IGT v Commissioner of Patents

In the Federal Court of Australia, IGT filed an application for judicial review of a decision by a delegate of the Commissioner of Patents, who had refused IGT's application to serve further evidence in an opposition to the grant of an Australian patent. The dispute arose from a patent application for an apparatus for use with a system of linked poker machines, which was opposed by IGT following an assignment of the opposition from Acres Gaming Inc. IGT sought to introduce additional evidence, including prior art and expert opinions, to support its opposition. The delegate refused IGT's application to serve further evidence, leading to IGT's application for judicial review under the Administrative Decisions (Judicial Review) Act 1977.

The court was required to determine whether the delegate's decision was flawed by error of law. Specifically, the court had to assess whether the delegate's refusal to allow IGT to serve further evidence was unreasonable, and if the costs awarded to the opposing party were justified. The court considered the principles of procedural fairness and the relevant statutory provisions governing the admission of evidence in patent oppositions.

The court found that the delegate's decision to refuse leave to serve further evidence was indeed flawed by error of law. The court noted that the delegate had not considered whether IGT's evidence was relevant or necessary to the issues in the opposition. Furthermore, the court held that the costs awarded to the opposing party were excessive and not proportionate to the proceedings. The court set aside the delegate's decision, remitted the matter to the Commissioner of Patents for reconsideration, and vacated all orders as to costs made to date. Each party was ordered to bear its own costs of the application.

In conclusion, the court granted the application for judicial review by setting aside the delegate's decision and remitting the matter to the Commissioner of Patents for reconsideration. The court's decision emphasised the importance of ensuring that decisions on the admission of evidence in patent oppositions are made with due regard to the principles of procedural fairness and the relevant statutory provisions.