Acres Gaming, Inc v Aristocrat Technologies Australia Pty Ltd - [2006] APO 25

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 752636 in the name of Acres Gaming, Inc.

Title: Method of Operating Networked Gaming Devices

Action: Application by Acres Gaming, Inc for an extension of time under Regulation 5.10(2) to serve evidence in answer, and objection thereto by Aristocrat Technologies Australia Pty Ltd

Decision: Issued 30 June 2006 .
Abstract

A serious defence of an opposition is foreshadowed, preparation of the expert and other evidence in answer has been progressed in a diligent manner and further time is needed to finalise the evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, I consider that the applicant’s and public’s interests in having the opposition determined on its merits hold sway over the patent opponent’s and public’s interests in having the matter decided earlier and in a more efficient and orderly manner.
The extension of time to 20 June 2006 for Acres Gaming, Inc. to serve evidence in answer is allowed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 752636 in the name of Acres Gaming, Inc. and an application under Regulation 5.10(2) for an extension of time to serve evidence in answer to an opposition by Aristocrat Technologies Australia Pty Ltd.

BACKGROUND

Patent application 752636 in the name of Acres Gaming, Inc. (Acres) was filed on 6 December 1999 as 63152/99 and was advertised accepted on 26 September 2002. A notice of opposition to the grant of the patent was filed by Aristocrat Technologies Australia Pty Ltd (Aristocrat) on 24 December 2002. The statement of ground and particulars was served on 24 March 2003.
Evidence in support was completed by Aristocrat on 20 December 2004. The period for Acres to file evidence in answer expired on 20 March 2005 with extensions of time to 20 March 2006 having been granted without objection but with comment by Aristocrat. Aristocrat has objected to the instant application to extend the time for service of evidence in answer by a further 3 months to 20 June 2006.
Both parties appeared by telephone conference on 5 May 2006. Mr. Stephen Krouzecky, patent attorney of Wray & Associates, Perth, represented Acres. Mr. John Dower, patent attorney of Freehills Patent & Trade Mark Attorneys, Sydney, represented Aristocrat.
APPLICATION FOR EXTENSION OF TIME
4.   Acres’ first application for an extension of time under Regulation 5.10(2) to 20 June 2005 to serve evidence in answer to Aristocrat’s opposition gave the circumstances and grounds as follows:

“A review and assessment of this evidence in support that has been served has commenced, but has not yet been completed. Attempts have also been made to identify an appropriately skilled expert who is available to assist in the preparation of evidence in answer.

Accordingly, further time is required to complete the review and assessment of the evidence in support with a view to preparing and serving the evidence in answer.”
5.   Acres’ second application for an extension of time to 20 September 2005 gave the circumstances and grounds as follows:

“The review and assessment of the considerable number of documents relied upon in the evidence in support has almost been completed by the patent attorneys for the applicant and arrangements are being made with two witnesses now identified for involvement with this case, to be briefed and their evidence collated. As both of these witnesses have been involved with other oppositions for the applicant of related subject matter to this patent application, which are being run in parallel to this opposition, it has been necessary to timetable their involvement with the present opposition. Given the progress that the patent attorneys for the applicant have now made in relation to the present opposition and that the witnesses’ commitments in relation to these other oppositions has almost been completed for the time being, it is expected that preparation of evidence in answer can now proceed reasonably quickly.

Given the familiarity of the witnesses with the these other opposition proceedings, it is not anticipated that an inordinate amount of time will need to be spent in getting these witnesses up to speed with the issues of this particular case and collating and serving their evidence.

It should be appreciated, however, that in view of the limited Particulars provided by the opponent in respect of the relatively large number of documents relied upon in the evidence in support, it has been necessary for the patent attorneys for the applicant to take a reasonable amount of time to read, identify and ascertain the relevant portions of these documents, in order for the applicant to determine the case it has to answer, before being able to identify and brief appropriate witnesses.

