SDS Digger Tools Pty Ltd v Rear [1999] FCA 835

SDS Digger Tools Pty Ltd v Rear [1999] FCA 835

The respondent should have amended the specification after considering the applicant's evidence-in-chief by 1 October 1997. The failure to amend and persistent prosecution of unsustainable claims unnecessarily prolonged the proceedings and caused the applicant to incur avoidable costs. The applicant is entitled to costs on a party-and-party basis up to 30 September 1997 and, subject to exceptions for reasonableness, indemnity costs thereafter. The respondent's argument that the applicant also contributed to the prolongation is not established.

Parties
Applicant: SDS Digger Tools Pty Ltd; Respondent: Ian Graeme Rear
Jurisdiction
Australia
Judgment Date
18 June 1999
Procedural Posture
Patent Appeal / Costs Application Following Leave to Discontinue
Outcome
The application for costs is granted in favour of the applicant.
Legal Topics
Costs, Patent Opposition, Specification Amendment, Indemnity Costs
Intellectual Property Patents Costs Patent Opposition Specification Amendment Indemnity Costs

Case Brief

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Parties

SDS Digger Tools Pty Ltd

Applicant

Ian Graeme Rear

Respondent

Procedural Posture

Patent Appeal / Costs Application Following Leave to Discontinue

Legal Issues

  1. 1 Whether the respondent should pay the applicant's costs of the proceedings including on an indemnity basis after a certain date
  2. 2 Whether both parties contributed to unnecessary protraction of the proceedings
  3. 3 Whether and when the amendment to the patent specification should have been made

Ratio Decidendi

The respondent should have amended the specification after considering the applicant's evidence-in-chief by 1 October 1997. The failure to amend and persistent prosecution of unsustainable claims unnecessarily prolonged the proceedings and caused the applicant to incur avoidable costs. The applicant is entitled to costs on a party-and-party basis up to 30 September 1997 and, subject to exceptions for reasonableness, indemnity costs thereafter. The respondent's argument that the applicant also contributed to the prolongation is not established.

Court Disposition

The application for costs is granted in favour of the applicant.

Orders

  • The respondent pay the applicant's costs, including reserved costs, incurred prior to 30 September 1997 on a party-and-party basis, and after 1 October 1997 on an indemnity basis as specified;
  • The respondent pay the applicant's costs of this costs application;