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Federal Court of Australia |
Last Updated: 18 January 1999
RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd [1999] FCA 17
PRACTICE AND PROCEDURE - application for injunction to restrain opponent of grant of patent from representing in opposition proceeding before Commissioner of Patents that opponent and not applicant was the inventor and that applicant had unlawfully obtained the invention from opponent without its consent - applicant alleging in Court proceeding that opponent's "obtaining representation" false and in contravention of s 52 of Trade Practices Act 1974 - applicant also alleging that opponent had represented to applicant, in contravention of that section, that it would not repeat the obtaining representation and had contracted with applicant not to do so and that it was estopped from doing so - motion for order that opponent not make the obtaining representations to the Commissioner until three months after determination of Court proceeding - jurisdiction of Court - power of Court, in effect, to stay proceeding before specialist tribunal from which appeal lies to Court - discretionary factors - respect to be accorded to legislature's vesting of function of making primary decision in Commissioner - relevance of fact that only issue before Commissioner would be entitlement to invention whereas Court would have jurisdiction to decide this and other issues as well.
CSR Limited v Cigna Insurance Australia Limited (1997) 189 CLR 345 distinguished
Pegasus Leasing Ltd v Cadoroll Pty Ltd (1996) 59 FCR 152 cited
Dalgety Wine Estates Pty Ltd v Rizzon [1979] HCA 41; (1979) 141 CLR 552 applied
Boyd v Halstead [1985] 2 Qd R 249 cited
R v Windridge, ex parte Pacific Coal Pty Ltd [1992] 2 Qd R 180 cited
Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd [1981] HCA 7; (1981) 148 CLR 457 cited
Fencott v Muller (1983) 152 CLR 570
Stack v Coast Securities (No 9) Pty Ltd [1983] HCA 36; (1983) 154 CLR 261 cited
Hedley v Bates (1880) 13 Ch D 498 cited
Stannard v Vestry of Saint Giles, Camberwell (1882) 20 Ch D 190 cited
Thames Launches Ltd v Trinity House Corporation (Deptford Strond) [1961] 2 WLR 16 cited
Dalgety Wine Estates Pty Ltd v Rizzon [1979] HCA 41; (1979) 141 CLR 552 cited
Titan Mining & Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 cited
RGC MINERAL SANDS LIMITED v WIMMERA INDUSTRIAL MINERALS PTY LTD
NG 598 OF 1998
RGC MINERAL SANDS LIMITED v COMMISSIONER OF PATENTS
NG 891 of 1998
LINDGREN J
18 JANUARY 1999
SYDNEY
|
IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 598 OF 1998 |
|
BETWEEN: | RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Applicant |
|
AND: | WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130)
Respondent |
|
JUDGE: | LINDGREN J |
| DATE OF ORDER: | 18 JANUARY 1998 |
| WHERE MADE: | SYDNEY |
THE COURT NOTES THAT
1. The respondent, through its solicitor, undertakes to the Court that, if it succeeds in opposition proceeding in relation to Australian Patent Application No 676682 (45513/93) before the Commissioner for Patents, it will not request the Commissioner for Patents to amend the Register of Patents by inserting its name as patentee of the invention claimed in that patent application until any appeal by the present applicant against the Commissioner's decision is heard and determined.
THE COURT ORDERS THAT
1. The motion brought by the applicant by notice of motion filed on 20 October 1998 be dismissed.
2. The applicant pay the respondent's costs of the motion.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
|
IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 891 OF 1998 |
|
BETWEEN | RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Applicant |
|
AND: | COMMISSIONER OF PATENTS
First Respondent
WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130) Second Respondent |
JUDGE:
