Dow Chemical Co v Francis J. Smith & anor [1984] FCA 387

CATCHWORDS

Patents - judicial review - costs - concession that application cannot succeed.

Patents Act 1952 5.59,160

THE DOW CHEMICAL COMPANY v. FRANCIS JOHN SMITH (COMMISSIONER OF PATENTS) and

IMPERIAL CHEMICAL INDUSTRIES PLC

V. No. G 290 of 1983

Northrop J. Melbourne

20 November 1984

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V. No. G 290 of 1983

GENERAL DIVISION

BETWEEN : THE DOW CHEMICAL COMPANY Applicant and FRANCIS JOHN SMITH (COMMISSIONER OF PATENTS ) and IMPERIAL CHEMICAL INDUSTRIES PLC Respondents CORAM: Northrop J. DATE: 20 November 1984 PLACE: Melbourne ORDER

THE COURT ORDERS THAT the application be dismissed with

costs.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY V. No. G 290 of 1983

GENERAL DIVISION

BETWEEN

THE DOW CHEMICAL COMPANY Applicant

and

FRANCIS JOHN SMITH (COMMISSIONER OF PATENTS )

and IMPERIAL CHEMICAL INDUSTRIES PLC Respondents CORAM: Northrop Jd. DATE: 20 November 1984 PLACE: Meibourne

REASONS FOR JUDGMENT

On 25 November 1983 the Commissioner of Patents ("the Commissioner"), pursuant to paragraph 160(2)(a) of the Patents Act 1952 ("the Act"), extended the time in which Imperial Chemical Industries PLC ("I.C.I.") maght lodge a notice of opposition under sub-section 59(1) of the Act. The indulgence was granted to I1.C.I. in relation to Application No. 529649 in the name of The Dow Chemical Company ("Dow"). Notice of the application was advertised in the Official Journal on 16 June 1983. Under sub-section 59(1) of the Act any notice of opposition should have been lodged on or before 16 September 1983. A notice of objection was lodged by I.C.I. on 30 September 1983 accompanied by an application

under paragraph 160(2)(a) of the Act for an extension of time

to enable the late lodgement of the objection to be effective. The application for the extension of time was supported by a statutory declaration. Notice of the application was given to Dow which objected to the extension of time being granted. The application was heard by the Commissioner on 18 November 1983 1n proceedings in which I.C.I. and Dow were each represented by a patent attorney. In his reasons for granting the extension of time under paragraph 160(2)(a) of the Act, the Commissioner acted on the view that he did not have to decide whether a serious opposition was foreshadowed by I.C.I., a matter that might have been relevant in an application for a further period in which to lodge an objection under the discretion conferred by sub-section 59(1) of the Act; see Vangedal-Nielson Vv. Commissioner of Patents (1980) 33 A.L.R. 144 per Bowen CJ at pp.149-50. In passing it is noted that the nature of the discretion under sub-section 59(1) 1s markedly different from the nature of the discretion under paragraphs 160(2)(a) and (b). Under the former, the application must be made within the three months first mentioned in the sub-section and the further period must not exceed three months. Under the latter, no time is mentioned but the applicant for the extension of time must establish: "(a) an error or omission on the part of the person concerned or of his agent