Accordingly, further time is required to complete briefing the witnesses and collate their replies so that the evidence in answer can be finalised and served on the opponent.”
6.   Acres’ third application for an extension of time to 20 December 2005 gave circumstances and grounds detailed to about 2¹/₂ A4 pages along the following lines:

“Since the filing of the application for the second extension of time on 20 June 2005, the applicant has made further progress with the two witnesses it has identified and engaged for this case thus far. Unfortunately, it has been very difficult to organise meetings with the two witnesses to complete briefing them for the reason that they have been involved in extensive travel and consulting responsibilities both overseas and in Australia.

……….

Moreover, in preparation for the originally intended briefing of Mr Spencer on 7 and 8 September 2005, the patent attorneys for the applicant retained independent counsel to relevantly assist them in relation to not only briefing Mr Spencer, but also reviewing and settling draft statutory declaration(s), and advising generally in relation to the opposition. This decision was taken in light of the effect of the Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd decision (3M v Tyco), reported in 56 IPR 248, with regard to various evidentiary issues which need to be taken into account for the briefing of expert witnesses. ……….

……….

In the light of the above delays and the four other oppositions being run in conjunction with the present opposition, investigations have been undertaken into locating additional witnesses. ………

……….

It has also been recently determined that some evidence filed by other witnesses in relation to the opposition decided on Australian patent application 686824, the ultimate parent of the application, is also relevant to the present application. ……….

……….

Notwithstanding the delays that have occurred, the briefing of Messrs Spencer and Dimond is at an advanced stage, with preparation of relevant questionnaires for both parties almost complete, pending counsel’s review. ……….

The applicant’s defence of the present opposition is serious and clear progress is being made to adduce evidence in answer in the face of difficult circumstances where the two principal expert witnesses have largely been unavailable during the last 5 months, and where changing case law has demanded careful and astute handling of expert witnesses in relation to the manner in which they are briefed.

Given that:
·the opponent sought extensions of time providing it with a period of 2 years in which to adduce its evidence in support since filing notice of opposition,
·this is only the third application for extension that has been sought by the applicant, and
·this is the applicant’s only opportunity to adduce evidence in answer to defend its patent application;
we respectfully submit that it is entirely reasonable and indeed only equitable that the applicant be provided with more time in which to complete service of its evidence in answer.”
7.   Acres’ fourth application for an extension of time to 20 March 2006 gave circumstances and grounds detailed to about 3 A4 pages along the following lines:

“Since the filing of the application for the previous extension of time to serve evidence in answer on 20 September 2005, following the formal engagement of Neil Spencer as an expert witness by the applicant, much effort has been focused on completing the formal engagement of Philip Dimond and also identifying and engaging other experts to assist the applicant in their defence.

……….

Consequently, it has been necessary to identify other experts to investigate and test assertions of the prior art made in the opponent’s evidence in support to enable the applicant to be in a position to brief its main expert witnesses in a manner that would otherwise compromise the independence of the witness in light of the aforementioned precedent.

A further difficulty that has been encountered in the present opposition is that much of the opponent’s evidence in support is based on assertions of prior use of the Computa game system. Investigating and assessing this type of prior art evidence is generally more involved than assessing documents, because experts who would have suitable knowledge of that alleged prior use must be first identified, and then interviewed. As the prior art asserted dates back 19 years to 1986, an additional level of difficulty in identifying experts with the required knowledge arises.

……….

During the last three months another expert has been identified for the purpose of investigating and testing assertions of the prior art made in the opponent’s evidence in support to enable the applicant to be in a position to brief both Messrs Spencer and Dimond. Interviews with this expert have commenced only recently, but have to be conducted on an occasional basis on the insistence of the expert’s employer, given the time consuming nature of these interviews and the work required to be undertaken by this other expert. Nonetheless, these interviews have already resulted in identifying other potential sources of information that may be of assistance in investigating the opponent’s assertions of prior use. Further time is required to complete the requisite questions to be put to both Messrs Spencer and Dimond and to explore the other potential sources that have been identified by the expert.

……….

A further factor that has influenced the preparation of the applicant’s evidence in answer, is the transition taking place in the management of the applicant’s intellectual property following the acquisition of the applicant by IGT (International Game Technology). Whilst the formality of that latter acquisition took place in October 2003, there has been progressive take up of control by the new owner of the applicant’s IP, including this opposition, from the applicant, Acres Gaming, Inc. ……….

