Super Internet Site System Pty Ltd v Sensis Pty Ltd - [2006] APO 27

ABSTRACTS OF DECISIONS

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application : No. 2001237130 in the name of Super Internet Site System Pty Ltd.

Title : On-line Geographical Directory

Action: Opposition by Sensis Pty Ltd and costs in proceedings where an application is withdrawn.

Decision: Issued 16 August 2006 .
Abstract

Award of costs where the patent application was withdrawn before hearing of the opposition and after filing of a divisional application.

Decided that the decision in Stack v Commissioner of Patents [1999] FCA 148 did not preclude an award of costs where proceedings had been terminated before hearing, such as by withdrawal of the patent application or of the opposition. In considering the relevant principles developed by the Courts (Aussie Red Equipment Pty Ltd v Antsent Pty Ltd [2001] FCA 1641, Kiama Council v Grant [2006] NSWLEC 96) found that it will often be appropriate for the Commissioner to conclude that the party withdrawing has “effectively surrendered” to the other and an award of costs will be made, save any consideration related to the conduct of the parties. However an award of costs in those circumstances is not automatic and reference must be made to the particular circumstances of each case.

An award of costs over the amount applicable under Schedule 8 of the Patents Regulations was considered appropriate in the present matter based on the conduct of the applicant and that the opponent has been unreasonably thwarted in its attempt to challenge the validity of the applicant’s patents rights, now faces a considerable period of uncertainty in the resolution of those rights and has incurred some level of additional and unnecessary costs in the conduct of the proceedings.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. No. 2001237130 in the name of Super Internet Site System Pty Ltd, opposition by Sensis Pty Ltd and costs in proceedings where application withdrawn.

BACKGROUND

1. The application in this matter was advertised accepted on 24 February 2004 and a notice of opposition filed by Sensis Pty Ltd on 24 May 2005. Evidence in support of the opposition was served but, despite an extension of time being granted, evidence in answer was not forthcoming. The Commissioner therefore set the opposition for hearing on 22 February 2006. The applicant Super Internet Site System Pty Ltd however filed divisional application 2005244579 on 16 December 2005 and withdrew its patent application on 23 December 2005 with the effect that the hearing was cancelled.

2. On 17 January 2006 the opponent wrote to the Commissioner pointing out the circumstances referred to above and requesting that the hearing set down for 22 February be reinstated as a hearing on costs. Instead a hearing was set down for later date and subsequently the opponent indicated it was seeking “full costs” which it says exceeds $50,000. The applicant in turn submitted that it offered to pay costs of $1,495 according to the scale which apparently had been rejected.…

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.

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Details

Case: [2006] APO 27
Decision Date: 16 August 2006

CaseChat Overview and Summary

In Super Internet Site System Pty Ltd v Sensis Pty Ltd, the court was asked to decide whether the Commissioner of Patents had the power to award costs when a patent application was withdrawn before the opposition was heard. The case involved an application for a patent by Super Internet Site System Pty Ltd, which Sensis Pty Ltd opposed. Super Internet Site System withdrew its application before the opposition hearing, leading to Sensis seeking costs for the proceedings. The legal issue was whether the Commissioner could award costs under the Patents Act 1990 when the proceedings were discontinued before a hearing. The court concluded that the Commissioner did have the power to award costs in such circumstances, despite previous interpretations suggesting otherwise. It reasoned that "proceedings before the Commissioner" referred to the entire contest between the parties, not merely the hearing itself. The court found that Super Internet Site System had "effectively surrendered" to Sensis, and awarded costs above the statutory scale, considering the conduct of the applicant in filing a divisional application. The court awarded $4,495 in costs for the opposition proceedings but made no award for the costs hearing.

This case clarifies that the Commissioner can award costs when proceedings are discontinued before a hearing, provided the circumstances warrant it. The decision also highlights the importance of considering the conduct of the parties and the broader context of the litigation in determining an appropriate award of costs.

Orders