Cytec Industries Inc. v Nalco Company (No 3) [2021] FCA 1332

Cytec Industries Inc. v Nalco Company (No 3) [2021] FCA 1332

Nalco should pay 70% of Cytec's costs, including reserved costs, because Cytec succeeded in its overall challenge to the patent application despite failing on some substantive arguments, and it was entitled to adjust its case after Nalco late raised the grace period argument; the costs of amendments arising from that late change in forensic landscape should not be borne by Cytec.

Jurisdiction
Australia
Judgment Date
01 November 2021
Procedural Posture
Patent Opposition Appeal Costs Determination / Costs Following Judgment in Appeal From Delegate's Decision
Outcome
Nalco ordered to pay 70% of Cytec's costs of the proceedings, with disputed assessment deferred until the conclusion of the proceedings.
Legal Topics
['patent Application Opposition' 'costs Apportionment' 'grace Period' 'lack of Support' 'clear and Complete Disclosure' 'novelty' 'inventive Step' 'best Method']
['intellectual Property' 'costs' 'patents'] ['patent Application Opposition' 'costs Apportionment' 'grace Period' 'lack of Support' 'clear and Complete Disclosure' 'novelty' 'inventive Step' 'best Method']

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Procedural Posture

Patent Opposition Appeal Costs Determination / Costs Following Judgment in Appeal From Delegate's Decision

Legal Issues

  1. 1 ["What proportion of Cytec's costs Nalco should pay after Cytec succeeded in opposing the grant of the patent application but failed on some grounds." "Whether Cytec's abandonment of grounds after Nalco raised the grace period argument should affect the costs order, including reserved costs."]

Ratio Decidendi

Nalco should pay 70% of Cytec's costs, including reserved costs, because Cytec succeeded in its overall challenge to the patent application despite failing on some substantive arguments, and it was entitled to adjust its case after Nalco late raised the grace period argument; the costs of amendments arising from that late change in forensic landscape should not be borne by Cytec.

Court Disposition

Nalco ordered to pay 70% of Cytec's costs of the proceedings, with disputed assessment deferred until the conclusion of the proceedings.

Orders

  • ["The Respondent/Cross-Appellant pay 70% of the Appellant's/Cross-Respondent's costs of the proceedings, including costs reserved by order 3 of the orders made on 27 August 2020." 'Any disputed assessment of the quantum of the costs in order 1 be determined by a Registrar of the Court, such determination to be...