Razer Industries Pty Ltd v Robert R. Law (Corrected Version) - [2010] APO 8

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 784051 in the name of Robert R. Law

Title: Conveyor Belt Cleaner

Action: Objection by Razer Industries Pty Ltd to a direction under regulation 22.21

Decision: Issued 27 May 2010
Abstract

The matter for determination was whether it was reasonable for the Commissioner to direct that a copy of an application for a licence be served on a person who did not have a direct interest in the patent.
Concluded that it is reasonable for the Commissioner to direct that a copy of an application for a licence be served on a person whose rights or interests would be affected by the decision. It is also reasonable to serve a copy of the application on a person who could be aggrieved by the decision.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 784051 by Robert R. Law, and an objection by Razer Industries Pty Ltd to a direction under regulation 22.21

DECISION

I direct that Razer Industries Pty Limited and Tuffstuff (Qld) Pty Limited each serve a copy of their respective Application for a Licence to Exploit an Invention on each other.
The costs of Tuffstuff (Qld) Pty Ltd are awarded against Razer Industries Pty Limited. I make no award of costs in relation to Mr Law.
REASONS FOR DECISION
Background
Patent number 784051 in the name of Robert R. Law ceased due to failure to pay the sixth, seventh and eighth renewal fees. The patent was subsequently restored under section 223.
On 23 December 2009, Tuffstuff (Qld) Pty Limited (hereafter referred to as Tuffstuff) applied for a licence under regulation 22.21. On 18 February 2010, Razer Industries Pty Limited (hereafter referred to as Razer) applied for a licence under regulation 22.21. Both applications have been opposed by Mr Law. On 4 March 2010, Tuffstuff requested that the Commissioner direct Razer to serve a copy of their application on Tuffstuff. The Commissioner proposed the following direction:
Razer Industries Pty Limited and Tuffstuff (Qld) Pty Limited each serve a copy of their respective Application for a Licence to Exploit an Invention on each other.
Razer indicated that they disagreed with the direction, and all parties asked to be heard on the direction.
The hearing was held in Canberra on 3 May 2010. Mr Neil Murray, assisted by Dr Simone Mitchell, appeared on behalf of Razer. Ms Phoebe Arcus appeared on behalf of Tuffstuff. Mr Julian Cooke assisted by Mr Simon Williams and Mr Rohan Singh appeared by telephone on behalf of Mr Law. The submissions on behalf of Tuffstuff included a statutory declaration by Amy Joy Griffin.
The law
The Patents Act provides that a ceased patent may be restored pursuant to section 223. However, subsection 223(9) of the Act provides for protection or compensation of persons who exploited the patent during the time that the patent was ceased:
Where the Commissioner grants:
(a)an extension of…

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 Razer Industries Pty Ltd v Robert R. Law (Corrected Version)

Details

AGLC: Razer Industries Pty Ltd v Robert R. Law (Corrected Version) [2010] APO 8
Case: [2010] APO 8
Decision Date: 27 May 2010

CaseChat Overview and Summary

The decision in Razer Industries Pty Ltd v Robert R. Law (Corrected Version) involved an objection by Razer Industries Pty Ltd to a direction issued by the Commissioner of Patents, under regulation 22.21, that required a copy of an application for a licence to be served on another party. The dispute arose from a patent application filed by Robert R. Law, which had lapsed and was subsequently restored. Tuffstuff (Qld) Pty Limited and Razer Industries Pty Ltd had both applied for a licence under regulation 22.21, and Tuffstuff requested that the Commissioner direct Razer to serve a copy of their application on Tuffstuff. Razer objected to this direction and all parties were heard on the matter.

The key legal issue the court had to determine was whether it was reasonable for the Commissioner to direct that a copy of an application for a licence be served on a person who did not have a direct interest in the patent, but whose rights or interests would be affected by the decision. The court examined the relevant provisions of the Patents Act and the administrative law principles that govern standing to be heard in such matters.

The court concluded that it was reasonable for the Commissioner to direct the service of a copy of an application for a licence on a person whose rights or interests would be affected by the decision, including those who could be aggrieved by the grant of a licence. This interpretation of standing was found to be consistent with administrative law principles and the broad interpretation of "aggrieved" in relevant statutes. The court also considered the commercial interests of Tuffstuff and Razer, which were sufficient to make each party aggrieved by the grant of a licence to the other.

The court found that Razer's objection to the direction was not sustainable and awarded the costs of Tuffstuff against Razer. As Robert R. Law did not seek or oppose the direction, the court made no award of costs in relation to him.

Orders