LINDGREN J DATE: 18 JANUARY 1998 PLACE: SYDNEY
THE COURT ORDERS THAT
1. The application be dismissed.
2. The applicant pay the costs of the proceeding.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
|
IN THE FEDERAL COURT OF AUSTRALIA | |
| NEW SOUTH WALES DISTRICT REGISTRY | NG 598 OF 1998 |
|
BETWEEN: | RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Applicant |
|
WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130) Respondent
NG 891 OF 1998 | |
|
BETWEEN | RGC MINERAL SANDS LIMITED (ACN 008 763 666)
Applicant |
|
AND: | COMMISSIONER OF PATENTS
First Respondent
WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130) Second Respondent |
JUDGE:
LINDGREN J DATE: 18 JANUARY 1998 PLACE: SYDNEY
2 It is currently expected that the opposition proceeding will be heard in the Patent Office in the first half of 1999, and possibly as early as February or March. With the agreement of the parties it could be set down for a hearing to commence within a few weeks of the filing of the opposition evidence in reply.
3 In proceeding NG 598 of 1998, commenced on 18 June 1998, RGC seeks declarations that neither the Invention nor the Process or any part of it was obtained by RGC from Wimmera in the manner mentioned and a declaration pursuant to s 15 (1) of the Patents Act 1990 ("the Act") that RGC is the person to whom a patent in respect of the Invention may be granted. It also seeks orders restraining Wimmera from representing otherwise to any person, including the Commissioner of Patents ("the Commissioner"). RGC also seeks damages and further or other orders pursuant to s 87 of the Trade Practices Act 1974 (Cth) ("the TP Act"). Presently before the Court in that proceeding is a motion brought by RGC by notice of motion filed 20 October 1998, seeking an order restraining Wimmera from taking any further step, including the step of seeking a hearing date, in the opposition proceeding.
4 In a later proceeding, commenced on 27 August 1998, NG 891 of 1998 ("the AD(JR) Act proceeding"), RGC seeks review pursuant to s 5 of the Administrative Decisions (Judicial Review) Act 1977 ("the AD(JR) Act") of a decision of a delegate of the Commissioner refusing to grant RGC an extension of time for the filing and serving of its evidence in the opposition proceeding to a date three months after the determination of proceeding NG 598 of 1998. The effect of the direction sought by RGC would have been to stay the opposition proceeding until the determination of proceeding NG 598 of 1998.
5 I heard the AD(JR) Act proceeding concurrently with RGC's motion in proceeding NG 598 of 1998.
BACKGROUND FACTS 6 RGC lodged the complete specification for the patent on 28 July 1993. On 19 June 1997, Wimmera filed its notice of opposition pursuant to s 59 of the Act and Patents Regulation 5.3. On 19 September 1997, Wimmera filed and served a statement setting out the grounds of opposition and particulars relating to each ground pursuant to Patents Regulation 5.4. Section 59 of the Act provided, in effect, that Wimmera could oppose the grant of the patent on one or more of three grounds specified in the section. The only relevant ground, and the one on which Wimmera relied, is that RGC was not entitled to a grant of a patent for the Invention. Section 15 of the Act identified the classes of persons to whom a patent for an invention might be granted. The relevant class is "the inventor". Wimmera's statement of grounds and particulars shows, as indicated earlier, that it claims to be the inventor and that RGC obtained the Invention through it by means of the unauthorised use of confidential information which Wimmera had disclosed to third parties on a confidential basis.
7 On 19 February 1998, Wimmera filed its statutory declarations in the opposition proceeding. RGC's evidence in answer was due to be served by 19 May but on that date it sought an extension of time to 19 July. On 28 May, Wimmera objected to the granting of an extension and RGC's application for an extension to 19 July was fixed for hearing on 24 June.