……….

The applicant’s defence of the present opposition is serious and clear progress is being made to prepare evidence in answer in the face of difficult circumstances where the availability of witnesses has been a hindering factor, changing case law has demanded careful and astute handling of expert witnesses in relation to the manner in which they are briefed, changes in the ownership and control of the applicant have brought about delays in direction and control of the evidence to be prepared, the ability of a potential witness to provide evidence is yet to be determined, investigations are being undertaken in relation to the opponent’s assertions of prior use, and most importantly, the instructing US attorneys in the opposition appear to be changing.

Given that:
·the opponent sought extensions of time providing it with a period of two years in which to serve its evidence in support from filing the notice of opposition;
·this is the fourth application for extension of time that has been sought by the applicant;
·this is the applicant’s only opportunity to serve evidence to defend its patent application; and
·there are difficulties in relation to the availability of not only the proposed expert witnesses but also counsel and the US and Australian attorneys, because of the Christmas and New Year vacation periods;
we respectfully submit that it is entirely reasonable and indeed only equitable that the applicant be provided with more time in which to complete service of its evidence in answer.”
8.   Acres’ fifth and instant application for an extension of time to 20 June 2006 gives circumstances and grounds detailed to about 2 A4 pages along the following lines:

“……….

Nonetheless, the patent attorneys for the applicant have been working diligently with counsel to determine the appropriate process to adopt with briefing the witnesses in the light of the impact of various decisions concerning certain evidentiary issues, as arising from recent case law, as identified in the previous application for extension of time. This process has now been determined, whereby it has been decided to brief the witnesses incrementally by adopting a multistage approach. The approach being followed includes up to 3 stages, with each stage comprising one or more parts.

Both of the engaged witnesses have been briefed in the process being followed, and following settling of the questions comprising the first part of the first stage with counsel, each witness has been provided with a Part 1 questionnaire to complete the first part of the first stage of the process.

Both witnesses have indicated that they were intending to provide their report to the Part 1 questionnaire before the present date, and that it was intended that they would by now be in receipt of the brief for the second part of stage 1. Unfortunately, due to some unforeseen circumstances, matters have not progressed as quickly as expected; however, steady progress has been made, and is continuing to be made.

……….

As Mr Spencer is an extremely valuable witness in the present proceedings, we believe that extra time should be made available for to him to work through the staged process.

……….

As the briefing process is now quite structured and definite progress is being made with Mr Dimond, we believe that extra time should be made available for him to work through the staged process.

……….

IGT, on the other hand, have been able to identify another person, skilled in the art in Australia at the relevant time of the priority date of the above application, who may be able to provide further evidence in relation to the present proceedings. The patent attorneys for the applicant are presently making enquiries as to the suitability and availability of this prospective witness. Given the progress that has been made with establishing the briefing process for the present witnesses, if the prospective witness is suitable and available, we anticipate being able to adduce evidence from him expeditiously.

……….

Aside from progress with witnesses, the “other” expert referred to above has also been able to identify the existence of some key evidence in relation to the principal evidence of prior use being relied upon by the opponent. In order to obtain this evidence, it is necessary to undertake a prescribed procedure through a regulatory authority over which the applicant has no control. The procedure for requesting this evidence has commenced and further time is required in order to progress through the process and receive and adduce this evidence.

As can be seen above, the applicant’s defence of the present opposition is serious, and clear progress is being made to prepare evidence in answer in the face of difficult circumstances where the availability of witnesses continues to be a hindering factor. Further significant issues include changes in the ownership and control of the applicant, which have brought about delays in the direction and control of the evidence to be prepared.

