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

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).
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".
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.
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.
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…

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.

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Details

Case: [2002] APO 46
Decision Date: 12 December 2002

CaseChat Overview and Summary

Hiltive Pty Ltd filed an objection against the extension of the term of their petty patent, which was opposed by Rudolf Hartmann. The dispute also involved the taxing of costs associated with the preparation of the case for a hearing. The matter was heard by a delegate of the Commissioner of Patents. The central legal issues in this case were whether the patentee was entitled to claim costs related to the preparation of a case for a hearing when it had clearly indicated before the hearing that it did not intend to attend, and whether such costs were allowable under the relevant provisions of the Patents Act 1990 and the Patent Office Manual.

The court considered the submissions of both parties, particularly focusing on the patentee's correspondence and the timing of their indication of non-attendance at the hearing. The court held that the patentee's correspondence dated September 4th and 5th, 2002, indicated that they did not agree to the deferral of the hearing and did not intend to appear. Given this clear communication, the court found that it was unlikely that the patentee had prepared a case for a hearing. Instead, the written submissions filed by the patentee on September 24th were likely drafted as submissions to be placed on file, rather than in preparation for a hearing. Therefore, the court confirmed that the patentee was not entitled to any of the costs sought in relation to the preparation of the case for a hearing.

In conclusion, the court ruled that the patentee, Hiltive Pty Ltd, was not entitled to the costs associated with preparing for a hearing, as they had indicated well before the hearing that they did not intend to attend. The decision underscored the importance of clear communication regarding participation in patent hearings and the implications of such communication on the entitlement to costs. The final order confirmed the taxing officer's assessment and denied the patentee's request for the costs in question.

Orders