Plantagenet Holdings Pty Ltd v NATURA -MIN Pty Ltd

[1997] APO 14

official notice

decision of a delegate of the commissioner of patents

Application  :          Nos.659073 and 659074 in the name of PLANTAGENET HOLDINGS PTY LTD.

Title:          “Improved Catalyst” and “Improved Conditioning Composition”.

Action:          Notices under subsection 28(1) filed by NATURA -MIN PTY LTD and an award of costs.

Decision:          Issued            .

Abstract

An earlier decision found defects in both specifications and PLANTAGENET is proposing amendments to overcome these defects.  NATURA’s case in support of its section 28 notices was to some extent on relied in finding the petty patents invalid.  This prevented two invalid petty patents from remaining on the register.  Costs awarded against PLANTAGENET.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent Nos.659073 and 659074 by PLANTAGENET HOLDINGS PTY LTD, notices under subsection 28(1) filed by NATURA -MIN PTY LTD and an award of costs.

background

Plantagenet Holdings Pty Ltd (PLANTAGENET) filed applications to extend the terms of its petty patents nos.659073 and 659074.  Natura-Min Pty Ltd (NATURA) filed notices under section 28(1) about each petty patent.

I heard the applications for extension of term and the section 28 notices and I issued a written decision on 27 February 1997.  I concluded both petty patents are invalid.  I allowed PLANTAGENET one month to propose amendments to correct the defects in the specifications which are identified in the decision.  On 13 March 1997 PLANTAGENET filed proposed amendments to the specifications of both petty patents.  NATURA has until 26 May 1997 to comment on these proposed amendments.

I also allowed both parties one month from the date the decision issued to file written submissions on an award of costs.  Both parties filed written submissions within the time allowed.

DECISION

NATURA submits costs should go with the event, both extensions being refused if PLANTAGENET does not propose amendments to correct defects or if any amendments proposed are ultimately refused.  This submission seems to suggest I should delay awarding costs until the Commissioner finally decides whether or not to extend the terms of the petty patents.

I think such a delay may be appropriate if not all the present costs are directly associated with appearing at the hearing on 17 September 1996.  Neither NATURA or PLANTAGENET submits I should award costs other than those specified in schedule 8.  Therefore I consider the only relevant costs are those directly associated with appearing at the hearing on 17 September 1996.  Consequently I will consider an award of costs for this hearing.

PLANTAGENET’s argues none of the defects in the specifications identified in the decision resulted from NATURA’s evidence or submissions.  It does however concede it has been required to propose amendments to the specifications.  PLANTAGENET submits there should be no award of costs such that each party should bear its own costs.

I did not identify some of the defects in the specifications as a result of NATURA’s evidence or submissions.  For example Mr Goodhew did not raise the issue of whether claims 1 and 2 in the specification of petty patent no.659074 define a patentable combination.  But I did identify some of the defects in both specifications as a result of NATURA’s submissions.  For example Mr Goodhew argued the claims of petty patent of petty patent no.659073 define a mixture which is a mere collocation of integers and I found this to be the case.  Therefore to some extent I relied on NATURA’s case in support of its section 28 notices in finding the petty patents invalid.

PLANTAGENET is proposing to amend the specifications to overcome the defects identified in the decision.  The terms of the petty patents may have been extended with the unamended specifications if the Commissioner had not considered the section 28 notices.  Therefore NATURA‘s section 28 notices may have prevented two invalid petty patents from remaining on the register.

I consider the above circumstances mean I should award costs against PLANTAGENET.

M. Kendall
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :  Wray & Associates

Patent attorneys for the informant  :  Pizzeys.