Nippon Zeon Co. Ltd v Health Research Inc

[1995] APO 46

official notice

decision of a DEPUTY commissioner of patents

Application        :    No. 605567 in the name of Nippon Zeon Co. Ltd

Title:    Recombinant Avipoxvirus

Action:    Costs in an opposition by Health Research Inc. following withdrawal of the application.

Decision:    Issued            .

Abstract:    Costs awarded against the applicant. Fees in respect of the opponent's requests for extensions of time, taxing of costs, and the present exercise of the Commissioner's discretionary powers, not awarded.

patents act 1990

decision of a DEPUTY commissioner of patents

Re:Patent Application No. 605567 by Nippon Zeon Co. Ltd, and costs in an opposition by Health Research Inc following withdrawal of the application

background

The present matter solely concerns an award of costs. The opponent filed a notice of opposition under s.59, on 17 April 1991. The evidence in the opposition was completed on 11 Feb. 1994, with the service of evidence in reply. In July 1994 advice was received that the parties were discussing a settlement, and on 3 November 1994 the applicant withdrew the application.

On 18 November, the opponent sought a taxed bill of costs, in the amount of $1880; as there had been no decision in respect of the matter, the opponent subsequently requested the exercise of the Commissioner's discretionary powers to make an award of costs, and increased the bill to $2380 to cover the cost of this request. On 1 February 1995 the applicant advised that they did not oppose an award of costs, but objected to the amount of costs claimed. In particular, they objected to the claim for fees for requesting extensions of time by the opponent, and to the fee for requesting the exercise of discretionary powers in the present matter; they indicated an acceptance of taxed costs in the sum of $1010.

On 16 Feb 1995:

-the parties were advised that if a decision to award costs is required, the fee for the exercise of the Commissioner's discretionary powers under Reg 22.22 is payable, and awardable in costs - but if the parties settle without the need for that decision, that fee (which had been paid by the opponent) was refundable;

-the attention of the parties were drawn to the decision of Prudhoe v ICI 27 IPR 100, (1993) AIPC 90-986. That decision held that, in a situation like the present, a party was not entitled to claim costs in respect of their seeking extensions of time to serve evidence.

On 3 May the Commissioner was advised that the parties had not reached any agreement on costs. Consequently I shall now proceed to make a decision with regard to costs.

Decision

Having regard to the withdrawal of the application, and the concession by the applicant that costs might be awarded against them, I award costs against the applicant. In respect of the costs to be awarded:

-following Prudhoe v ICI I do not award costs in respect of the opponent's requests for extensions of time to serve evidence in support ($600), nor for evidence in reply ($205).

-Excluding the fee for taxing costs and for requesting the exercise of the Commissioner's discretionary powers, the amount awardable is the amount that the applicant indicated on 1 February 1995 as being properly payable. Both parties were informed on 16 February 1995 of the Prudhoe v ICI decision. It seems to me that the need for costs to be formally taxed, and for the present decision, has arisen solely from the opponent's persistence in seeking costs in respect of their extensions of time. In these circumstances I do not think it appropriate to award the costs in respect of the present exercise of the Commissioner's discretionary powers, nor the fee for taxing costs, against the applicant.

Accordingly I award costs in the sum of $1010 against the applicant. That figure is the figure claimed in the opponent's bill of costs submitted on 14 Dec. 1994, exclusive of the sums for extensions of time, taxing, and the fee for the present decision.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney