There are a number of other proceedings that may be brought under the Patents Act where the Commissioner is not a party but has a right to be heard. Consequently, there are also obligations on parties in a number of these proceedings to serve copies of court documents on the Commissioner.

Relevant proceedings include:

Section 105 - Court ordered amendments

Section 120 - Infringement

Section 125 - Non-infringement declaration

Section 128 - Unjustified threats

Section 133 - Compulsory licenses

Section 134 - Revocation following a compulsory license

Section 138 - Revocation

Section 192 - Rectification of the register

Requirements to serve documents on the Commissioner

The Patents Act and Federal Court Rules require certain documents to be served on the Commissioner in relation to the court actions listed above.

For actions under sections 105, 120, 125, 128, 133, 134 and 138 the Federal Court rules require the application and specified accompanying documents to be served on the Commissioner. In all cases other than for section 105, this must be done at least 14 days before the return date fixed for the proceedings. For the special requirements of section 105, see 3.14.5 Section 105 Amendments.

For sections 133, 134 and 138, 139 of the Patents Act also specifies that the applicant must serve a copy of the relevant application on the Commissioner. Copies of any orders made by the Court under these provisions must also be served on the Commissioner by the Registrar of the Court (see sec 140).

In the case of an application for rectification of the register under sec 192, sec 192(3) requires that notice of the application be given to the Commissioner.

Effect on proceedings in the Patent Office

The Patents Act provides in a number of circumstances for actions in the Patent Office to be prohibited while relevant proceedings are underway. For example, under sec 101P the Commissioner must not decide an opposition under sec 101M where proceedings are pending in relation to the innovation patent without leave of the Court.

Otherwise, saving an order of the Court to that effect, proceedings in the Patent Office will not be stayed merely because Court proceedings are underway relating to the same or related patent or application. Rather, the Commissioner will consider in each case the relevant circumstances including:

whether the court proceedings are directly relevant to the proceedings before the Commissioner; and
whether a deferral would clearly disadvantage one of the parties or the public interest.

See RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd [1998] APO 43.

It should, however, be noted that the Court has been reluctant to order a stay of Patent Office proceedings. Thus, for example, in RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd [1999] FCA 17 Justice Lindgren stated that:

“I have no doubt that this Court should decline to grant an injunction having the effect of staying a proceeding before a specialist tribunal where the only issue to be decided by the Court is one which is properly before that tribunal and which it was given power to decide.”

For considerations as to whether the Court will stay its proceedings pending actions in the Patent Office, see Apotex Pty Ltd v Les Laboratoires Servier (No 6) [2012] FCA 745.

Role of the Commissioner

The Commissioner has a general right to appear and be heard in the proceedings listed above, see Federal Court Rule 34.23, sec 139 and sec 192, but as indicated in Rule 34.23 is not a party to those proceedings. Consequently, it is not appropriate to name the Commissioner as a respondent in those actions and the Commissioner will resist being joined as a party to such proceedings. In this regard, it should be noted that the Commissioner is subject to the orders of the Court whether a party or not.

While having the right to appear the Commissioner will only do so in very limited circumstances, including where ordered or requested by the Court, where necessary to make submissions on matters that go to the Commissioner’s powers and procedures or otherwise where there are significant issues relating to the integrity of the patent system. Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302 is an example of a matter where the Commissioner intervened in relation to a proposed rectification of the Register. Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 is another example where the Commissioner intervened in relation whether a computer-implemented invention was a manner of manufacture.

In Meat & Livestock Australia Limited v Cargill, Inc (No 2) [2019] FCA 33 the Commissioner was invited to make submissions on the interpretation of new provisions of the Act. The Court proposed that the Commissioner's costs of appearing be paid (at [470]).

Evidence of matters before the Patent Office

From time to time parties to proceedings under the Act request evidence of matters in the Patent Office including the practices that the Commissioner applies or may have applied previously.

Generally these matters can properly be made the subject of a signed letter or certificate pursuant to sec 197 and a sworn affidavit will generally not be provided.