Stena Rederi Aktiebolag v Danyard A/S

[1996] FCA 273

CATCHWORDS

PRACTICE AND PROCEDURE - patents - costs order by Commissioner of Patents - "appeal" under Patents Act 1990 - applicability of Administrative Decisions (Judicial Review) Act 1977 - refusal by Commissioner to grant an extension of term

Patents Act 1990 ss 28, 69(7), 210(d), 211
Administrative Decisions (Judicial Review) Act 1977

George Stack v Davies Shephard Pty Ltd and GSA Industries (Australia) Pty Ltd
No QG 11 of 1996

Kiefel J  Brisbane 24 April 1996

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION  No. QG 11 of 1996

BETWEEN:

GEORGE STACK

Applicant
AND:

DAVIES SHEPHARD PTY LTD

First Respondent
AND:

GSA INDUSTRIES (AUSTRALIA) PTY LTD

Second Respondent

JUDGE MAKING ORDER:        Kiefel J.

DATE OF ORDER:  24 April 1996

WHERE MADE:  Brisbane

MINUTES OF ORDERS

THE COURT ORDERS THAT:

1. The respondents' motion be dismissed.

1. The applicant have leave to file an application seeking judicial review of the determination as to costs made on 5 January 1996 by the Deputy Commissioner of Patents, such application to be filed by 26 April 1996.

1. This application, the application for judicial review yet to be filed and the application in QG 29 of 1996 be heard together.

1. Costs be the parties' costs in each of the proceedings.

NOTE:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION  No. QG 11 of 1996

BETWEEN:

GEORGE STACK

Applicant
AND:

DAVIES SHEPHARD PTY LTD

First Respondent
AND:

GSA INDUSTRIES (AUSTRALIA) PTY LTD

Second Respondent

CORAM:Kiefel J.

DATE:24 April 1996

PLACE:Brisbane

REASONS FOR JUDGMENT

On 30 August 1991 Mr Stack filed a patent application regarding a water meter assembly and on 25 August 1993 a petty patent application based upon the former application. On 20 January 1994 petty patent 645740 was granted to him. On 19 December 1994 he applied for an extension of the term of the petty patent and the respondents here filed notices under s 28 Patents Act 1990 claiming that the petty patent was invalid on a number of grounds.

Another issue later arose and was to prove troublesome to the determination of the application for extension.  On 16 March 1994 Mr Stack executed an assignment of the petty patent to a company, GS Technology Pty Ltd, in which he and a Mr Grieves had an interest.  Mr Grieves was, he said, the co-inventor of the assembly.  By the time the application for extension came on for hearing the company had been registered as patentee.  On 5 January 1996 the Deputy Commissioner considered that a serious question
as to Mr Stack's entitlement to a patent was raised and was proper to be considered.  The difficulty, as he saw it, was that the company was said to derive its rights by the assignment by Mr Stack but that there was nothing to explain how the rights which Mr Grieves had flowed through to the company, although he appears to have acknowledged the possibility that the company may have been otherwise entitled through its relationship with Mr Grieves as an employee.  In large part his concerns appear to arise because of the extent of or paucity of the material.

The Deputy Commissioner then made directions to afford Mr Stack or the company the opportunity to file further material and otherwise reserved his decision on the application.  He went on however to award costs "against the patentee Mr Stack".  Whilst a decision on the application for extension was then said to be reserved (it was later determined on 27 February 1996 against Mr Stack and expressly on the basis of a failure to establish entitlement as patentee), the determination of 5 January 1996 posed alternative interpretations of the patent in a way which might in the circumstances be thought to be a provisional view but nevertheless one which showed that, subject to other directions, the Deputy Commissioner favoured one such interpretation. 

The respondents challenged the applicant's right to bring this appeal and they seek to have it struck out. Whilst there have been lengthy submissions regarding the question as to who may bring an appeal under s 69(7) of the Patents Act confusion has I think arisen because it has been assumed that this is such an appeal and one, as that sub-section refers "against a refusal by the Commissioner to grant an extension".  That does
not seem to me to be so, although I note that such an appeal has been brought against the later decision of 27 February 1996 (in QG 29 of 1996). What is sought to be challenged here is, firstly, the decision awarding costs against Mr Stack and, secondly, the interpretation question. As to the first of them, whilst there may be good ground for saying that this is not the proper vehicle for its determination the applicant must have an arguable case that he is in any event a person aggrieved by the award of costs made under s 210(d) against "a party" and which costs are, by s 211, recoverable as a debt. The only reason the applicant did not file an application under the Administrative Decisions (Judicial Review) Act 1977 was because of confusion as to the appropriate procedure. However, the respondents have always known of his challenge to the award of costs. There is, I consider, good reason to permit the time within which he might bring such an application to be extended so as to ensure that he has a means by which to review the determination affecting him. The application should however be separated from the "appeal" and not taken as part of it because a real question arises as to whether the appeal will be found to be competent for this purpose. Further it ought not include matters such as those referred to in paragraph 9.2 of the Notice of Motion which seeks to add another substantial application not previously referred to in this appeal and one, which if proper to raise, can no doubt be taken up on the appeal from the final decision.

That brings me to the second aspect of this "appeal".  My concerns as to just what these proceedings are meant to incorporate was at one point met by the submission for the appellant that this could be seen to be an appeal from an extension, so far as it relied upon the interpretation question, if one treated the decision of 5 January as a refusal
of the extension.  I am not convinced that is correct.  If the interpretation question is an essential part of the decision not to extend, a refusal on that ground is most likely to have arisen on the date of second decision.  In any event, whilst this matter remains to be clarified, what it does suggest is that this application (QG 11 of 1996), the application for review of the question of costs amended on 5 January 1996 (to be filed) and the appeal in QG 29 of 1996 should all be heard together.

I will then order that the respondents' motion be dismissed,  that the applicant have leave to file an application seeking judicial review of the determination as to costs made on 5 January 1996 by the Deputy Commissioner of Patents, such application to be filed by 26 April 1996 and that this application, the application for judicial review yet to be filed and the application in QG 29 of 1996 be heard together.

As to the question of costs, the respondents have not been successful on the ground taken which in my view assumed the proceedings to be of a particular nature.  Nevertheless it may yet be found that the application brought was not the correct procedure to employ.  The application for amendment or extension, to permit an application for judicial review to be made did not add much to the time taken for the hearing and it was one which had to be made.  In these circumstances I will order that the costs of and incidental to the hearing on the respondents' motion and of the applicant's application for amendment or extension abide the outcome of those respective applications and be the parties' costs in each of those proceedings.

I certify that this and the preceding 4 pages are a true copy of the reasons for judgment herein of the Honourable Justice Kiefel.

Associate

Date:24 April 1996

Counsel for the applicant:  Mr J McGill SC

Solicitors for the applicant:  Andrew P Abaza

Counsel for the respondents:  Mr P McMurdo QC

Solicitors for the respondents:  Minter Ellison

Counsel for the Commissioner of

Patents:Ms E O'Reilly

Solicitors for the Commissioner of

Patents:Australian Government Solicitor

Date of Hearing:  26 March 1996

Place of Hearing:  Brisbane

Date of Judgment:  24 April 1996