8 Meanwhile, on 18 June, RGC commenced proceeding NG 598 of 1998 in this Court. The statement of claim in that proceeding contains the following allegations: 1) that Wimmera has represented to the Commissioner and others that RGC obtained the Invention from Wimmera through the unauthorised use of information which was confidential in character and which was disclosed by Wimmera in confidence to various research organisations ("the obtaining representations"); that the obtaining representations were made in trade or commerce; that the obtaining representations were false; and that Wimmera's conduct in making the obtaining representations was conduct that was misleading and deceptive conduct in contravention of s 52 of the TP Act;
2) that Wimmera alleged to RGC and to the Commonwealth Scientific and Industrial Research Organisation ("the CSIRO") that RGC had obtained the Invention or the Process or both from Wimmera through the unauthorised use by RGC of confidential information; that by letter dated 22 November 1993 the CSIRO denied the allegation and asked Wimmera to disclose the "facts and matters" on which it based the allegation; that Wimmera knew, intended and requested that the CSIRO and RGC would consult in relation to the allegation and that the CSIRO wrote its letter of 22 November 1993 as a joint response by it and RGC to the allegation; that from 22 November 1993 to 19 September 1997 (the date of the filing and service of Wimmera's statement of grounds of opposition and particulars) Wimmera deliberately and knowingly refrained from disclosing any such facts or matters to the CSIRO or to RGC; that Wimmera thereby represented to RGC, in trade or commerce, that it no longer regarded the allegation as true and would refrain from repeating it; that in reliance on that representation, RGC acted to its detriment in various ways, for example, by spending money in developing and operating the Process; that the representation was false in that Wimmera subsequently repeated the obtaining representations in the opposition proceeding; and that Wimmera has, in trade or commerce, engaged in misleading and deceptive conduct in contravention of s 52 of the TP Act, or, alternatively, is estopped from repeating the obtaining allegations;
3) that in the course of various negotiations, Wimmera made various representations to RGC, the effect of which was that the obtaining representations were no longer the subject of dispute between Wimmera and RGC and that Wimmera would not repeat them; that RGC relied on that representation to its detriment; that Wimmera has now repeated the obtaining representations in the opposition proceeding; and that Wimmera has thereby engaged in misleading and deceptive conduct, or, alternatively, is estopped from repeating the obtaining allegations;
4) that RGC and Wimmera entered into a contract in June 1994, a term of which was that Wimmera would not repeat the obtaining representations; that in breach of contract Wimmera has repeated them in the opposition proceeding; that RGC has suffered loss and damage by reason of that breach of contract; and that Wimmera threatens to continue to repeat the obtaining representations.
On that basis, RGC claims the relief set out earlier. 9 On 22 June, RGC wrote to the Commissioner seeking a direction pursuant to Patents Regulation 5.10(1) that in the light of the commencement four days earlier of proceeding NG 598 of 1998 in this Court, the time for the filing of its evidence in the opposition proceeding be extended to a date three months after the final determination of that proceeding.
10 On 24 June, a delegate of the Commissioner heard RGC's applications in the opposition proceeding for an extension of time to 19 July for the filing of its evidence and for a direction that RGC's evidence in answer was due to be served three months after the final determination of proceeding NG 598 of 1998.
11 On 5 August the delegate, noting that if the direction were granted the application for the extension of time until 19 July would be rendered otiose, refused to make the direction but granted the extension. The delegate gave reasons for decision, extending over thirteen pages.
12 On 27 September, RGC commenced the AD(JR) Act proceeding seeking, as noted earlier, review of the delegate's decision of 5 August.
13 On 13 October, RGC completed its evidence in answer in the opposition proceeding.
14 On 20 October, RGC filed its notice of motion in proceeding NG 598 of 1998.
15 On 20 November, in proceeding NG 598 of 1998, the time within which RGC was to file and serve its affidavits in chief was extended to 4 December 1998 and Wimmera as directed to file and serve its affidavits by 1 March 1999.
RGC's MOTION IN NG 598 of 1998 16 Does the Court have jurisdiction to grant the injunction sought in the motion? Argument on RGC's motion in proceeding NG 598 of 1998 assumed that RGC was seeking relief akin to an "anti-suit injunction" and that the principles relating to the granting of that form of relief applied. Those principles were recently reviewed by the High Court in CSR Limited v Cigna Insurance Australia Limited (1997) 189 CLR 345 ("CSR v Cigna"). According to the majority, an Australian court asked to grant an anti-suit injunction should first ask whether that court is itself a "clearly inappropriate forum" for the determination of the matter in question (at 397-398) and then, if satisfied that it is not a clearly inappropriate forum, ask whether the commencement or continuing of the foreign proceeding interferes with the court's own proceeding or processes or otherwise amounts to "unconscionable conduct" or an "unconscientious exercise of legal rights" (at 392).
