Vahid Vakiloroaya v HVPS Holdings (Pty) Limited
[2022] APO 10
•22 February 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vahid Vakiloroaya v HVPS Holdings (Pty) Limited [2022] APO 10
Patent Application: 2017243880
Title:An air conditioning system
Patent Applicant: HVPS Holdings (Pty) Limited
Requestor:Vahid Vakiloroaya
Delegate:Felix White
Decision Date: 22 February 2022
Hearing Date: 9 November 2021, by Videoconference
Catchwords: PATENTS – s36 – request for declaration on entitlement – deed of agreement alleged to have been induced by misrepresentation – Commissioner has no power to give effect to contract rescission when financial consideration has been exchanged – request for indemnity costs – “Calderbank” offer – insufficient reasoning in Calderbank offer – no award of costs.
Representation: Patent attorney for the applicant: Chris Schlicht & Melissa Wingard, Phillips Ormond Fitzpatrick
Solicitor for the requestor: Charles Stanford
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017243880
Title:An air conditioning system
Patent Applicant: HVPS Holdings (Pty) Limited
Date of Decision: 22 February 2022
DECISION
The s36 request is dismissed. Even if I could have been satisfied that Dr Vakilororoaya was the sole eligible person, I would not be able to make the declaration sought. The application will continue in the name of HVPS Holdings (Pty) Limited.
REASONS FOR DECISION
Australian patent application 2017243880 (“The application”) in the name of HVPS Holdings (Pty) Limited (“The Applicant” or “HVPS”) is the national phase entry of PCT/AU2017/050279 (published as WO2017/165924) which claims priority from Australian provisional application 2016901211, filed on 1 April 2016 (which for consistency with the following narrative will be referred to as “P3”).
The application entered the national phase on 31 October 2018. On 22 February 2020, Dr Vahid Vakiloroaya (“The Requestor”) filed a request seeking a declaration from the Commissioner under s36(1) of the Patents Act 1990 (“The Act”), that he is an eligible person and the Applicant is not an eligible person in respect to the application.[1] The request was accompanied by a declaration (“Vakiloroaya #1”) and 30 exhibits (VV-1 to VV-30), which constituted the Evidence in Support.
[1] I note that the request filed on 22 February 2020 cites the WO publication of the application, however it is unambiguous that the request is directed to the corresponding Australian patent application.
In brief, the grounds of the request were that the Requestor is the named inventor of the application, and that the application was transferred from the Requestor to the Applicant based on a fraudulent misrepresentation by a Mr Steven Heaton (at that time the CEO of HVPS) regarding a forged purchase order for several thousand units of the air conditioning system that is the subject of the application.
Although, as it will become apparent, the precise details of the alleged fraudulent misrepresentation are not the decisive factor in this decision, I will provide a chronology of my understanding of the events leading up to and following the filing of P3 later in this decision.
The Applicant advised the Commissioner on 25 March 2020 that it intended to defend its entitlement to the application. Evidence in Answer was filed on 1 July 2020, which consisted of a declaration by Geoffrey Frankish (“Frankish #1”) and 10 exhibits (GF-1 to GF-10).
Evidence in Reply was filed on 1 August 2020, consisting of a second declaration by the Requestor (“Vakiloroaya #2’) and 31 exhibits (RM-1 to RM-31). I note that exhibit RM-28 was the subject of a confidentiality direction under Reg 4.3(2)(b), but was not relied on for this decision.
After a delay due to a dispute regarding the above confidentiality issue, the present s36 matter was set for hearing on 9 November 2021. The Applicant filed written submissions on 2 November 2021. The Requestor filed submissions in response on 5 and 8 November 2021, the latter accompanied by three more exhibits (VP-1 to VP-3).
At the hearing, the Requestor initially requested that the proceedings be stayed on the grounds that the Requestor’s solicitor had only recently been engaged and had not had a chance to become familiar with the case. I denied this request, as the Requestor (although self-represented up to that point) had been notified of the need for a hearing on 4 August 2020 and advised of the hearing date on 7 July 2021 and had had ample opportunity to obtain representation if they wished.
