IGT v Commissioner of Patents [2008] FCA 15

IGT v Commissioner of Patents [2008] FCA 15

The Court was satisfied that it had jurisdiction under the ADJR Act and that it was arguable, without finally deciding the point, that the delegate had erred in law by treating the requirement that the further evidence be significantly different and crucial as effectively determinative, thereby potentially excluding consideration of other relevant matters. Because the parties accepted that arguable error and shared a common position, the consent order setting aside the decision and remitting the application was within power and appropriate.

Jurisdiction
Australia
Judgment Date
17 January 2008
Procedural Posture
Application for Review Under the Administrative Decisions (judicial Review) Act 1977 (cth) of a Decision of a Delegate of the Commissioner of Patents in Patent Opposition Proceedings / Reasons for Judgment on Consent Order Setting Aside Decision of the Commissioner of Patents
Outcome
The delegate's decision refusing IGT leave to serve further evidence was set aside and the application was remitted to the Commissioner of Patents to be determined according to law; costs orders made to date were vacated and each party was to bear its own costs.
Legal Topics
['judicial Review' 'patent Opposition Proceedings' 'further Evidence' 'exercise of Discretion' 'consent Orders' 'remittal to Decision Maker']
['administrative Law' 'intellectual Property' 'patents'] ['judicial Review' 'patent Opposition Proceedings' 'further Evidence' 'exercise of Discretion' 'consent Orders' 'remittal to Decision Maker']

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Procedural Posture

Application for Review Under the Administrative Decisions (judicial Review) Act 1977 (cth) of a Decision of a Delegate of the Commissioner of Patents in Patent Opposition Proceedings / Reasons for Judgment on Consent Order Setting Aside Decision of the Commissioner of Patents

Legal Issues

  1. 1 ["Whether the Court had jurisdiction under the Administrative Decisions (Judicial Review) Act 1977 (Cth) to review the delegate's decision made under reg 5.10 of the Patents Regulations 1991 (Cth)." "Whether it was arguable that the delegate's refusal to permit IGT to serve further evidence was flawed by error of law through fettering the discretion or failing to take account of relevant considerations." "Whether the proposed consent order setting aside the delegate's decision and remitting the application to the Commissioner of Patents was within power and appropriate."]

Ratio Decidendi

The Court was satisfied that it had jurisdiction under the ADJR Act and that it was arguable, without finally deciding the point, that the delegate had erred in law by treating the requirement that the further evidence be significantly different and crucial as effectively determinative, thereby potentially excluding consideration of other relevant matters. Because the parties accepted that arguable error and shared a common position, the consent order setting aside the decision and remitting the application was within power and appropriate.

Court Disposition

The delegate's decision refusing IGT leave to serve further evidence was set aside and the application was remitted to the Commissioner of Patents to be determined according to law; costs orders made to date were vacated and each party was to bear its own costs.

Orders

  • ['The decision of the Commissioner of Patents, by her delegate MG Kraefft, made 9 August 2007, refusing the application by the applicant to serve further evidence in support of its opposition to the grant of Australian patent application 754689, be set aside.' 'The application by the applicant to serve further...