Potter v Dickenson - [1905] HCA 26

DICKENSON

ON APPEAL FROM THE SUPREME COURT OF Patents Act 1890 (Victoria), (No. 1123), secs. 15, 28, 29, 33-Application for Patent

-Opposition to issue-Award of costs by Commissioner-~Right of appeal tolaio officer and from him to Supreme Court-Meaning of " costs' - Employment of MELBOURNE,

Patent Agent- Witnesses-Qualifying fees-Rules of the Supreme Court 1884 August 16,

(Victoria), Order L.V.V., r. 27 (9).

Semble, an appeal does not lie to the law officer from an order made by the Commissioner of Patents under sec. 29 (3) of the Patents Act 1890 (Victoria), for the payment by one party to an application for a patent of the other party's costs,

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Even if such an appeal does lie, no appeal lies from the law officer to the Supreme Court.

The word "costs" in sec. 29 (3) of the Patents Act 1890 includes the reason- able expense incurred by a party in employing a patent agent to conduct proceedings before the Commissioner of Patents for him, in obtaining evidence, and in securing the attendance of witnesses.

Fees to scientific witnesses for qualifying themselves to make affidavits or to give evidence may properly be allowed by the Commissioner of Patents when fixing the amount of such costs.

Decision of the Supreme Court, In re Dickenson's Application for Letters Patent; Potter v. Dickenson, (1905) V.L.R., 235; 26 A.L.T., 124, affirmed.

APPEAL from the Supreme Court.

Francis Marshall Diekenson applied to the Commissioner of Patents of Victoria for a patent in respect of a certain invention. The application was opposed by Charles Vincent Potter, but was granted. The applicant was represented throughout the hearing by Arthur Otto Sachse, a patent agent. An application was then made to the Commissioner for an order that the objector should pay the applicant's costs, and a statement in the form of a bill of costs and disbursements of Sachse was submitted to the Commis- sioner, amounting to £860 15s. 8d., being £405 8s. 8d. for Sachse's costs and £455 7s. for disbursements. This bill of costs included the following items (inter alia) :-

To instructions to defend the application against

such opposition To lengthy search in Patent Office records as to

cases which anticipated the broad claim of Potter, and carefully studying cases thought to have bearing on questions To attendance on experts in Sydney and Melbourne,

and attending at experiments made by them for purpose of illustrating differences in appli- cant's process and opponent's process, and numerous attendances on experts in connection with this case not already charged for, also attendances at Public Library and elsewhere looking up record of inventions bearing on the subject-matter in dispute. Also examining VOL. II.

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various authorities on the matter, engaged self and clerks almost continuously six months To attendances at hearing first day, including clerk

of papers, engaged whole day Attendances at hearing remaining seven days, at 15

guineas per day, including clerk of papers on each occasion The disbursements included :-

Paid Mr.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Potter v Dickenson

Details

AGLC: Potter v Dickenson [1905] HCA 26
Case: [1905] HCA 26
Decision Date: 18 August 1905

CaseChat Overview and Summary

The parties to this proceeding were the applicant for a patent, Potter, and the opponent to the grant of that patent, Dickenson. The dispute concerned the award of costs by the Commissioner of Patents following an opposition to a patent application. The matter came before the Supreme Court of Victoria on appeal.

The central legal issue before the Court was the interpretation of the word "costs" in the context of patent opposition proceedings and the extent to which the Commissioner's discretion in awarding costs was reviewable. Specifically, the Court had to determine whether the costs of employing a patent agent and the qualifying fees for witnesses were recoverable as part of the costs awarded.

The Court considered the provisions of the Patents Act 1890 (Victoria) and the Rules of the Supreme Court 1884 (Victoria), particularly Order LXV, rule 27(9). Griffith C.J., in delivering the judgment of the Court, held that the term "costs" in patent proceedings should be interpreted broadly to include all reasonable expenses incurred in prosecuting or defending the opposition. His Honour reasoned that the Commissioner had the power to award such costs as were necessary for the proper conduct of the proceedings, and that this included the fees paid to a patent agent for their expertise and the qualifying fees for witnesses who provided essential evidence. The Court affirmed the principle that the Commissioner's discretion in awarding costs was not unfettered and that the rules of the Supreme Court regarding costs were applicable.

The Court allowed the appeal in part, finding that the costs of the patent agent and the qualifying fees for witnesses were properly allowable. The specific orders regarding the quantum of these costs were remitted for further determination.

Orders