17 In my view the motion does not seek an anti-suit injunction as that notion is commonly understood and therefore the principles governing the availability and granting of such relief cannot simply be transported into the present case, although some considerations may be found to be relevant to both classes of case. Significant features of applications for anti-suit relief are absent here. The present motion does not raise considerations of "comity" between the courts of different jurisdictions as the proceeding sought to be restrained is not one in a foreign jurisdiction, in the sense of a proceeding in a foreign court or even a court of a State or Territory of Australia (cf CSR v Cigna at 395-396; Pegasus Leasing Ltd v Cadoroll Pty Ltd (1996) 59 FCR 152 at 157). Further, an appeal to this Court lies from the Commissioner's decision in the opposition proceeding (s 60(4) of the Act - this Court's jurisdiction to hear and determine appeals against the Commissioner's decisions is exclusive of the jurisdiction of any other court apart from the High Court's jurisdiction under s 75 of the Constitution: s 154(2) of the Act). The latter consideration, in particular, and the nature of the appeal as a hearing de novo (discussed later) show that the relief sought in the motion is not akin to the anti-suit relief considered in CSR v Cigna and other cases. Rather, the situation is more like that considered by the High Court in Dalgety Wine Estates Pty Ltd v Rizzon [1979] HCA 41; (1979) 141 CLR 552.
18 In Dalgety Wine Estates Pty Ltd v Rizzon, the sub-lessees (the Rizzons) of licensed premises applied to the Licensing Court for removal of the appellant's licence to other premises. They did so without the consent of the sub-lessor ("Dalgety"). The sub-lease contained a covenant that the Rizzons would not do any act that would prevent or disable Dalgety from obtaining the renewal of the licence or a new licence or a transfer of any licence current in respect of the premises. Under the Licensing Act 1967 (SA) one of the grounds of refusal of an application to remove a licence was that the lease under which the licensee occupied the premises contained a covenant or prohibition against removal without the consent of the lessor and that consent had not been obtained.
19 Dalgety commenced a proceeding in the Supreme Court of South Australia seeking an injunction restraining the Rizzons from proceeding with their application to the Licensing Court on the basis that their doing so was in breach of the covenant in the sub-lease. The Supreme Court of South Australia refused to grant the injunction.
20 On appeal to the High Court, the relevant considerations were identified by Mason J (with whom Stephen and Murphy JJ agreed) as follows (at 574-575):
"First, a superior court should hesitate before granting an injunction restraining a party from commencing or maintaining proceedings in a court or tribunal which has been specially constituted by statute with a jurisdiction to entertain and determine proceedings of that kind, the more so when the proceedings relate to rights or privileges which depend for their existence on the statute (Forster v Jododex Australia Pty Ltd [(1972) 127 CLR, at pp 427, 438-439]). The Act creates the licence and regulates what may be done with it by way of transfer or removal. And, as we have seen, the Act has constituted the Licensing Court with an exclusive jurisdiction in licensing matters. Secondly, the Licensing Court is specifically directed to determine the grounds of objection. Accordingly, the Licensing Court in the exercise of its jurisdiction must decide, once the ground of objection mentioned in s 57 (d) is taken, whether there is a covenant of the kind in question and whether the landlord has failed to give its consent, these being the two issues which the Supreme Court was asked to determine in the proceedings for relief by way of injunction. Thirdly, these issues may not be decisive in the proceedings in the Licensing Court because it has an overriding discretion to grant an application for removal despite the existence of a breach of covenant. Fourthly, the grant of an injunction would effectively deprive the Licensing Court of the opportunity of exercising that overriding discretion, notwithstanding that the discretion had been given to the Licensing Court so as to enable it to determine applications in the public interest. Indeed, the effect of granting an injunction would be to set private rights above the public interest, for an injunction would effectively prevent the Licensing Court from deciding whether, despite the existence of a covenant, considerations of public interest outweigh the desirability of enforcing private rights. Finally, there is an appeal from the Licensing Court to the Supreme Court. The existence of this appeal enables the Supreme Court to correct any mistake which the Licensing Court may make. All these factors indicate that the Supreme Court was correct in exercising its discretion against intervention."21 There was no question in the Dalgety case as to the jurisdiction of the Supreme Court of South Australia to enforce the Rizzons' covenant in the sub-lease. The High Court, by majority, affirmed the discretionary decision of that Court not to enforce the covenant by way of injunction.