At the hearing I noted to the parties that the Applicant had not had a chance to reasonably consider VP-1 to VP-3, and that if the parties wished to file further evidence after the hearing it was open to them to do so. Under principles analogous to Reg. 5.23, if I considered that late filed evidence would affect my decision one way or the other then I would give the other party an opportunity to respond.
10.After the hearing, both parties made further submissions as to costs on 23 November 2021. The Requestor filed further submissions and 15 more exhibits (MF-1 to MF-15) on 7 December 2021, and the Applicant filed submissions in response on 22 December 2021.
11.As will become evident, none of the late filed evidence was determinative for this decision so there was no need to provide further opportunities to respond.
Summary of events leading to the present dispute
12.The Requestor is a Senior Lecturer at Western Sydney University and has a significant track record of publications and research awards in the field of air conditioning.[2]
[2] Vakiloroaya #1 at 3-5
13.The Requestor was contacted in January 2014 by a Steven Heaton (“Heaton”).[3] After business discussions,[4] the Requestor and Heaton founded HVPS on 23 May 2014 as well as a second company, Independent Products Pty Ltd. Independent Products Pty Ltd was intended to carry out manufacturing and marketing the air conditioning technology whereas HVPS would own the intellectual property.[5]
[3] Vakiloroaya #1 at 10
[4] The Requestor submitted a large number of emails between himself and Heaton which make up a significant proportion of the large volume of exhibits in this case. It can be difficult to follow email conversations without knowing the context in which they were taking place, and it seems likely that these are just a subset of the Requestor’s email correspondence. I appreciate the effort that the Requestor has gone to, to substantiate the narrative in his declarations.
[5] Frankish #1 at 17
14.The Requestor and Heaton[6] entered into a commercial deed[7] dated 7 April 2014 which included a promised monthly payment of $12,000 for two years subsequent to the transfer of “all patents to the nominated entity” of Heaton.[8] In Appendices A and B to the 2014 deed,[9] executed between the Requestor and Heaton on 5 January and 8 March 2015 respectively, two patents were specified for transfer: Australian provisional applications 2014901352 and 2014901596. Annex A also had a clause specifying that
[6] In the deed, Heaton is referred to as “Independent Products ABN 28 611 019 249” which is his sole trader registration and not to be confused with Independent Products Pty Ltd (ACN 169 714 032)
[7] VV-6
[8] VV-6 at 3.
[9] VV-7. Annex D is also found as GF-4.
“Party A [The requestor] agrees that any and all future patents, designs, works theories, research or developments created by Party A from the date of the original signed deed of agreement with Party B [Heaton] will be transferred into the company HVPS holdings Pty Ltd”
15.The Requestor and Heaton were involved in separate negotiations for a separate piece of intellectual property, referred to as “the 2012 patents” on and around May-July 2015.[10] This appears to relate to technology developed before the original deed but not covered in Appendices A and B. From VP-1 to 3 it is reasonable to infer that neither the Requestor nor Heaton considered that these “2012 patents” fell within the scope of “future patents” mentioned in Appendix A.
[10] Vakiloroaya #1 at 17, VP-1 to 3. I assume that this discussion referred to as yet unfiled patent applications, as IP Australia records show that the Requestor had not filed any provisional applications prior to 2014.
16.Around August-September 2015, Heaton made representations to the Requestor[11] that BHP Billiton had expressed interest in purchasing large numbers of his air conditioning units. The Requestor attested that Heaton had sent him a purchase order, purportedly from BHP, to the value of $148,500 on 31 August 2015.[12] Heaton made similar representations to prospective investors in HVPS.[13] Heaton would continue to make representations to the Requestor regarding his negotiations with BHP until December 2016.[14]
[11] Vakiloroaya #1 at 18-23, VV-9, VV-15
[12][12] Vakiloroaya #1 at 20, Vakiloroaya #2 at 20. The purchase order (undated) was attached as VV-11 and RM-4.
