Victor Vrubel and DAN Vrubel v John D. Upham
[1997] APO 44
•23 September 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 664804 in the name of VICTOR VRUBEL and DAN VRUBEL.
Title: Gas Flow Control.
Action: Application by JOHN D UPHAM for an extension of time to file a notice of opposition and a review of the taxation of costs.
Decision: Issued .
Abstract: Review of taxation of costs. Costs in relation to travel based on Taxation Office rates were not excessive. On balance, costs in relation to the services of a professional translator were justified.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 664804 by VICTOR VRUBEL and DAN VRUBEL, application by JOHN D UPHAM for an extension of time to file a notice of opposition and a review of the taxation of costs.
background
A delegate of the Commissioner in a decision dated 31 July 1996 refused to extend the time for Mr Upham to file a notice of opposition. In a subsequent decision dated 4 December 1996 the delegate also awarded costs in that matter against Mr Upham. Following a number of submissions from the parties a Certificate of Taxation of Costs was issued to the amount of $1,495.
This was awarded on the following basis:
Preparation of the case for hearing $360
Hearing fee $500
Prescribed fee for taxing of costs $ 65
Allowance for travel $345
Services of an accredited interpreter $225
Mr Upham in a letter filed on 6 August 1997 stated that he objected to the amount included in the certificate of the taxation. Subsequently I informed the parties that the Commissioner would review the taxation of costs pursuant to regulation 22.8(4) and I allowed 14 days in which they could request a hearing or file further submissions. The Vrubels indicated that they would rely on material already filed. Mr Upham filed further information and indicated that items 1 to 3 above and an amount of $113 for travel was a reasonable amount for costs. Thus it appears that only items 4 and 5 are in dispute.
DECISION
Regulation 22.8 states as follows:
“(1) The Commissioner must not award costs in proceedings to which this Division applies, other than costs specified in Schedule 8 unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.
(2) The Commissioner may award an amount:
(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in Schedule 8; or
(b) in respect of the expenses or allowances of a person in relation to proceedings to which this Division applies.”
Travel Costs
Mr Upham has consistently objected to the amount of $345 claimed for travel expenses. In his most recent submission he suggests that $113 is reasonable for the Vrubels travel by car from Caringbah to Canberra return on the basis of $83 for the rental of a comparable vehicle and $30 for LPG fuel. Victor Vrubel in his declaration of 13 June 1997 questions earlier figures presented by Mr Upham and refers to a number of additional costs associated with car rental, that rental cars are not available with LPG and that after considering a rental car they decided that it was “cheaper to use our own vehicle and claim the costs per the Australian Taxation Office guide-lines”.
There is little precedence in Patent Office decisions to assist me in this matter. I note however that in Schedule 2 to the Federal Court Rules the taxing officer of the court “may allow reasonable travelling expenses to the extent to which they have been reasonably incurred and paid”. Information from the Taxation Office indicates that their rate is intended to reflect the total cost of operating a vehicle for business purposes including fuel, lubricants, wear and tear, depreciation and finance. Having considered the various submission provided and the prevailing circumstances I think in this case that the rate can be said to reflect expenses “reasonably incurred and paid”. The Vrubels could have used other forms of transport but their decision to use their own vehicle was not unreasonable and having made that choice the amount of $345 based on Taxation Office rates is not excessive.
Services of an Interpreter
Mr Upham has queried this claim firstly in that it is not an item allowed for in schedule 8. Regulation 22 however is quite clear in indicating that cost beyond the schedule may be awarded and this is consistent with the practice in the courts. The one condition specified is that the parties have been give the opportunity to be heard and I am satisfied that the parties in this matter have been given ample opportunity.
I note the following from Order 62 Rule 19 of the Federal Court:
“On every taxation the taxing officer shall allow all such costs charges and expenses as appear to him to have been necessary or proper for the attainment of justice or for maintaining or defending the rights of a party, but, except as against the party who incurred them, costs shall not be allowed which appear to the taxing officer to have been incurred or increased-
(a) through over-caution, negligence or misconduct;
(b)by payment of special fees to counsel or special charges or expenses to witnesses or other persons; or
(c) by other unusual expenses.”
The cost of a professional translator is certainly a matter that may be necessary to maintain the rights of a party before the Commissioner. Mr Upham has asserted however that Mr Janda is a business associate of the Vrubels and that from his knowledge the Vrubels are sufficiently proficient in English so as not to require the services of a translator.
The evidence does show that Mr Janda has been involved with the Vrubels other than in his capacity as a translator. He, for example, is a co-inventor in relation to patent application 76538/96. Victor Vrubels declaration of 13 June 1997 however indicates that this association has arisen from his services as a translator. He also indicates in the 10 March declaration that after arriving in Australia in 1980 he has acquired a good knowledge of the specialised language used in the field of electronics but that his ability to express himself in the area of regulations and the law is quite limited. Mr Upham on the other hand declares that he worked with the Vrubels for a number of years and that “both speak, read and write English fluently and Mr Victor Vrubel had an excellent understanding of the Patent Act”.
This contradictory evidence may have been clarified by a third party but I do not have the benefit of such evidence. Given that Mr Janda’s qualifications as a translator have not been disputed, that prima facie the Vrubels have a reasonable basis to claim that they are not proficient in English and that a plausible explanation has been provided for Mr Janda’s association with the Vrubels I find on balance that the claim in relation to a translator is justified. Mr Upham has not provided sufficient evidence to show otherwise.
I do not see a basis for varying the amount awarded in relation to this item.
SUMMARY
I have found the taxation of costs in relation to travel expenses and the use of a professional translator was appropriate in the circumstances. The Certificate of Taxation of Cost issued on 16 July 1997 is confirmed.
P M Spann
Delegate of the Commissioner of Patents
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