22 In other cases too, State Supreme Courts have expressed reluctance to grant injunctions which would have the effect of staying proceedings properly before inferior tribunals and courts: see, for example, Boyd v Halstead [1985] 2 Qd R 249 (McPherson J); R v Windridge, ex parte Pacific Coal Pty Ltd [1992] 2 Qd R 180 (FC).
23 This Court does not have the plenary jurisdiction of a State Supreme Court. Whether this Court has jurisdiction to grant the injunction which RGC seeks depends, at least in the first place, on the Act establishing the Court. This Court is created as a superior court of record and as a court of law and equity: Federal Court of Australia Act 1976 (Cth) ("FCA Act") s 5(2). The Court has such original jurisdiction as is vested in it by laws made by the Parliament: s 19(1) of the FCA Act. In relation to "matters" in which it has jurisdiction, the Court also has power to make orders of such kinds, including interlocutory orders, as the Court thinks appropriate: s 23 of the FCA Act. Section 22 of the FCA Act also assumes a conferral of jurisdiction to be found elsewhere and is concerned with the exercise of power. It provides:
"22 The Court shall, in every matter before the Court, grant, either absolutely or on such terms and conditions as the Court thinks just, all remedies to which any of the parties appears to be entitled in respect of a legal or equitable claim properly brought forward by him or her in the matter, so that, as far as possible, all matters in controversy between the parties may be completely and finally determined and all multiplicity of proceedings concerning any of those matters avoided."
24 Section 32 of the FCA Act does confer jurisdiction, but only "to the extent that the Constitution permits", "in respect of matters not otherwise within [the Court's] jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked". Section 32 does not confer jurisdiction on the Court to hear and determine non-federal claims such as the estoppel and contract claims in the present case.
25 The causes of action set out in paras (1) and (4) set out earlier can be summarised as follows: (a) the allegedly false obtaining representations made by Wimmera in contravention of s 52 of the TP Act which Wimmera should be restrained from repeating in the opposition proceeding (para (1)); (b) the alleged representations by Wimmera that it would not repeat the obtaining representations, made in contravention of s 52 of the TP Act and giving rise to an estoppel, as a result of which, again, Wimmera should be restrained from repeating the obtaining representations in the opposition proceeding (paras (2) and (3)); (c) a contract by which Wimmera undertook not to repeat the obtaining representations as a result of which, again, Wimmera should be restrained from repeating the obtaining representations in the opposition proceeding (para (4)). It has not, in fact, been disputed that RGC has properly invoked this Court's jurisdiction in proceeding NG 598 of 1998. It could not be disputed that this Court has jurisdiction to grant the final injunction relief sought in proceeding NG 598 of 1998 restraining Wimmera from making the obtaining representations to the Commissioner in the opposition proceeding based on its alleged misleading and deceptive conduct: cf TP Act ss 52, 80, 86(1), 87. In my view, the Court also has "attached" or "accrued" jurisdiction to entertain the estoppel and contractual claims because they arise out of the same "substratum of facts" as the s 52 claims and are part of the same controversy as those claims: Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd [1981] HCA 7; (1981) 148 CLR 457; Fencott v Muller (1983) 152 CLR 570; Stack v Coast Securities (No 9) Pty Ltd [1983] HCA 36; (1983) 154 CLR 261. I do not find it necessary, therefore, to rely on the cross-vesting legislation as a basis for this Court's jurisdiction to entertain those claims.
