

6. Item 11 in Schedule 8 of the Regulations refers to "preparation of a case for hearing" as being an allowable cost, so I agree with the submission that generally "preparation" includes costs relating to preparation for a hearing irrespective of whether the hearing proceeds.

7. Re the issue of whether there was preparation for a hearing on the patentee's part in the present circumstances, it is significant that after the original hearing notice was sent to both parties on 28 June 2002, and a confirmation notice sent on 5 September, the patentee indicated in letters dated 4th and 5th September 2002 that it did "not agree to deferral of the hearing" and it was "not the patentee's intention to appear". Written submissions were then filed by the patentee on 24 September.

8. The informant submitted that in this case the written submissions from the patentee are not an indication that it had prepared for a hearing. I agree with this submission; the patentee's correspondence of 4^th and 5^th September, ie. 21 days before the date set down for hearing, suggests that it did not want a hearing and did not intend to appear at a hearing. Thus it is rather unlikely that written submissions were "prepared in relation to a hearing" and more likely that they were drafted as written submissions simply to be place on file for consideration in the S.28 matter.

9. Therefore I confirm the taxing officer's assessment that the patentee is not entitled to any of the costs sought in this case.

   John Welsh
   Delegate of the Commissioner of Patents

   Patent attorneys for the patentee:  Pizzeys, ACT

   Patent attorneys for the informant:  Peter Maxwell & Assoc, Sydney.