7.9 Costs

Also in this Chapter:

• 7.1 Role and Powers of the Commissioner in Hearings
• 7.2 Oppositions, Disputes and other proceedings-Procedural summaries
• 7.3 Directions
• 7.4 Opposition Documents, Requirements and Amendments
• 7.5 Evidence
• ​​​​​​​7.6 Production of Documents, Summonsing Witnesses
• 7.7 Withdrawal and Dismissal of Oppositions
• 7.8 Hearings and Decisions
• 7.10 The Register of Patents
• 7.11 Extensions of Time and Restoration of Priority
• 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances
• 7.13 Orders for Inspection of non OPI Documents
• 7.14 Appeals AAT, ADJR, The Courts
• 7.15 Computerised Decisions

Sub-chapters:

• 7.9.1 Principles in Awarding Costs
• 7.9.2 Scale of Costs, Variation of the Scale
• 7.9.3 Awarding Costs, Taxation
• 7.9.4 Security for Costs
• 7.9.5 Exemplary Situations in Awarding Costs​​​​​​​

Key Legislation:

Patents Act

• s32 Disputes between applicants etc. 
• s210 Commissioner’s powers
• s211 Recovery of costs awarded by the Commissioner
• s219 Security for costs

Patents Regulations:

• reg 22.8 Costs
• Schedule 7 Fees
• Schedule 8 Costs, expenses and allowances

Note: This information applies to awards of costs whether made before, on or after 15 April 2013.

In this topic:

Relevant Legislation

The Act

The Regulations

Overview​​​​​​​

Relevant Legislation

The Act

The Regulations

Overview

The Commissioner’s power to award cost is set out in section 210(1)(d) of the Patents Act:

"210.  (1) The Commissioner may, for the purposes of this Act:

(d) award costs against a party to proceedings before the Commissioner."

Section 211 should also be noted:

“211.  Costs awarded by the Commissioner against a party are recoverable as a debt.”

Regulation 22.8 further prescribes the costs that may be awarded:  

"22.8(1) The Commissioner must not award costs in proceedings to which this Division applies, other than costs specified in Schedule 8 unless each party to the proceedings has had the reasonable opportunity to make a submission on the matter of the award of those costs.

(2) The Commissioner may award an amount:

(a) for costs in respect of a matter specified in column 2 of an item of Part 1 in Schedule 8; or

(b) in respect of the expenses or allowances of a person in relation to proceedings to which this Division applies."

The power of the Commissioner of Patents to award costs (under section 210(d) of the Patents Act 1990 as it was then) was challenged in the Federal Court in Stack and Another v Commissioner of Patents and Others [1999] FCA 148; (1999) 43 IPR 663 on the ground that it was an impermissible conferral of judicial power on an administrative body.  Drummond J rejected the argument, holding that power to award costs under the Patents Act cannot be described as an essential element of the exercise of judicial power - R v Quinn; Ex Parte Consolidated Foods Corporation [1977] HCA 62; (1977) 138 CLR 1 applied.

The Court also indicated that “proceedings” were matters related to a determination involving the exercise or non-exercise of a power conferred by the Act which the Commissioner is permitted to make “only after hearing the persons with opposing interests in the exercise of the power”. Consequently the Commissioner’s power to award costs is not limited to opposition proceedings but extends to inter partes actions generally, such as objections to extensions of time, e.g. for lodging evidence, section 32 matters etc.  See also Super Internet Site System Pty Ltd v Sensis Pty Ltd [2006] APO 27.

It follows that an award of costs is only appropriate in inter parte matters. In ex parte matters the party seeking the exercise of the Commissioner’s powers bears its own costs.

Under reg 22.8(2) an amount may be awarded in proceedings in relation to both (a) and (b) and any individual cost item can come from either subparagraph (a) or (b) (GS Technology Pty Ltd v GSA Industries (Aust) Pty Ltd [2000] APO 12).  

It should also be noted that in the Act and Regulations “costs” is used broadly and, for example, includes both the specific cost items set out in part 1 of Schedule 8 as well as expenses and allowances set out under part 2.