Tanning Research laboratories Inc v O'Brien

Tanning Research Laboratories Inc (the applicant) sought leave to appeal to the High Court of Australia from a judgment of the Full Federal Court. The dispute concerned the applicant's entitlement to recover certain costs incurred in relation to a patent application. The applicant had sought to recover these costs from the respondent, who had been the applicant's patent attorney.

The central legal issue before the High Court was whether the applicant was entitled to recover from the respondent the costs of a certain appeal to the Full Federal Court, which had been incurred by the applicant in its own right, not as a consequence of any action or inaction by the respondent. The applicant contended that these costs were recoverable as part of the damages it claimed from the respondent for alleged negligence in handling the patent application.

The High Court unanimously dismissed the application for leave to appeal. Their Honours held that the costs of the appeal to the Full Federal Court were not recoverable as damages. The reasoning was that the applicant had incurred these costs in pursuing its own appeal, which was a separate and distinct proceeding from the original patent application process. The costs of that appeal were not a consequence of any breach of duty by the respondent, but rather a voluntary expenditure by the applicant in its own litigation. Therefore, the applicant could not claim these costs from the respondent as damages for negligence.