[13] Frankish #1 at 26
[14] Vakiloroaya #1 at 29-30, VV-18, VV-19
17.P3 was filed in the name of HVPS on 1 April 2016. The Requestor and Heaton agreed, in Appendix D to the 2014 deed,[15] to add provisional application 2016901211 (P3) to the list of patents and to increase the payments to the Requestor including a promised payment of $150,000 by the end of 2016.[16]
[15] Negotiations on this Annex had apparently begun in 2015 (it was dated 22 December 2015) but according to Vakiloroaya #1 at 20 and VV-10 it was finalised and signed on 15 April 2016. This is consistent with its inclusion of the application number of P3, which had not yet been filed at the time it was first drafted.
[16] Annex D Condition 4
18.The 2014 Deed and all annexes were superseded by a Deed, executed on 19 September 2016 between the Requestor, Heaton, HVPS and Independent Products Pty Ltd.[17] Relevant to this decision, the 2016 Deed sets out separate considerations for remunerating the Requestor in relation to the Initial Patents ($240,000 plus equity[18]) and P3 ($215,000 p.a.[19] with a $150,000 prepayment due by 31 December 2016[20] plus equity). The 2016 Deed also included provision for the Requestor to have right of first refusal to repurchase the IP rights in the event of liquidation or receivership of HVPS.[21]
[17] VV-17 (“the 2016 Deed”)
[18] 4.1 of the 2016 Deed
[19] 4.2.3 of the 2016 Deed
[20] 1.1.49-50 and 4.2.2 of the 2016 Deed
[21] Frankish #1 at 36.iv, 3.10 of the 2016 Deed
19.The Requestor was paid $150,000 by the end of 2016, consistent with both Annex D and the 2016 Deed.[22] Ongoing monthly payments would be made by HVPS to the Requestor according to the 2016 Deed until May 2017 when financial stresses arising from Heaton’s misrepresentations resulted in variations to the payment schedule.
[22] Frankish #1 at 40, Vakiloroaya #2 at 45
20.P3 was formally assigned to HVPS, for one dollar, on 19 January 2017.[23]
[23] VV-20
21.Mr Frankish attests that an email, detailing that Heaton’s representations regarding BHP were false and that documents had been fabricated, was sent from the CEO of HVPS on 27 April 2017.[24] Heaton was terminated as a director of HVPS on the same day and shareholders of HVPS, including the Requestor, were informed on or about May 9 2017.[25] The Requestor attests that he became aware of the fraudulent behaviour around May 2017.[26] Heaton’s misrepresentations were reported to ASIC on 20 September 2017.[27] I note that at the time of writing, Heaton is facing fraud charges before the County Court of Victoria, which are currently adjourned until 8 March 2022.[28]
[24] Frankish #1 at 41-42
[25] Frankish #1 at 43-44
[26] Vakiloroaya #2 at 108. I note that Vakiloroaya #1 at 32 suggested that the Requestor first became aware of the fraud on 25 September 2017, however the May date is consistent with Mr Frankish’s evidence.
[27] RM-25
[28] retrieved 7 February 2022. See Editor’s Note 7
22.The Applicant (HVPS) went into administration on 21 May 2019.[29] Around this time a number of disputes had arisen between the Requestor and the Applicant. The bulk of these appear to be unrelated to P3. I have evidence on file relating to P3 that:
[29] VV-26
·The Requestor’s solicitor wrote to HVPS on 9 October 2018 stating that the Requestor was “entitled to certain declarations including setting aside the Deed, return of the (remaining) third patent to him …”[30]
[30] RM-19 at p.4
·The Requestor contacted IP Australia’s “MDB Fraud Control” on 17 December 2018[31] and described their situation with respect to a patent transferred by misrepresentation. They received advice on 21 December 2018 that their options included: court proceedings followed by a direction under s113 if successful; or action under s36 as an entitlement dispute.
[31] RM-26. MDB-Fraud-Control is an IP Australia email account. Vakiloroaya #2 at 114 states that Requestor “called” it, which is clearly erroneous. However it is clear from RM-26 that the Requestor discussed his situation with the Director Audit, Assurance, Attorney Registration and Ministerial Support at IP Australia, who duly provided advice in reply.
