Innovia Security Pty Ltd v Giesecke & Devrient GmbH - [2014] APO 38

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2014] APO 38

Patent Applications: 2006254436 and 2007229741

Titles:Data carrier and method for the production thereof; and
Data storage medium and method for manufacturing it

Patent Applicant:  Giesecke & Devrient GmbH
Opponent:  Innovia Security Pty Ltd
Hearing Officer:  P M Spann, Deputy Commissioner of Patents
Decision Date:  11 June 2014
Hearing Date:  Written submission completed 21 May 2014
Catchwords:  PATENTS – Costs – applications withdrawn – whether costs can be awarded – scale of costs – costs awarded in part.

Representation: Opponent: Watermark
Patent applicant: Cullens

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2006254436 and 2007229741

Titles:Data carrier and method for the production thereof; and
Data storage medium and method for manufacturing it

Patent Applicant:  Giesecke & Devrient GmbH
Opponent:  Innovia Security Pty Ltd
Decision Date:  11 June 2014
DECISION
Costs in the oppositions are awarded against Giesecke & Devrient GmbH, limited as follows:

For 2006254436, the amount set out in Schedule 8 Part 1 Item 4;

For 2007229741, the amount set out in Schedule 8 Part 1 Item 4 for the opposition under section 59 and, for the opposition under section 104, the amount set out in Schedule 8 Part 1 Item 1 and the official fee paid for filing the notice of opposition.

REASONS FOR DECISION

This matter concerns whether an award of costs is appropriate in the circumstances where the patent applications were opposed but were withdrawn before the evidentiary stages were completed.
Background
Patent applications 2006254436 and 2007229741 were filed by Giesecke & Devrient GmbH (Giesecke) on 22 May 2006 and 15 March 2007 respectively. Both applications were accepted and subsequently opposed by Innovia Security Pty Ltd (Innovia).
In the case of 2006264436, evidence in support of the opposition was completed on 8 November 2013. Evidence in answer was then due by 8 February 2014 but on 22 January 2014 the application was withdrawn “without prejudice”. Evidence in support comprised a declaration made by Mr J Grace, a laser physicist, with 22 exhibits.
Evidence in support of the opposition to 2007229741 was competed on 16 April 2013 with evidence in answer then due on 18 July 2013. The evidence in support comprised declarations made by Mr D Lindsay (with 14 exhibits) and by Mr Grace (5 exhibits). Evidence in answer was not filed but on 5 August 2013 Giesecke filed a request to amend the complete specification. Leave to amend was granted and advertised. On 7 January 2014, Innovia filed a notice of opposition to the amendments. The patent application was withdrawn on 22 January 2014.
Innovia subsequently sought an award of costs in the oppositions. Giesecke opposed this, questioning both the Commissioner’s power to award costs and, in any event whether, in the circumstances, an award of costs would be appropriate.
The law
The Commissioner’s power to award costs arises from section 210 which provides:

“The Commissioner may, for the purposes of this Act:
(a) summon witnesses; and
(b) receive written…

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: [2014] APO 38
Decision Date: 11 June 2014

CaseChat Overview and Summary

Innovia Security Pty Ltd opposed two patent applications filed by Giesecke & Devrient GmbH. Both applications were withdrawn before the evidentiary stages were completed. Innovia sought an award of costs in the oppositions, which Giesecke opposed. The central legal issue was whether the Commissioner of Patents had the power to award costs where the patent applications were withdrawn before the opposition was heard and determined. The Commissioner found that the power to award costs did exist under section 210 of the relevant Act and the associated regulations. The Commissioner also concluded that, while an award of costs was appropriate in this case, it should be limited to costs incurred after the applicant became reasonably aware of the case made against it. This was due to the fact that the oppositions were likely a significant factor in the decision to withdraw the applications.

The Commissioner considered the authorities cited by Giesecke, including the case of Stack v Commissioner of Patents, and found that the law did not preclude an award of costs where proceedings had been terminated before hearing, such as by withdrawal of the patent application or of the opposition. The Commissioner further found that the discretion to award costs applies in the present case but any award of costs needs to take into account the relevant circumstances. The Commissioner concluded that while the oppositions were not a significant factor in the decision to withdraw the applications, it appeared highly likely that absent the oppositions the applications would have proceeded to grant. As such, an award of costs was appropriate, but limited to costs incurred after the applicant became reasonably aware of the case made against it. The Commissioner awarded costs in the oppositions against Giesecke & Devrient GmbH, limited to the costs incurred after the applicant became reasonably aware of the case made against it.

Orders