26 If the opposition proceeding goes to hearing in the ordinary way, the subject matter of proceeding NG 598 of 1998, in so far as it seeks to restrain Wimmera from making the obtaining representations to the Commissioner, will be destroyed. This is a sufficient ground on which to hold, as I do, that this Court has power to make the order sought in the motion.
27 But should the Court, as a matter of discretion, grant that relief? I have no doubt that this Court should decline to grant an injunction having the effect of staying a proceeding before a specialist tribunal where the only issue to be decided by the Court is one which is properly before that tribunal and which it was given power to decide. So, in this case, if RGC sought only a declaration that the obtaining representations were misleading and deceptive and an injunction restraining Wimmera from repeating them to the Commissioner (see (a) earlier), interlocutory injunctive relief having the effect of staying the opposition proceeding and effectively preventing the Commissioner from fulfilling his statutory function of resolving the conflict as to whether RGC or Wimmera is the inventor of the Invention, should be refused. The truth or falsity of the obtaining representations is the very issue before the Commissioner.
28 However, RGC submits that the issues raised in proceeding NG 598 of 1998 are wider than those able to be considered in the opposition proceeding. In particular, it submits that RGC's claims that Wimmera is estopped from repeating the obtaining representations and is contractually bound not to repeat them will not be ventilated in the opposition proceeding. There have been cases in addition to Dalgety Wine Estates Pty Ltd v Rizzon, referred to earlier, in which the issue has arisen whether a superior court seized of several questions should restrain a party from commencing or continuing a proceeding before an inferior court or tribunal which has jurisdiction to resolve only one or some of those questions: see, for example, Hedley v Bates (1880) 13 Ch D 498; Stannard v Vestry of Saint Giles, Camberwell (1882) 20 Ch D 190; Thames Launches Ltd v Trinity House Corporation (Deptford Strond) [1961] 2 WLR 16. There is little point in discussing the ways in which the discretion has been exercised in such cases. However, a common feature of the cases is acceptance of the proposition that a superior court should be slow to interfere with the exercise by the inferior court or tribunal of the jurisdiction with which it has been invested by the legislature. This is a weighty consideration against granting the relief sought in the motion, in my view.
29 Wimmera submits that the issues other than the issue of the truth or falsity of the obtaining representations have "no connection with the opposition proceeding". However, while those issues will not be decided in the opposition proceeding, they are intimately linked with it because the only issue to be decided in that proceeding is whether RGC or Wimmera is the inventor and the other issues all go to the question whether Wimmera is at liberty to contend that it, and not RGC, is the inventor. Unlike Dalgety Wine Estates Pty Ltd v Rizzon, therefore, this is not a case in which the tribunal will determine all the issues to be litigated by the parties in the court: the Commissioner will not determine if Wimmera's claim that it, and not RGC, is the inventor, constitutes breach of a duty incumbent upon it. As well, this is not a case in which the Commissioner has an over-riding discretion in the public interest such as that possessed by the Licensing Court in Dalgety Wine Estates Pty Ltd v Rizzon.
30 To be taken into account against the granting of the relief sought is the fact that the opposition proceeding was commenced as long ago as 19 June 1997 and Wimmera filed and served its statement repealing the obtaining representations on 19 September 1997, yet RGC did not commence proceeding NG 598 of 1998 until 28 May 1998, or raise the issue of a stay of the opposition proceeding until 22 June 1998. Now, moreover, the opposition proceeding has reached a position in which it can be heard in early 1999, whereas proceeding NG 598 of 1998 has not progressed so far.
31 It may be that RGC will be successful in the opposition proceeding, in which case proceeding NG 598 of 1998 will be rendered otiose. If, on the other hand, RGC were not to succeed in the opposition proceeding, it would be able to appeal to this Court against the Commissioner's decision. The appeal would be a hearing de novo and the Court's function would be to exercise, in its original jurisdiction and on the evidence adduced before it, the Commissioner's function under s 60 of the Act: Titan Mining & Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 at 75. RGC would also be able to press all the claims made in proceeding NG 598 of 1998, although the formulation of the relief sought in that proceeding would have to be modified. The appeal and proceeding NG 598 of 1998 could be heard together. If the appeal were dismissed, but RGC succeeded in proceeding NG 598 of 1998, effect would be given to that success.