·The Requestor contacted the Applicant’s administrators on 31 May 2019 stating that due to breaches “the deed of agreement signed on 19 Sep 2016 is not valid by any means and it is terminated”, and also stated that P3 had been transferred based on fraud which had been reported to NSW Police, IP Australia and ASIC.[32]
[32] VV-27
23.The Applicant’s administrators contacted the Requestor on 29 August 2019 invoking the Requestor’s right of first refusal under clause 3.10 to make an offer on the same terms of a third party offer of $301,500.[33] The Requestor did not engage with this offer but rather stated that they would be contesting their entitlement though the Patents Act.[34]
[33] VV-28
[34] VV-29 and 30
24.The Requestor filed the s36 request on 16 March 2020.
Summary of key facts
25.The relevant document governing the parties in relation to ownership of P3 is the 2016 Deed.
26.The misrepresentation by Heaton to the Requestor occurred prior to the filing of P3 and the execution of the 2016 Deed.
27.The Requestor’s testimony is that but for the misrepresentation by Heaton, P3 would not have been assigned to and filed in the name of HVPS.[35]
[35] Vakiloroaya #1 at 25 and 33
Legal Principles
Entitlement to a patent
28.The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
29.Section 15(1) of the Act reads as follows:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
30.That is, a patent may be granted to the inventor of an invention or someone who derives title to the invention from the inventor. Such a person is also an eligible person for the purposes of s36(1).
31.In this case, it is clear that the 2016 Deed, if valid, transfers title to P3 and applications arising therefrom[36] from the Requestor to the Applicant.
[36] 1.1.47(b) and (c) of the 2016 Deed
Contract rescission as a remedy for fraudulent misrepresentation
32.It is unusual for the Commissioner to be asked to adjudicate on contract law. Contract law arises from the common law and has no explicit statutory provisions. However, the legal principles relating to misrepresentation appear to be well established.
33.A party that was induced to enter an agreement due to a fraudulent misrepresentation has the right to rescind the agreement and claim damages. The contract is voidable at the option of the injured party. Rescinding a contract brings the contract to an end. The parties to a contract are restored to the positions they were in prior to entering the contract. However, the right to rescind may be lost in particular situations:
· If the party entitled to rescind took action to affirm the contract after becoming aware of the misrepresentation.
· If a third party acting on good faith acquired the subject matter of the contract before the right to rescind is exercised (eg if the patent was assigned to a third party).
· If it is impossible to restore the parties to the positions that they were in prior to entering the contract.
34.According to the respected text Carter on Contract (2019)
Rescission is a right which is available where a contract is induced by a vitiating factor. The most common case is rescission for misrepresentation.
…
The validity of a rescission depends on the ability to achieve restitutio in integrum, that is, the restoration of the parties to their pre-contractual positions. Under the modern law it is sufficient to achieve substantial restitutio. The essence of restitutio is that the party seeking to rescind the contract must make restitution of benefits obtained as a result of entry into the contract. Therefore, from a wider perspective, the concern of restitutio is to ensure that neither party is unjustly enriched at the expense of the other.[37][37] Carter on Contract, (2019) ISBN/ISSN: 9780409343120, [19-060]. Extract provided by the Applicant.
35.The following passage from Alati v Kruger (1955) 94 CLR 216 at 224 is a helpful summary of the roles of the parties and the court in a misrepresentation dispute:
“Rescission for misrepresentation is always the act of the party himself: Reese River Silver Mining Co Ltd v Smith (1869) LR 4 HL 64 at 73. The function of a court in which proceedings for rescission are taken is to adjudicate upon the validity of a purported disaffirmance as an act avoiding the transaction ab initio, and, if it is valid, to give effect to it and make appropriate consequential orders” see Abram SS Co Ltd v Westville Shipping Co Ltd [1923] AC 773.[38]
[38] AS at 47
36.Therefore, in being requested to find that the title of P3 is not validly derived by HVPS, the Commissioner is effectively being asked not only to adjudicate on whether the 2016 deed is void ab initio (either entirely, or in part with respect to P3[39]) but also to give effect to this by returning both parties to their original positions.
[39] 14.10.2 of the 2016 Deed states that it is severable.
The Commissioner’s power to make entitlement declarations
37.Section 36(1) of the Act reads as follows:
“If:
(a) a patent application has been made and, in the case of a complete application, the patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.” (emphasis added)
38. Section 36 subsections (3) and (3A) set out how this power is applied:
(3) The Commissioner must not make a declaration under subsection (1) without first giving the nominated person a reasonable opportunity to be heard.
