Evidence On Appeal From the Patent Office

Sherman v Commissioner of Patents [2008] FCA 1026 (9 July 2008)
http://www.austlii.edu.au/au/cases/cth/FCA/2008/1026.html
This case concerned an appeal from the decision of the Commissioner of Patents to uphold an opposition to the subject patent finding that the applicant was not entitled to the patent, and that the invention was not novel, and did not involve an inventive step.

Pursuant to O 6 r 8(b) of the Federal Court Rules the Commissioner was added as a respondent when the opponent withdrew from the proceeding.

When the Respondent sought to submit an affidavit of the delegate and to tender the exhibits thereto the applicant objected that elements of the evidence did not meet the requirements of the Evidence Act 1995 (Cth).

Jessup J found for the Applicant stating that the proceeding on foot, ‘... is a final proceeding in the original jurisdiction of the court, the resolution of which will establish binding rights and obligations.’

His Honour went on to, ‘ ... reject the Commissioner’s submission that the provisions of the Evidence Act do not apply in relation to material that was before the delegate. I regard the proceeding as a conventional one in the original jurisdiction of the court, in which the questions which were before the delegate are again in controversy, and must be decided on the evidence that is tendered and admitted here. The admission of that evidence is, in my view, regulated by the Evidence Act in the normal way.’ Concluding that, ‘the Commissioner has, in my view, insuperable problems under s 59(1) of the Evidence Act.’