Commissioner's expertise rejected

Case: VIP Plastic Packaging Pty Ltd and B.M.W Plastics Pty Ltd (Unreported)

Court: Federal (Victoria)

Judge: Kenny

Date: 2 June 2009

The arguments

VIP commenced proceedings with an application claiming to be the registered owner of an Australian patent and claiming that B.M.W had infringed the patent. B.M.W denied infringement and sought an order that the patent be revoked on the grounds that the invention lacked novelty and inventive step. VIP denied that the patent was invalid.

B.M.W applied for an order that the Commissioner of Patents be directed to re-examine the complete specification of the patent. VIP opposed that order.

By way of background, the re-examination provisions were introduced in the hope of utilising expertise in the patent office to decide appropriate questions and reduce the costs of court proceedings. Where court proceedings are not pending, the Commissioner can revoke the patent if the patentee fails to overcome an adverse report resulting from the re-examination. However, where court proceedings are pending, as was the case here, the Commissioner can only provide a report which may be of assistance to the parties. Ultimately, however, it would be up to the court to determine the validity of the patent.

B.M.W. argued that the questions of novelty and inventive step would require expertise in the relevant technological art, which the Commissioner (but not a judge) might be said to have. Thus, B.M.W.submitted that the Commissioner might exercise this technical skill without the need for evidence from expert witnesses, and that re-examination before the Commissioner was conducive to economy. B.M.W further undertook that it would not challenge the Commissioner's report. VIP declined to give that undertaking. Indeed, VIP argued that the report would be of limited value and even if relied upon by the court would not preclude or obviate the need for evidence on the issues of novelty or inventiveness. In fact, according to VIP, the Commissioner's report would be likely to raise the issues for debate and resolution would not be apt to resolve the remaining claims of invalidity and infringement.

The decision

Kenny agreed with VIP on the basis that the Commissioner's report after re-examination is not binding on the court. Indeed, the provision of the report would not relieve the court of the task of deciding issues of novelty and lack of inventive step by reference to the inadmissible evidence. If the Commissioner's report were unfavourable to VIP, VIP would want to put on evidence and dispute the report.

Kenny did take into account that it did not seem that the trial would be particularly lengthy or complex.


It is unfortunate that the option of using the Commissioner was not taken up. However, the Act does not provide the Commissioner with any teeth, so the court's decision was to be expected. If lengthy and inaccurate judgements are to be avoided, the technical expertise of the Commissioner should be used and enforced, where appropriate.


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