FEDERAL COURT OF AUSTRALIA New England Biolabs v F Hoffman-La Roche AG [2004] FCAFC 246 NEW ENGLAND BIOLABS v F HOFFMAN-LA ROCHE AG N 2754 OF 2003 KIEFEL, ALLSOP AND CRENNAN JJ 3 SEPTEMBER 2004 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N2754 OF 2003 ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: NEW ENGLAND BIOLABS APPELLANT AND: F HOFFMAN-LA ROCHE AG RESPONDENT JUDGES: KIEFEL, ALLSOP AND CRENNAN JJ DATE OF ORDER: 3 SEPTEMBER 2004 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. There be no order as to the costs of the Commissioner of Patents. 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 N2754 OF 2003 ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN: NEW ENGLAND BIOLABS APPELLANT AND: F HOFFMAN-LA ROCHE AG RESPONDENT JUDGES: KIEFEL, ALLSOP AND CRENNAN JJ DATE: 3 SEPTEMBER 2004 PLACE: SYDNEY REASONS FOR JUDGMENT (COSTS) THE COURT: 1 A question has arisen as to whether the Commissioner of Patents, who exercised her right to intervene in the appeal, ought to have her costs paid by the unsuccessful appellant. There is no dispute that the Court has a discretion to award them if it considers it appropriate to do so. 2 There are a number of factors which militate against the Commissioner having an order for costs in the circumstances of this appeal, in our view. The Commissioner appeared because of her special interest in the proper construction of the Patents Act 1990 (Cth) and regulations which she administers. In Virbac (Aust) Pty Ltd v Merck Patent GMBH (1994) 52 FCR at 541, Burchett J considered that such a consideration is one which tends to sway the Court against imposing the Commissioner's costs on an unsuccessful party. We respectfully agree with that approach. 3 Further, there was no particular technical assistance which the Commissioner was in a position to give the Court. Whilst the appeal raised a matter of interest and importance to the Commissioner in the discharge of her statutory functions, the submissions put on her behalf, for the most part, covered the ground dealt with by the respondent. In our view, it would not be in the interests of justice to require the appellant to pay the Commissioner's costs. I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Kiefel, Allsop and Crennan. Associate: Dated: 3 September 2004 Solicitor for the Appellant: Blake Dawson Waldron Solicitor for the Respondent: Spruson & Ferguson Solicitor for the Commissioner of Patents: Australian Government Solicitor Written submissions received. Date of Judgment: 3 September 2004