John Lewis Swanson & Caterina Vladimira Hardy v KJ Mellett Nominees Pty Ltd and Stanley Louis Mowbray Eskell Summary

official notice

decision of a delegate of the commissioner of patents

Application : No. 614298 in the name of John Lewis Swanson and Caterina Vladimira Hardy

Title: Timing Device

Action: Opposition under section 59 of the Patents Act 1952 by KS MELLETT NOMINEES PTY LTD and STANLEY LOUIS MOWBRAY ESKELL; Opposition withdrawn; Award of costs.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. 614298 by JOHN LEWIS SWANSON and CATERINA VLADIMIRA HARDY, opposition under section 59 of the Patents Act 1952 by KJ MELLETT NOMINEES PTY LTD and STANLEY LOUIS MOWBRAY ESKELL.

background

Patent application number 614298, lodged under application number 20895/88, in the name of John Lewis Swanson and Caterina Vladimira Hardy was advertised accepted on 29 August 1991. A notice of opposition was lodged by KJ Mellett Nominees Pty Ltd and Stanley Louis Mowbray Eskell on 29 November 1991.

A statement of grounds under regulation 5.4 was lodged by the opponents on 24 December 1991. On 26 March 1992 the opponents advised the Patent Office that no evidence in support was to be served.

WITHDRAWAL OF OPPOSITION

On 29 April 1992 the attorney for the opponents (Mr Stephen G Krouzecky, patent attorney of Wray & Associates, Perth) notified the Australian Industrial Property Organisation (AIPO) that the opponents were withdrawing the opposition.

On 29 April 1992 the attorney for the applicants (Mr Dave Rainey, patent attorney of Pizzey & Company, Brisbane) notified the AIPO that they had received a facsimile transmission from the attorney for the opponent notifying them of the withdrawal of the opposition and seeking an appropriate award of costs.

On 21 October 1992 Mr Rainey again enquired about the award of costs. AIPO informed the opponent of this letter and requested the opponent make any comments on the award of costs.

On 4 January 1993 Mr Krouzecky filed a letter stating that

"... the opposition was withdrawn for commercial reasons ... the opposition was fully justified in the public interest."

DECISION

In actions before the Commissioner costs normally follow the event. The only costs specified in Schedule 8 to the Patent Regulations 1991 that the applicant is entitled to are costs associated with receiving and perusing the notice of opposition.

The opposition was withdrawn on 29 April 1992. I award costs against the opponents.

D. Herald
Assistant Commissioner of Patents

Patent attorneys for the applicant : Pizzey & Company, Brisbane
Patent attorneys for the opponent : Wray & Associates, Perth

CaseChat Overview and Summary

In this case, the applicants, John Lewis Swanson and Caterina Vladimira Hardy, had a patent application which was opposed by KJ Mellett Nominees Pty Ltd and Stanley Louis Mowbray Eskell. The dispute was centred on the opposition to the applicants' patent application number 614298 for a timing device, lodged under application number 20895/88. The opponents had formally lodged their opposition under section 59 of the Patents Act 1952, but subsequently withdrew it. The matter came before the Commissioner of Patents to determine the appropriate award of costs.

The legal issue before the court was whether the applicants were entitled to any costs following the withdrawal of the opposition by the opponents. The Commissioner needed to consider the usual practice in patent cases where costs typically follow the event, and the specific provisions in the Patent Regulations 1991 that pertain to costs in such circumstances.

The Commissioner ruled that costs normally follow the event in patent cases. The specific regulations under Schedule 8 of the Patent Regulations 1991 indicated that the applicants were entitled to costs related to receiving and reviewing the notice of opposition. Since the opposition was withdrawn on 29 April 1992, the Commissioner decided to award costs against the opponents, KJ Mellett Nominees Pty Ltd and Stanley Louis Mowbray Eskell.

The Commissioner ordered that costs be awarded to the applicants, John Lewis Swanson and Caterina Vladimira Hardy, in accordance with the provisions of the Patent Regulations 1991.

John Lewis Swanson & Caterina Vladimira Hardy v KJ Mellett Nominees Pty Ltd and Stanley Louis Mowbray Eskell

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established