(3A) The Commissioner may, after making a declaration under subsection (1), make any determination the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the declared persons (emphasis added).
39. The requirement for a hearing under s36(3) has been satisfied in this case.
40. The Commissioner’s powers under s36(1) and (3A) are each discretionary. Although the principles regarding exercising discretion under s36 have not been specifically enumerated, the considerations encountered when the Commissioner exercises her discretion under administrative law, for example under s223 of the Act, reg 5.23, and reg 22.21, include the interests of the parties and the public interest.
41.Therefore, even if I were to be satisfied that the Requestor is an eligible person and the Applicant is not, I would still have to consider the consequences of taking any action under s36 with respect to the interests of the parties and the public interest.
Consideration
42.The Requestor’s position can be summarised as: but for fraudulent representations by Heaton, the transfer of rights in Annex D would not have occurred, the priority application P3 would not have been filed in the name of HVPS or assigned to HVPS, and the 2016 contract would not have been entered into, or at least would not have included P3.
43.The Applicant did not dispute that the fraudulent representations occurred but presented four lines of argument as to why a court would not rescind the 2016 Deed (or partially rescind it, given that it is severable), and thus this contract is still in effect. If the contract is still in effect, the transfer of rights from the Requestor to the Applicant is still in place and the Applicant, not the Requestor, is the eligible person.
i.The original deed and Annex A avowed that all future patents would be transferred to HVPS. Since P3 was filed after Annex A, it was required to be transferred regardless of the fraudulent representation.
ii.The effect of the misrepresentation on the decision to enter into Annex D. The misrepresentation does not need to be decisive, but it does need to be material. The requestor had other valid reasons beside the misrepresentation for entering into Annex D.
iii.The Requestor has elected to affirm the 2016 Deed even after becoming aware of the fraud, for example by signing of memoranda of agreement with HVPS for varying payment terms and pursuing monetary claims under the Deed. Furthermore, letters from the Requestor’s counsel indicated that the Requestor was aware of the option of rescission but did not act on it until this s36 request.
iv.Rescission is not available as a remedy because it is not possible to restore both parties to the position they had prior to Annex D. Firstly, because P3 has lapsed and has been converted to national phase application 2017243880, and secondly because even partial rescission of the 2016 Deed would require not only transfer of the patent rights to the Requestor but also the return of the consideration paid to the Requestor pursuant to paragraph 4.2 of the Deed. The Commissioner has the power to do the former but not the latter.
44.I consider the final consideration to be a crucial threshold question. Even if I were to be satisfied on the balance of probabilities that the 2016 Deed was fully or partially voidable, the Commissioner does not have the power to give the consequential orders to fully restore both parties to their position before Annex D. At most, she only has the power under s36(3A) to restore the patent application to the Requestor without directing the return of the consideration set out in clause 4.2 of the 2016 Deed. This would result in a situation where the Requestor has, to put it colloquially, had their cake and eaten it too. That situation would clearly not be in the public interest nor the balance of interest of the parties.
45.To summarise: I would not be able to make a declaration under s36(1) without giving full effect to the voiding of the 2016 Deed. I cannot give full effect to the voiding of the 2016 Deed as the Commissioner’s powers under s36(3A) are limited to transferring the patent application.
46.In a situation such as this where a patent application has been assigned in exchange for significant consideration, substantial restitutio is outside the scope of the Commissioner’s powers. Therefore, even I were to be satisfied that the declaration sought under s36 could be made, I would not make it.
47.As such, the remaining arguments raised by the Applicant are moot.
48.It appears that the appropriate vehicle for (full or partial) rescission, or other termination, of a Deed such as this one is through the courts, which have the ability to make all the appropriate consequential orders.[40]
[40] I note that the 2016 Deed sets out a dispute resolution scheme at clause 13, and specifies that it is to be construed under the laws of Victoria and the (non-exclusive) jurisdiction of the Victorian courts at clause 14.2.
Costs
49.In proceedings before the Commissioner, costs typically follow the event, and are typically awarded according to scale according to Schedule 8 of the Patents Regulations.
