7.9.3 Awarding Costs, Taxation

Also in this Chapter:

• 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:

• s211 Recovery of costs awarded by Commissioner 

Patents Regulations:

• reg 22.8 Costs

Note: On 1 October 2024, the scale of costs awardable under Schedule 8 of the Patents Regulations was increased.  The new amounts identified in the regulations apply to awards of costs made for inter-parties matters that commenced on, or after 1 October 2024.  For inter-parties matters commencing before 1 October 2024, the previous scale applies.  Interlocutory matters that commence on or after 1 October 2024 will be subject to the increased scale of costs as these are distinct proceedings attracting their own awards of costs.  

In this topic:

Awarding costs

Agreement Between Parties

Taxing of Costs​​​​​​​

Awarding costs

The awarding of costs is a discretionary matter to be determined by the hearing officer after taking into account all the facts of the case (American National Can Co. v W.R. Grace & Co.-Conn [1994] APO 29; (1994) AIPC 91-063; 30 IPR 292).  In this sense there are no hard-and-fast rules to be followed in awarding costs.

However, generally costs are awarded for each determination or decision that may be made within the broader proceedings, including matters concerning dismissal of opposition, extensions of time and further evidence, rather than waiting for final determination of the proceedings.  However, in complex situations it may be more convenient to defer the award until the matter is finally determined. See e.g. Re Application by Guertler 4 IPR 208.

Hearing officers should ensure that the parties have the opportunity to make detailed submissions on costs at the hearing of the substantive matter or, in appropriate circumstances, in writing following the hearing.  Where appropriate, the hearing officer may consider seeking detailed submissions and dealing with the ultimate question of costs after the issuance of the decision on the matter before them. For administrative efficiency separate costs hearings should be avoided unless made necessary by the particular circumstances of the case.  In particular, parties who believe that an award of costs should be made that departs from the usual award according to Schedule 8, should bring that to the attention of the hearing officer before any award of costs is made; see also 7.9.2 Scale of Costs, Variation of the Scale.

The hearing officer’s finding on costs will usually be included at the end of the decision on the substantive matter and more often will involve an award of costs against one or other of the parties or will specify no award of costs.  Costs are awarded AGAINST a party, rather than TO a party, so as to clearly identify who has to pay the costs. See also the wording of section 211, which states that costs awarded by the Commissioner AGAINST a party are recoverable as a debt.

For exemplary situations in awarding costs see 7.9.5 Exemplary Situations in Awarding Costs.

Usually the matter of costs is settled to the mutual satisfaction of the parties without further involvement of the hearing officer.  However where agreement is not reached a party may request taxing of costs.

Agreement Between Parties

Parties sometimes make agreements between themselves as to costs and ask the Commissioner to award costs accordingly.  This commonly occurs where a party withdraws from the action.

Disputes on the existence of such agreements most frequently arise when a party advises the other party that they intend to withdraw from the matter on the basis of each party bearing its own costs - and the other party makes no formal acceptance of the offer.  In such cases the Commissioner will proceed on the basis that no agreement existed.

See Wormald v. May Oatway (1965) 35 AOJP 3422.

Taxing of Costs

A party to proceedings may request taxation of an amount awarded under reg 22.8(2).  There is no fee for taxation of costs.

On receipt of that request, the opposition officer sends a copy of the claim to the party liable for costs, providing 21 days for comment or filing an objection to the claim.  After this period the request is submitted to the taxing officer, who (acting under reg 22.8(3)) applies the scale of costs.  Finally, a letter setting out the taxed costs is sent to the parties, indicating that those costs will be certified at the expiration of 21 days.

Where the amount of costs set by the taxing officer is challenged, the taxation is subject to review by the Commissioner (reg 22.8(4)).  In these circumstances the parties will be asked to provide submissions (and may be heard in the matter), and a delegate of the Commissioner (typically the original hearing officer) will issue a decision in the matter.

It is important to note that a review of taxation is restricted to the correctness of the taxation in the context of the award of costs made in the decision which awarded costs. It is not a forum to dispute the correctness of the award of costs (GS Technology Pty Ltd v GSA Industries (Aust) Pty Ltd [2000] APO 12).  (There is no basis during taxation for a hearing officer to change an award of costs, if in hindsight, a different award of costs might have been more appropriate.  It is only possible if the words used to express the award of costs, does not give effect to the hearing officer’s intention at the time the decision was issued - a situation which should never arise).

In the event of an appeal being filed against a decision of the Commissioner, the parties frequently do not seek taxation of their costs before the Commissioner until the appeal has been resolved.  Nevertheless, the mere fact that a decision is appealed does not prevent a party from seeking a taxation of its costs before the Commissioner, nor prevent the Commissioner from dealing with that taxation - and arguments that, if the appeal is successful, a party will have difficulty recovering costs it will have paid on taxation, are not relevant.  Note, however, that the Commissioner cannot proceed to tax the costs if the appellant has obtained an order of the court (or AAT) staying the decision.