Pancreas Technologies Pty Ltd v the State of Queensland Acting through Queensland Health*

[2005] APO 9

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 68102/00 in the name of Pancreas Technologies Pty Ltd.

Title:          Treatment of Pancreatic Disease

Action: Requests under Sections 32 and 36 of the Patents Act 1990 by The State of Queensland acting through Queensland Health; Costs.

Decision:          Issued 9 March 2005 .

Abstract

Neither party had been wholly successful in these proceedings and each had contributed unnecessarily to its cost.  In the circumstances each party to bear its own costs.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 68102/00 by Pancreas Technologies Pty Ltd and requests under Sections 32 and 36 of the Patents Act 1990 by The State of Queensland acting through Queensland Health; Costs .

BACKGROUND

1. In my decision dated 5 January 2005 in relation to this matter (Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO1), I found that Pancreas Technologies Pty Ltd (Pancreas) and the State of Queensland (Queensland) were jointly entitled in relation to the invention described in the application and consequently that it should proceed in the names of both parties. As had been agreed I also allowed the parties time in which to file submissions on costs.

COSTS

1. It is well established that, in the absence of special circumstances, a successful party should be indemnified for the expenses they reasonably necessarily and properly incurred in prosecuting his legal rights. (Jones v North Australian Legal Aide Service Inc. 82 FLR 264 at page 265). Atkin L.J. in Ritter v Godfrey (1920) 2 KB 47 (C.A.) considered that a successful defendant could properly be deprived of his costs only if certain special circumstances were shown to exist, that is, that the successful defendant had done something connected with the institution of the case or its conduct which was calculated to occasion unnecessary litigation and expense – for example, improper conduct calculated to defeat or delay justice.

1. In somewhat similar circumstances to these in Greater Glasgow Health Board’s Application [1996] R.P.C. 207, Justice Jacob of the UK Patents Court was in a position to congratulate the parties on their “extremely civilised” behaviour in seeking to resolve the question of entitlement to an invention made by a Doctor employed by the Board. Unfortunately the same cannot be said of the current proceedings and indeed the lack of cooperation between the parties in this matter has been most notable and, perhaps not surprisingly, has extended even to the matter of the submission on costs.

1. Essentially, and while submissions were made on the contrary view, I do not in the circumstances consider either party to be wholly successful in these proceedings. Queensland principally asserted sole entitlement but in the event did not make out its case, despite a finding on joint entitlement being made. Similarly Pancreas’ assertion of sole entitlement was not successful. On this basis I am inclined not to make any award of costs. To the extent that the parties argue special circumstances my view is that both have contributed unnecessarily to the cost of these proceedings. This applies to Queensland particularly in the manner in which the proceedings were instituted but also to Pancreas in relation to the conduct of the proceedings. Nothing in the submissions made on costs causes me to reconsider this view and consequently I make no award of costs.  

CONCLUSION

I find in the circumstances that each party should bear its own costs.

P M Spann
Deputy Commissioner of Patents