50.However, in this instance the Applicant contacted the Requestor on 3 November 2021 with a proposal regarding costs as follows:
Without Prejudice Save as to Costs.
Dear Mr Vakiloroaya,
As you are aware the hearing of your s36 application in respect of patent application 2017243880 is set down for Tuesday 9 November 2021.
Our client makes the following offer to resolve this matter and avoid the time and costs for both parties proceeding to the hearing :
-you withdraw the s36 application by 4.00pm Thursday 4 November,
-you agree that you shall not in the future challenge the entitlement of HVPS Holdings Pty Ltd to Australian patent application 2017243880, any patent resulting from that application and any patent record related to Australian patent application 2017243880,
-HVPS agrees that it shall not seek an order from the Patent Office that you pay its costs in respect of the s36 application and shall advise the office accordingly.
If the offer is not accepted and we proceed to a hearing, we shall ask that the office make an order that you pay our client’s costs incurred from the rejection of this offer on an indemnity basis.
We shall rely upon this email in support of this request.
We await your response.[41][41] Applicant’s submissions as to costs, 23 November 2021
51.The Requestor did not accept this offer and the matter duly proceeded to a hearing.
52.During the hearing, the Applicant brought this issue to my attention. The parties agreed on a further two week period to file submissions as to costs. These were duly received from both parties on 23 November 2021.
53.The Applicant’s submissions as to costs were that it was unreasonable for the Requestor to reject the offer as they had been in receipt of legal advice in relation to contract rescission, with reference to VV-19 and VV-23. Furthermore, the Applicant submitted that their offer reflected a legitimate compromise: in the event that the s36 application was not successful and the Applicant had costs awarded in their favour they would be better off than their offer to the Requestor.
54.As such the Applicant submitted that they should receive indemnity costs from 4.00 pm on Thursday 4 November.
55.In the Requestor’s submission, they identified this letter as a “Calderbank” offer. This appears to be an unusual situation for a proceeding before the Commissioner, and I am not aware of any case where the Commissioner has awarded indemnity costs in view of a Calderbank offer. I am therefore grateful for the Requestor’s assistance in explaining the principles for assessing costs in this situation.
56.I understand that factors for the court (which appear equally applicable for the Commissioner) to consider when awarding costs in this situation include:
Whether the offer was a genuine compromise;
Whether it was unreasonable to refuse the offer in the circumstances; and in particular
Whether the offer puts with sufficient particularity the reason why the other party’s case must fail
57.I am satisfied that the Applicant’s offer was a genuine compromise in that it offered to forgo award of costs associated with preparing evidence in reply and written submissions for the hearing.
58.Furthermore, I am satisfied that the Requestor had good reason to believe that a s36 request could be successful at least because they received advice to that effect from the Director Audit, Assurance, Attorney Registration and Ministerial Support, Policy and Governance Group of IP Australia.[42] I note that although the lawyer’s letters referred to by the Applicant[43] did mention the possibility of contract rescission proceedings, they by no means demonstrate that the Requestor should have known that a s36 request would have been futile.
[42] RM-26
[43] VV-19 and VV-23
59.Therefore, I am not satisfied that the Requestor was unreasonable in refusing the offer. The threshold reason for the failure of this s36 proceeding I have identified is the Commissioner’s inability to give full effect to contract rescission when there is financial consideration involved. While this was touched on in the Applicant’s written submissions at paragraph 53, I note that there was no authority cited for that proposition at that point of the submission, and furthermore it was not highlighted in the Applicant’s Calderbank offer. In fact, there was no reasoning at all provided in the offer as to why the Requestor’s case must fail, which seems to give it somewhat of the character of an ultimatum.
60.It therefore seems that the Applicant, while successful in the s36 matter and prima facie entitled to its Schedule 8 costs for defending the matter up to the hearing, has, in raising the spectre of Calderbank costs, put the Requestor to the effort and expense of preparing further detailed submissions. This cost to the Requestor, to my mind, is similar in scale to the Schedule 8 costs that would otherwise have been available to the Applicant.
61.Consequently, taking into account all the circumstances and bearing in mind I have found in the Requestor’s favour on the Calderbank question, I make no award of costs.
Felix White
Delegate of the Commissioner of Patents
3