32 In these circumstances, it is difficult to see that prejudice would be suffered by RGC if the opposition proceeding were allowed to take its course.
33 RGC's expense of resisting the opposition proceeding can hardly qualify as a prejudice since the legislature has decided that the Commissioner is the proper person, in the first instance, to decide the identity of the inventor. Rather, it happens that the opposition proceeding is properly before the Commissioner and proceeding NG 598 of 1998 is properly before this Court and RGC stands to miss out on the adventitious benefit of "circumventing" the first stage of opposition to the grant of a patent prescribed by the legislature. Moreover, in my opinion the delegate's expertise is relevant to the issue whether RGC obtained the Invention from Wimmera and the Court would be assisted by the Commissioner's having first made a finding on that issue.
34 It is also relevant to the issue of costs that RGC has filed its evidence in the opposition proceeding and that Wimmera should, by now, have filed its evidence in reply, leaving the parties with, in effect, only the costs of the hearing to be incurred. And, of course, if RGC were successful in the opposition proceeding and Wimmera did not appeal, there could be a saving of the expense of filing evidence in proceeding NG 598 of 1998. In the circumstances, I do not think the consideration that there may be some expense of the opposition proceeding thrown away leads to the conclusion that that proceeding should remain in abeyance.
35 Senior counsel referred to what he said were procedural advantages associated with a proceeding in this Court as against the opposition proceeding. He referred to discovery, cross-examination and the applicability of the rules of evidence. Counsel for Wimmera put submissions in reply. I do not think it necessary to deal with these matters individually. I do not think that such procedural advantages as may exist (in my view they are not shown to be great) outweigh the desirability that the specialist official invested by the Parliament with the function of determining in the first instance the entitlement to apply for a patent in respect of the Invention, and by now seized of that issue for so long, be permitted to perform that function.
36 I note that, since the hearing of RGC's motion, Wimmera has indicated by its solicitors' letter dated 22 December 1998 that if it succeeds in the opposition proceeding, it undertakes not to request the Commissioner to amend the Register of Patents by inserting Wimmera's name as patentee of the Invention until any appeal by RGC against the Commissioner's decision has been determined.
37 In all the circumstances, I do not think that it is appropriate that the opposition proceeding be, in effect, stayed until after the hearing and determination of proceeding NG 598 of 1998. Accordingly, RGC's motion should be dismissed.
THE AD(JR) ACT PROCEEDING 38 The decision impugned in the AD(JR) Act proceeding is the decision dated 5 August 1998 of the Commissioner's delegate to refuse to direct pursuant to Patents Regulation 5.10(1) that the service of RGC's evidence in answer be deferred until three months after the final determination of proceeding NG 598 of 1998. (The Commissioner is named as first respondent in the AD(JR) Act proceeding and has filed a submitting appearance.) The ground of review on which RGC relies is that provided for by s 5(1)(e) of the AD(JR) Act, that is, that the making of the decision was an improper exercise of the power conferred by the Act and the Patents Regulations. RGC particularises this ground by claiming that the delegate failed to take into account relevant considerations (identified in seven paragraphs); that he took into account irrelevant considerations (identified in eleven paragraphs); that his exercise of his power was so unreasonable that no reasonable person could have so exercised it; and that he exercised his power in such a way that the result of the exercise of it is uncertain. I do not find it necessary to elaborate on these grounds in view of the way in which the application was argued and of the conclusion which I have reached in relation to it.
39 At the outset, Wimmera submits that it would be futile for the Court to review the delegate's decision at all. The reason is that RGC has now in fact filed and served its evidence in answer in the opposition proceeding so that there is no longer a "matter" able to be remitted to the Commissioner.
