John Edward Vines v John McDonald - [2005] APO 25

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2002951031 in the name of John Edward Vines

Title: Underpants for the Treatment of Pelvic Floor Muscles and/or Bladder

Action: Review of taxation of costs awarded in respect of an action under section 36 of the Patents Act 1990 by John McDonald

Decision: Issued 6 May 2005.
Abstract

The patent applicant was successful in a matter under section 36 of the Patent s Act and costs were awarded in his favour. Costs were originally taxed at $2,495. The section 36 applicant sought review of taxation under regulation 22.8(4).
A section 36 matter is not an opposition. The practice and procedure for a section 36 matter are determined by the Commissioner under regulation 22.24 and does not proceed under chapter 5 of the regulations. Items 1 to 10 of Part 1 of Schedule 8 do not apply to a section 36 matter.
Where a party relies on written submissions in lieu of attending a hearing, they may be entitled to costs for preparation for a hearing, depending on the circumstances. In this case the patent applicant was considered to have prepared for the hearing and was allowed costs under Item 11 of Part 1 of Schedule 8.
Costs of $360 were allowed and certified.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002951831 by John Edward Vines; and a review of taxation of costs awarded in respect of an action under section 36 of the Patents Act 1990 by John McDonald

BACKGROUND

John McDonald filed a request for a declaration by the Commissioner that he was entitled to the invention described in lapsed provisional application 2002951831. A delegate of the Commissioner determined that McDonald was not an inventor of the described invention but that the applicant named on the patent request, John Edward Vines, was the inventor. The section 36 request was unsuccessful. In his decision, the delegate awarded costs against McDonald. See John Edward Vines v John McDonald [2004] APO 33 (30 November 2004).
On 10 January 2005, Vines requested a taxation of costs under sub-regulation 22.8(2A). In a letter from the Opposition Officer dated 12 January 2005, McDonald was given a period of 21 days to object to the application for taxation of costs. McDonald did not file any objection to or comment on the amount claimed. Costs were therefore taxed at $2495, the amount claimed by the patent applicant.
The parties were advised on 9 February 2005 that:
“Costs have been taxed at Two Thousand Four Hundred and Ninety-five Dolllars ($2495) and will be so allowed and certified at the expiration of twenty one (21) days.”
Although McDonald did not take the earlier opportunity given him by the 12 January 2005 letter to object to the amount being taxed, he filed a request on 10 February 2005 for a review of taxation under sub-regulation 22.8(4).
The parties both provided written submissions in relation…

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: [2005] APO 25
Decision Date: 6 May 2005

CaseChat Overview and Summary

In the matter of a review of taxation of costs awarded in respect of an action under section 36 of the Patents Act 1990, the applicant, John Edward Vines, was successful in his claim against John McDonald. The delegate of the Commissioner of Patents reviewed the taxation of costs originally awarded in the sum of $2,495. McDonald had not objected to the amount claimed by Vines and costs were therefore taxed at that amount. However, McDonald subsequently sought a review of the taxation of costs under regulation 22.8(4). The primary issue before the delegate was whether items 3 to 10 of part 1 of Schedule 8 of the Patents Regulations were allowable costs in the context of a section 36 matter. Additionally, the delegate considered whether Vines was entitled to claim costs for preparation of a case for hearing, having relied on written submissions in lieu of appearing at the hearing. The delegate found that items 3 to 10 were not allowable costs as they related to documents and evidence set out in chapter 5 of the Patents Regulations and did not apply to actions under section 36. However, Vines was entitled to claim costs for preparation of a case for hearing, as he had prepared written submissions and indicated that a representative would be available if required. The delegate concluded that costs should be allowed in the amount of $360.

The delegate's reasoning was that a review of taxation is restricted to the correctness of the taxation in the context of the award of costs made in the decision which awarded costs, and not a forum to review the award of costs itself. The delegate also considered that items 1 to 10 of part 1 of Schedule 8 refer to documents and evidence set out in chapter 5 of the Patents Regulations and do not apply to actions under section 36. The delegate further found that Vines was entitled to claim costs for preparation of a case for hearing, as he had prepared written submissions and indicated that a representative would be available if required. In the delegate's view, the preparation of written submissions for the hearing and the availability of a representative of the patent applicant if required was indicative of the patent applicant's preparation for the hearing.

In conclusion, the delegate determined that items 3 to 10 of part 1 of Schedule 8 were not allowable costs, but that item 11 of that part was an allowable cost. Costs were allowed in the amount of $360. A certificate of costs for that amount would now issue.

Orders