K J Deuar v Northern Riverina City Council Et Al
[1995] APO 63
•13 November 1995
official notice
decision of a dePUTY commissioner of patents
Application : No. 629841 in the name of K J Deuar
Title: Testing of Poles
Action: Costs with regard to a withdrawn application.
Decision: Issued .
Abstract: Evidence served. Difficulties in agreeing to a hearing date. Applicant filed a divisional application, and withdrew the present application.
While the filing of a divisional application which is substantially coterminous with an opposed application (with the opposed application being withdrawn) is statutorially permissible, it is contrary to both the public and the opponent’s interest in obtaining a timely resolution of the proceedings, and likely to incur further unnecessary expense to all parties. Fairness requires that the opponents be awarded their costs in the withdrawn opposition - unless there are good reasons to the contrary.
Costs awarded against the applicant.
patents act 1990
decision of a deputy commissioner of patents
Re:Patent Application No. 629841 by K J Deuar, opposition by Northern Riverina City Council et al, and costs.
background
Patent application 629841 was accepted on 15 Oct 1992. Subsequently a notice of opposition was filed jointly by five city councils. Evidence in support, in answer, and reply were duly served.
In Sept. 1994 the opponents requested the opposition be set for hearing. On 31 Jan 1995 the Commissioner wrote to the parties, suggesting a hearing in the week of 27 to 31 March 1995, and requested the parties discuss the matter and agree to a date.
The opponents sought to have the matter heard as soon as possible. The applicant sought to have the matter deferred because of overseas travel in March, and unavailability of his patent attorney in April; he sought to have the hearing set for late May.
The Commissioner wrote to the parties advising:
‘The Commissioner is not happy leaving the determination of the hearing date open until Mr Deuar returns from overseas, particularly with the indication Mr De Jonge will be unavailable in April.
‘The Commissioner expects the date to be sorted out before Mr Deuar goes overseas. In the absence of any serious attempt at negotiation between the parties the Hearing will be set down for the dates in March as previously advised.’
On 15 March, the applicant withdrew the application. Several days earlier the applicant filed a divisional application, no 14720/95. On a simple inspection, the specification of 14720/95 would appear to be identical with that of 629841 as accepted. That view is apparently also shared by the opponents.
The opponents have now sought an award of costs in the matter. The parties did not want to be heard, but made submissions, summarised as follows:
For the applicant:
Please note that the opposition was instigated by the various electricity authorities in an attempt to frustrate the commercial development of the invention. The applicant has made serious attempts to negotiate an agreement with the various opponents and on reasonable terms, but has been unsuccessful.
The applicant voluntarily withdrew his application in order to minimise further costs.
For the opponents:
the opponents adamantly refute the allegation that the opposition was filed to frustrate development of the invention - rather it was based on a conviction that the substance of the claims was well known;
no serious attempts were made by the applicant to negotiate on reasonable terms;
filing a divisional application with subsequent prosecution to acceptance is inconsistent with the asserted rationale for withdrawal viz to minimise further costs;
the filing of the divisional application creates a long period of further uncertainty for the opponents, as well as further costs arising from the potential opposition to that application; and
‘clearly the applicant’s action is a flagrant time buying exercise calculated to extend the benefits to the applicant of having potential patent rights whilst keeping our client’s position in limbo for a considerable further period, which is in direct conflict with the general public interest ..’
Decision
The opponents have sought an award of costs. Costs are awarded in accordance with Schedule 8. According to regulation 22.8(1), I cannot award costs other than those specified in Schedule 8, unless each party has had a reasonable opportunity to make a submission on the matter. As neither party has sought an award of costs other than that specified in the schedule, I shall limit my consideration to whether or not costs as specified in that schedule ought to be awarded.
The applicant, in filing a divisional application, clearly acted within the statutory rights provided by the Patents Act. But in my view the filing of the divisional application has some bearing on the award of costs in the present matter. On the one hand, the present case is not one where the applicant is conceding the validity of the opposition - he is maintaining his monopoly rights via the divisional application. On the other hand, whilst the filing of the present divisional application is within the statutory rights provided by the Act, the consequent potential delay of several years is not consistent with the public interests of providing reasonable certainty, nor with efficient administration of the patent system. In particular, it imposes a burden on the opponents of monitoring the status of that divisional application, and the further costs associated with opposing that application in the future.
It is my view that while the filing of a divisional application which is substantially coterminous with an opposed application (with the opposed application being withdrawn) is statutorially permissible, it is contrary to both the public and the opponents’ interest in obtaining a timely resolution of the proceedings, and likely to incur further unnecessary expense to all parties. Accordingly, in such situations I consider fairness requires that the opponents be awarded their costs in the withdrawn opposition - unless there are good reasons to the contrary. In the present case I see no reasons why costs ought not be awarded against the applicant.
Conclusion
I award costs in accordance with Schedule 8 against the applicant, K J Deuar.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : Cullen & Co, Brisbane
Patent attorneys for the opponent : Shelston Waters, Sydney
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