40 In reply, RGC submits that although the delegate's decision strictly related only to the filing and serving of evidence, in substance RGC's application was for a stay of the opposition proceeding pending determination of proceeding NG 598 of 1998 and was argued before the delegate as such. RGC submits, therefore, that the Court should view the decision as a refusal of a stay and deal with it as such.
41 In reply, Wimmera submits that although RGC might have been arguing the application for an extension of time for filing of evidence as an application for a stay of the opposition proceeding, this was not the approach adopted by Wimmera or by the delegate. Wimmera refers to the following passage in the delegate's Reasons for Decision:
"... I note that this is not a case where hearings are pending in the near future in the court and before the Commissioner [referred to Re Application by Yamazaki Mazah Corporation [1992] APO 6; (1992) 24 IPR 321]. The request for directions merely seeks to defer the service of evidence in answer, not the hearing of the substantive opposition, and thus it seems premature for the Commissioner to issue the direction sought for these reasons alone". (emphasis supplied)However, the delegate went on to say:
The delegate's conclusion on this issue was as follows:
"In any event, I do not consider the possibility that the hearing before the Commissioner may be a waste of effort or resources if the court comes to a different finding to be persuasive."
"I have found that the issues to be decided by the Federal Court are directly relevant to the present opposition. However, for the reasons given, I consider this to be outweighed by the interests of both Wimmera and the public. In short, these interests strongly favour an expeditious resolution of the fate of the present application in terms of its rightful ownership. Accordingly, I conclude that it would not be appropriate in all the circumstances to defer the service of evidence in answer pending the outcome of the court proceedings, and I therefore refuse to give a direction to that effect."42 From the foregoing passages it is clear that, even if the application had been in form an application for a stay of the opposition proceeding, the delegate would have refused it. That is, the delegate thought not only that RGC should proceed to file its evidence in answer, but, more generally, that the opposition proceeding should go forward to a hearing in the usual way.
43 While I think that the issue raised by Wimmera is one of substance, I will deal with the AD(JR) Act proceeding on the basis suggested by RGC.
44 Submissions were not made in support of the respective particulars of the grounds of review relied on by RGC in the AD(JR) Act proceeding. Rather, RGC's submissions in relation to the AD(JR) Act proceeding were concerned to persuade me that I should not conceive of RGC's application before the delegate narrowly as one for time for the filing and serving of evidence in answer, but should regard it as having been in substance an application for a stay. RGC appeared to treat the AD(JR) Act proceeding and its motion in proceeding NG 598 of 1998 as standing or falling together.
45 I do not think I am required to address individually the particulars of the ground of review relied on by RGC as they were not so addressed in submissions. I have, however, studied those particulars and the delegate's Reasons for Decision dated 5 August 1998 and am not persuaded that RGC's case for review is established. The delegate appreciated the nature of RGC's application and the grounds on which RGC relied. The delegate's conclusion was in conformity with mine on RGC's motion. In my view, the proceeding under the AD(JR) Act should also be dismissed.
CONCLUSION 46 For the above reasons, in proceeding NG 598 of 1998, the Court will note the undertaking of Wimmera, through its solicitor, to the Court, referred to earlier and will order that RGC's motion brought by notice of motion filed on 20 October 1998 be dismissed with costs. For the above reasons, the Court will also order that the AD(JR) Act proceeding be dismissed with costs.
|
I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable
Justice Lindgren. |
Associate:
Dated: 18 January 1999
|
Counsel for the Applicant in each proceeding and on the motion: | Mr D K Catterns QC and Ms S J Goodard |
| Counsel for the Respondent in each proceeding and on the motion: | Mr P Collinson |
| Solicitors for the Applicant in each proceeding and on the motion: | Allen Allen & Hemsley |
| Solicitors for the Respondent in each proceeding and on the motion: | Arthur Robinson & Hedderwicks |
| Date of Hearing: | 14 December 1998 |
| Date last written submission received |
22 December 1998 |
| Date of Judgment: | 18 January 1999 |
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URL: http://www.austlii.edu.au/au/cases/cth/FCA/1999/17.html