Scott v Icon Plastics Pty Ltd

The appeal 7 The applicant appeals under s 60(4) of the Patents Act against that part of the decision that allowed Icon's opposition on the basis of lack of entitlement, and awarded costs against the applicant. The appeal is brought essentially on the ground that the delegate erred in finding that Royston Douglas Bull was the inventor and that Icon was an eligible person entitled to the grant of a patent the subject of the patent application. The applicant's position is that the delegate should have found that he, not Icon, was an eligible person entitled to the grant of the patent. 8 By his notice of appeal, the applicant sought orders and declarations to give effect to these contentions, as well as an order that Icon pay his costs of the opposition and of the appeal.

No active respondent on appeal 9 On 23 March 2012, Icon was granted leave to file a submitting notice, save in relation to costs. On 30 March 2012, the Commissioner of Patents was joined as second respondent. The Commissioner, though appearing on the hearing of the appeal to assist the Court if the occasion arose, did not made any submissions regarding the appeal, having advised the Court previously that the Commissioner did "not wish to be heard in opposition to the appeal as it [did] not, in the Commissioner's view, raise any matters of public interest". There was, therefore, no active respondent before the Court in these proceedings: compare Merck & Co Inc v Sankyo Co Ltd (1992) 23 IPR 415 at 417-418 per Lockhart J.

Nature of an appeal under s 60(4) of the Patents Act 10 The Court has jurisdiction to hear the appeal under s 60(4) of the Patents Act. An appeal under s 60(4) of the Patents Act is within the original jurisdiction of this Court and requires a hearing de novo: see European Community v Commissioner of Patents (2006) 68 IPR 539 ('European Community') at 541 [9] per Young J citing Kaiser Aluminium & Chemical Corp v Reynolds Metal Co (1969) 120 CLR 136 at 142; R D Werner Co Inc v Bailey Aluminium Products Pty Ltd (1987) 8 IPR 339 at 340; and F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 ('Hoffman-La Roche') at 63. 11 In an appeal under s 60(4), the issue for decision is whether, if granted, the patent would be clearly invalid: see European Community at 541 [10] and Hoffman-La Roche at 70 [67] per Emmett J and the authorities to which Emmett J referred in his reasons. These authorities accept that, unless a patent is clearly invalid, it should be allowed to proceed to grant: see Hoffman-La Roche at 66-70 [48]-[67]. In this context, the purpose of pre-grant opposition proceedings must be borne in mind: see Hoffman-La Roche at 66 [47], citing Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 at 112 [19]. It must also be borne in mind that allowing a patent to proceed to grant does not establish the validity of the patent: see Hoffman-La Roche at 67 [51], 70 [66]. Thus, in an appeal of the present kind, the Court's task is not to determine whether the patent is in fact valid. 12 On an appeal under s 60(4) of the Patents Act, the duty of the Court is to exercise de novo the function of the Commissioner of Patents under s 60. Notwithstanding this, the only evidence that the Court considers in deciding the appeal is that tendered at the hearing and admitted by the Court: see Cadbury Schweppes PLC v Effem Foods Pty Ltd (2006) 69 IPR 584 ('Cadbury Schweppes') at 586 [15]-[16] per Lindgren J, citing European Community; and European Community at 543 [15] citing Titan Mining & Engineering Pty Ltd v Arnall's Engineering Pty Ltd (1988) 12 NSWLR 73 ('Titan') at 75-76; Caroma Sales Pty Ltd v Philmac Pty Ltd [1972-73] ALR 427; and Brickwood Holdings Pty Ltd v ACI Operations Pty Ltd [1983] 2 VR 587 at 588-589. The Court, in discharging its task, may take into account a ground of opposition specified in s 59: see Titan at 75-76. 13 In support of the appeal, the applicant relied on the affidavits of John Gerard Weir sworn on 19 April 2012 (with annexures); Laurence Clifford Scott sworn on 20 April 2012 (with annexures); Gregory Wayne Scott sworn on 20 April 2012 (with annexures); Martyn Laurence Scott sworn on 20 April 2012 (with annexures); Paul Robert Cramond sworn on 20 April 2012 (with annexures); and Virginia Ann Beniac-Brooks sworn on 23 April 2012 (with its exhibit). At the hearing, the Court gave the applicant liberty to file and rely on a document entitled "Corrections to the Affidavit of Paul Robert Cramond sworn 20 April 2012 together with annexures thereto marked PRC-1 to PRC-13". This document noted that certain corrections of a typographical or similar non-substantive kind should be understood as made to Mr Cramond's affidavit. 14 In the normal course of a proceeding such as this, the opponent bears the onus of satisfying the court that the grant of a patent would be clearly invalid: see Hoffman-La Roche at 63 [29]; European Community at 541 [11]-[12]; and Cadbury Schweppes at 586 [16]. If there is no evidence capable of supporting the opposition, then the patent must be allowed to proceed to grant. See Cadbury Schweppes at 586 [15] per Lindgren J and European Community at 541 [11]-[12] per Young J. Whilst the grounds upon which the Court may refuse a patent application are those available to an opponent, whether or not relied on by an opponent, nonetheless, as Young J noted in European Community at 543 [17], the only grounds upon which the Court can act are those supported by evidence or those not requiring evidence. 15 Icon has neither tendered nor adduced evidence in support of any ground of opposition, including as to lack of entitlement. Neither Icon nor the Commissioner of Patents has made any submission in answer to the applicant. The authorities are clear that where there is "no evidence before the court capable of supporting any actual or potential ground of opposition, there is no basis on which the court can uphold any ground of opposition": see Cadbury Schweppes at 586 [16]. The applicant has tendered a not-insignificant amount of evidence in support of the appeal, including evidence as to his entitlement. There is nothing before the Court that leads me to conclude that the patent would be clearly invalid if it proceeded to grant. Having regard to the nature of the appeal and the authorities, there is no occasion for this Court to undertake a detailed consideration of the merits of the opposition, none of which have, in any event, been pressed on the appeal. 16 Accordingly, I would propose to make orders of the kind sought by the applicant. I would make no order as to the costs of the appeal. In view of the first respondent's exception to its submitting appearance, I would direct that these orders not be entered before 7 May 2012. I would also order that, unless otherwise ordered, the applicant serve a sealed copy of these orders upon the Commissioner of Patents at the expiration of 7 days and no later than 10 May 2010. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny.