John D. Stephens v William Garrett

[1992] APO 69

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 594649 in the name of JOHN D. STEPHENS

Title:    FETAL ANATOMIC SEX ASSIGNMENT BY ULTRASONOGRAPHY DURING PREGNANCY

Action: Opposition under section 59 of the Patents Act 1952 by WILLIAM GARRETT;  opposition withdrawn;  award of costs

Decision:    Issued            .  Costs awarded to the applicant

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 594649 by JOHN D. STEPHENS, opposition under section 59 of the Patents Act 1952 by WILLIAM GARRETT

background

Patent application number 594649 in the name of John D. Stephens was advertised accepted on 15 March 1990.  A notice of opposition was lodged by William Garrett on 15 June 1990.  The applicant requested that the locus of the opponent be determined as a preliminary issue (Patent Office decision dated 23 August 1991).  A request by the opponent for an extension of time to serve evidence in support was opposed, and subsequently allowed after a hearing of the matter (Patent Office decision dated 23 August 1991).  Evidence in support was not served, and on 25 February 1992 the applicant lodged a notice that he did not intend to serve evidence in answer.  The matter was set down for a hearing on 12 June 1992.

withdrawal of the opposition

The opponent withdrew the opposition on 9 June 1992.  On 18 June 1992 the applicant requested taxation of costs with regard to receiving the notice of opposition, preparing the case, and the taxing fee.  The opposition clerk advised the applicant that before costs can be taxed, an award of costs must have been made by the Commissioner.  The opponent was invited to be heard or to make submissions on costs.

submissions

The attorney for the applicant (Mr Glen Gordon of Davies Collison Cave, Sydney) stated in his letter of 18 June 1992:

"We understand there is legal precedent for the allowance of costs for work carried out properly, and not done prematurely, having regard to the circumstances of the case, when the Opposition is withdrawn before the Hearing.  We have requested the full scale costs for preparation of the case.  To support this we wish to point out that the Opposition was withdrawn a mere 3 days before the Hearing Date.  Also, the Opponent submitted material to the Patent Office, both before the application was accepted, and during the Opposition period, not in the approved form, and in particular a list of prior art was submitted, but no copies of the actual citations were provided.  This failure to follow the Patent Regulations insofar as the submission of evidence in an Opposition Proceeding, led to the applicant, and his Attorney, being required to undertake a considerable amount of effort that would have otherwise been unnecessary if the regulations had been followed properly.

We therefore feel that the full scale amount is appropriate in the present instance, and while we have given consideration to requesting that the scale charge be varied, and the amount increased to cover the real cost, such an action will require the Office to obtain approval from the Opponent, and may well lead to a further Hearing which will further delay the grant of the patent, which is important to the patent applicant, Dr Stephens."

The attorney for the opponent (Mr Chris O'Sullivan of Griffith Hack & Co, Sydney) filed a letter stating:

"William Garrett had locus to oppose the patent application and feared grant of this patent might interfere with his work, and that it would be against the public interest.  However, he encountered an extremely aggressive reaction, in the form of a challenge of his locus and an objection to his first application for an extension of time to serve Evidence-in-Support, which cost him a substantial sum of money to deal with.  As a result William Garrett decided to take no further part in the opposition, but submitted (see our letter dated 21 March 1991) that the Commissioner should take account of a number of matters in the public interest before deciding whether or not to grant a patent.

William Garrett never lodged any Evidence-in-Support, in time of out of time, and as far as he was concerned the opposition was closed.  The fact that the Commissioner subsequently set the matter down for a hearing implies to us that the Commissioner was exercising his right to weigh the public interest before granting the application, which in the circumstances we consider to be very laudable.

Since no Evidence was lodged we submit it is nonsense for Davies Collison Cave to assert that they have been obliged to prepare a case to which our client is a party.  If they have had any case to prepare it has been purely the public interest case.

This leaves the question of the costs for receiving a Notice of Opposition, and in this regard we submit that William Garrett acted in his own and the public's interest in opposing the patent, and that he put forward a serious ground for doing so.  The fact that he was subsequently forced to withdraw for financial reasons, we submit, should not be weighed against him."

decision on costs

In actions before the Commissioner costs normally follow the event.  In this case there was no decision by the Commissioner because the opposition was withdrawn.

I note that in the recent decision of W.R.Grace & Co.-Conn. v Continental White Cap, Inc. (Patent Office decision with respect to application number 583673 dated 16 April 1992) the Assistant Commissioner observed:

"Where a party to the proceedings withdraws, it might be argued that the other party has 'won' and is thus entitled to costs. However, public interest considerations suggest that a party to proceedings should be able to withdraw without incurring a mandatory award of costs against them - costs should not be a disincentive to withdrawal.  On the other hand, a party whose actions clearly put the other party to unnecessary expense should have costs awarded against them in respect of those expenses."

I agree with this conclusion.  In the present case the opponent commenced an opposition but did not serve any evidence.  The applicant has argued that he still had to prepare a case based on material which was not served as evidence.  This is an approach which goes beyond what I would expect of a reasonable and prudent applicant.  Consequently, I consider that it is appropriate that I should award the applicant costs with regard to receiving the notice of opposition, but not with regard to preparing the case.

conclusion

I award the applicant, John D. Stephens, costs with regard to receiving the notice of opposition, but not with regard to the preparation of the case.

(S.D.BARKER)
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Patent attorneys for the opponent   :  Griffith Hack & Co, Sydney