Thomas & Stohr v Chappell & Yates

[1993] APO 6

official notice

decision of a delegate of the commissioner of patents

Petty Patent       :    No. 583008 in the name of RONALD HOWARD THOMAS and HELMUT STOHR

Title             :    SYMBOL DEFINITION APPARATUS

Action            :    Review of Taxation of Costs

Decision:    Issued            .  Taxation confirmed

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 583008 by RONALD HOWARD THOMAS and HELMUT STOHR, application for extension of term, objection thereto by ERIC RUSSELL CHAPPELL and JEFFREY JOHN YATES, and a review of the taxation of costs.

background

On 21 December 1991, a delegate of the Commissioner refused to extend the term of petty patent no 583008 (see 21 IPR 55, (1991) AIPC 90-798). In that decision, the hearing officer made an award of costs in the following terms:

"I award costs relating to the inter-partes hearing against the patentees."

The informants in the proceedings filed a "schedule of taxed costs" on 25 March 1991, and an amended version on 5 June 1991.

On 10 September 1991, the parties were advised of the taxation of costs, and were notified that:

"Upon perusal by the Taxing Officer, and objections by the patentee, it has been deemed that items 1, 2 and 3 of the schedule of costs as claimed are not applicable in petty patent proceedings. Accordingly, the award of costs has been reduced accordingly with the deletion of those 3 items."

On 20 Sep 1991, the informants queried the exclusion from the taxed costs of the 3 items. Subsequently the Commissioner advised the parties that he would, pursuant to regulation 22.8(4), review the taxation of costs.

Schedule 8 of the Patents Regulations 1991 provides the following items for an award of costs (with the current quantum of the 'Fee').

Item    Matter  Fee

1. Notice of opposition  $165

1. Evidence in support  $430

1. Receiving and perusing notice of opposition        $80

1. Receiving and perusing evidence in support        $185

1. Evidence in answer  $430

1. Receiving and perusing evidence in answer         $130

1. Evidence in reply  $215

1. Receiving and perusing evidence in reply  $80

1. Preparation of case for hearing  $325

1. Attendance at hearing by patent attorney

   or solicitor without counsel  $165 per hour

   or $735 per day

1. Attendance at hearing by patent attorney
             or solicitor instructing counsel  $130 per hour
     or $590 per day

1. Counsel fees  $215 per hour

   or $970 per day

The 3 items that were excluded from the taxed costs are:

1.   Notice under Section 68B(3) (item 1)

2.   Evidence in Support (item 2)

3.   Receiving and perusing Evidence in Answer (item 6)

The present review is therefore directed to determining whether these items are applicable to actions relating to the extension of term of a petty patent.

Decision

Fundamental to the present matter is the nature of proceedings under section 68B (Patents Act 1952) or sections 69 and 28 of the Patents Act 1990. This matter has been considered in Vulcan Australia Ltd v. Braemar Appliances Pty Ltd 6 IPR 143, where the hearing officer stated:

It is noted that section 68B includes reference to "informing the Commissioner of any facts" but does not contain any direct mention of "evidence". In contrast it is worth noting the specific provisions in the Act and Regulations governing opposition proceedings such as opposition to the grant of a standard patent, particularly the notice and evidence stages (see section 59 and Part XIV of the regulations).

Clearly section 68B does not provide for the same type of "opposition" to an extension of the term of a petty patent as does the Act and Regulations elsewhere in relation to an application for a standard patent, the action under sub-section 68B(3) being more accurately an informant action. This, to my mind, is clearly evident from the very provisions of section 68B.

Similarly, in Re Yamazaki Mazak Corporation 24 IPR 321, (1992) AIPC 90-879 the hearing officer stated:

"To my mind, section 28 however viewed with the other provisions concerning an extension of term of a petty patent, does not provide an "opposition" to an extension of term in the sense of oppositions as dealt with in Chapter 5 of the regulations.  It is more accurately described as an informant action.  Moreover, compared with the extensive opposition procedures in the regulations, it seems clear to me that the legislators in framing the legislation intended there to be a difference between actions involving a person informing the Commissioner of validity issues regarding a petty patent and a person opposing the grant of a standard patent under section 59.  Apart from the right of a person to file a notice under subsection 28 (1), the only other clear rights of that person ( an informant) are those provided by subsections 69 (3) and (8)."

In my view the differences between the actions involving a person informing the Commissioner of validity issues regarding a petty patent, and a person opposing the grant of a standard patent under section 59, is carried through to the wording used in schedule 8.

It follows, in my view, that it is incorrect to:

-equate a notice under 68B(3) [or a section 28 (1990 Act) notice] to a notice of opposition;

-equate material accompanying a s.68B(3) notice [or a section 28 (1990 Act) notice] to evidence in support; or

-equate material filed by the patentee in response to an invitation by the Commissioner, to "evidence in answer".

Consequently, I consider the taxation officer was correct in excluding the three items from the taxation of costs. I therefore confirm the taxation of costs issued on 10 September 1991.

D.HERALD

Assistant Commissioner of Patents

Patent attorneys for the patentee   :  Pizzey and Co, Brisbane

Patent attorneys for the informant  :  G.R. Cullen & Co., Brisbane