REASONS FOR JUDGMENT

1                                             This was a motion to amend under s 105 of the Patents Act 1990 (Cth) which, as to two out of the three claims sought to be amended, was unsuccessful.  To that extent, it has not been put to me that costs should not follow the event, and therefore that the applicants should not pay the respondents’ costs of the motion.

2                                             There are two respects in which the applicants resist an omnibus order that they pay the costs of the motion.  The first relates to the third of the claims, as to which they were successful.  That was an amendment which sought to correct a typographical error in the relevant claim, and it has been put to me that it was not until about three days before the commencement of the hearing of the motion that the respondents indicated for the first time their readiness to accept that amendment.

3                                             Counsel for the applicants accepted what I would have thought would be a fairly obvious proposition, even to someone not directly involved, that the costs associated with this third amendment would be a minor part of the applicants’ costs generally.  When a fairly rudimentary investigation was undertaken of the extent to which the applicants might have expended costs in preparation for making this amendment, my attention was drawn to an affidavit affirmed on their behalf on 12 February 2010.  It does seem to me that this affidavit would have been necessary in any event to lay out the basic framework within which the need to amend arose, and that the costs of it would have been incurred by the applicants in any event, even if the respondents had promptly indicated their assent to the amendment.

4                                             There is, according to the authorities to which I have been referred, a general principle that, under s 105, the applicant for an amendment will pay the costs of the respondent, even where the amendment is allowed: Eli Lilly & Co v Pfizer Research and Development Company NV/SA (2003) 59 IPR 234; Wimmera Industrial Minerals v RGC Mineral Sands Ltd, (Federal Court of Australia, unreported, 12 November 1997).  That principle, in my opinion, is sufficient to give the respondents a prima facie entitlement to the costs of so much of the motion as was concerned with the amendment which, in the events as they transpired, was uncontroversial.

5                                             In the material, and in the circumstances to which I have been referred, I cannot perceive any special or particular element which would make it appropriate to depart from this principle.  The view I take is, therefore, that the circumstance that the respondents did not, until shortly before the hearing, indicate their agreement to that relatively minor amendment is not such as would disentitle them to having their costs of the motion in relevant respects.

6                                             The other respect in which the applicants have urged that I should not award costs against them relates to a motion of which the respondents gave notice on 9 June 2010.  That motion was concerned with questions of discovery and inspection of documents, and generally with questions as to the extent to which applicants in a s 105 application are under an obligation to disclose documentary traces of the consideration which they gave to the need to amend.  I gave judgment on that motion on 28 June 2010, at which time I reserved the costs: CSL Limited v Novo Nordisk Pharmaceuticals Pty Ltd [2010] FCA 671

7                                             Counsel for the applicants has now submitted that the way in which that motion was resolved is such as would make it appropriate that there be no order for costs on that motion, and that, in effect, it be carved out of any costs to which the respondents would otherwise be entitled on the applicants’ motion to amend.

8                                             The Notice of Motion of 9 June 2010 had three aspects, under each of which the respondents sought orders which would have required the applicants to improve upon the discovery, or inspection, which they had previously given.  As my reasons of 28 June 2010 indicate, in only one of those respects were the respondents successful.  Having briefly reviewed those reasons today, and having heard the submissions of the parties as to the appropriateness of making a costs order which reflects the degrees of success which the parties had on that occasion, I am disposed to accept the submission made on behalf of the applicants that the Notice of Motion ought to be treated as a discrete proceeding within the application to amend, and that the appropriate costs orders on the motion should reflect the relative degrees of success and failure which the parties had at that level.  I consider that the applicants’ estimate that justice would be done if there were no requirement that either party pay any of the others’ costs in relation to that motion is an appropriate one, and I will make an order to that effect. 

9                                             In other respects, the order will be that the applicants pay the respondents’ costs of the motion under s 105 of the Patents Act. 

10                                          Counsel for the applicants has also sought an extension to 21 days of the time permissible for an application for leave to appeal under O 52 r 10.  This application was not resisted by counsel for the respondents, and, given the importance and complexity of the issues dealt with by my judgment this morning, I think it is entirely appropriate that I should take that step to resolve any doubt as to the period within which an application for leave should be filed, if the view should be taken by the applicants that leave is required.

Associate:

Dated:         18 November 2010