On 2 June 2009, Justice Kenny of the Federal Court ruled on an application made by BMW Plastics Pty Ltd which sought an order under Section 97(3) of the Patents Act that the Commissioner of Patents be directed to re-examine the specification of Australian Standard Patent No. 2001235262 owned by VIP Plastic Packaging Pty Ltd. Justice Kenny refused to make the order sought by BMW Plastics.  

VIP had in August 2008 commenced proceedings against BMW Plastics for infringement of the VIP Patent. BMW Plastics, by way of its defence, denied infringement of the VIP Patent and cross-claimed alleging that the VIP Patent was invalid and sought orders that it be revoked.  

Sub-section 98(1) of the Patents Act makes it clear that re-examination under section 97 is limited to the issues of novelty and obviousness. Sub-section 98(1) also makes it clear that, on a re-examination, the Commissioner must "ascertain and report on … to the best of his or her knowledge". Further, by virtue of sub-section 98(2), the Commissioner is limited to considering the prior art base as disclosed in documents.  

Following an adverse report on a complete specification by the Commissioner, the patent applicant or patentee may, within two months of the adverse report, file a statement disputing the whole or any part of the report. Where the re-examination is directed under section 97(3), a copy of the Commissioner's report and any statement filed by the patent applicant/patentee must be given to the Court that gave the direction. VIP, for whom Davies Collison Cave acted, opposed BMW Plastics' application which was filed in May 2009.

In support of its application, BMW Plastics submitted that the Court should order reexamination because the matters in issue were appropriate to be determined by the expertise of the Patent Office and the determination of these issues was likely to avoid expense.  

Justice Kenny agreed with VIP that the Commissioner's report after re-examination would not reduce the cost of the proceeding and expedite its determination. Firstly, in the Judge's opinion, the Commissioner's report is not binding on the Court and the Court would still have the task of deciding the issues of novelty and lack of inventive step by reference to admissible evidence. Further, regardless of the lack of novelty and inventive step grounds, there will be a need for evidence, including expert evidence, to be put before the Court on various other issues, particularly the other invalidity grounds of attack relied upon by BMW Plastics.