In summary, given that:
·the opponent sought extensions of time providing it with a period of almost two years in which to serve its evidence in support from filing the notice of opposition;
·this is the fifth application for extension of time that has been sought by the applicant;
·this is the applicant’s only opportunity to serve evidence to defend its patent application; and
·that evidence in answer from the two engaged experts is now being acquired and collation for serving is imminent;
we respectfully submit that it is reasonable and equitable that the applicant be provided with more time in which to complete service of its evidence in answer.”
GROUNDS OF OPPOSITION
9.   Aristocrat's grounds of opposition are that
·the invention is not a patentable invention, in that it is not a manner of manufacture within the meaning of Section 6 of the Statute of Monopolies
·the invention is not a patentable invention, in that it is not novel because it was published in Australia before the priority date of the claims or is otherwise not novel
·the invention is not a patentable invention, in that it does not involve an inventive step over the prior art base, and
·the specification does not comply with s.40(2) or (3).
10.Particulars were filed in respect of all grounds of opposition with 11 patent documents being cited, subsequently expanded by amendment to also include publication and use of the ‘Computa Game’ system.
RELEVANT LAW
11. The relevant provisions under the Patents Act 1990 for extending the time in which to serve evidence in answer are subregulations 5.10(2) and 5.10(5) as follows:
(2)The Commissioner may extend the time within which the party may take a step prescribed in this Chapter (not being a step that is taken under regulation 5.3 or 5.3AA, paragraph 5.4(a) or subparagraph 5.8(1)(a)(i)):
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies; and
(c) after the party has served a copy of the application on the other party.
(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) …
(b) …
(c) in either case:
(i) gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii) is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
The law relevant to the determination of the instant matter has been conveniently elaborated as follows:
“(a)The broad discretion afforded by Regulation 5.10 cannot be reduced to insistence on imperative compliance with particular requirements;
(b)The exercise of this discretionary power requires proper, genuine and realistic consideration of all the relevant aspects that pertain to the application;
(c)The provision of a satisfactory explanation of the delay is a relevant consideration, but is not mandatory;
(d)The public interest in determining a serious opposition on its merits is a relevant consideration and must be balanced with the requirement that matters before the patent office should be dealt with in an efficient, orderly manner and not be unduly prolonged; and
(e)The interests of the opponent, the applicant and any other parties are a relevant consideration.”
[Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Co (1969) 120 CLR 136; Ferocem Pty Limited v. Commissioner of Patents (1994) 28 IPR 243; A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213; National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33]
SUBMISSIONS
Both parties filed and presented submissions in conjunction with the Hearing of 5 May 2006. On 11 May 2006, Acres filed an amended Table 1 to its submissions. On 6 June 2006, Aristocrat made further submissions including further corrections to amended Table 1. The parties’ submissions are quite detailed and will be referred to where appropriate in my decision.
DISCUSSION

The Commissioner’s delegate determined that a serious opposition is foreshadowed in granting Aristocrat’s application for an extension of time to 24 December 2004 to file evidence in support. From the detailed explanation of progress in preparing expert evidence in answer provided in the applications for extension of time, I consider that it is prima facie apparent that a serious defence of the opposition by Acres is also foreshadowed.
The circumstances presented by Acres to justify the instant fifth application for extension of time relate to preparation of expert evidence and possibly other evidence relevant to prior use of the Computa game system.
I refer to the following comments by Sackville J. in A Goninan and Co Ltd v Commissioner of Patents and Another (1997) 38 IPR 213:
“In order for the commissioner or his delegate to give proper, genuine and realistic consideration to the aspect of the public interest I have identified, it is necessary to consider the nature of the evidence the opponent seeks to adduce and the significance of that evidence for the opposition proceedings. I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits.”
The presented circumstances of obtaining statutory declarations from expert witnesses are prima facie relevant to the grounds and particulars of the opposition. The disclosures of patent and other documents for the purposes of determining novelty under the Patents Act 1990 are as interpreted by the person skilled in the relevant art. Consequently, it is a necessary legislative consideration in s.59 opposition matters whether corroborated expert evidence is warranted and/or required to properly determine the claims of the opposed patent application and any anticipatory disclosures. [Ore Concentration Company (1905) Ltd v Sulphide Corporation Ltd (1914) 31 RPC 206; Bloch and Ilford Ltd’s Patent (1936) 53 RPC 92; The General Tire & Rubber Co v The Firestone Tyre and Rubber Company Limited & Others (1972) RPC 457; Populin v HB Nominees Pty Ltd (1982) 41 ALR 471] Similarly, for determination of inventive step, and particularly for determination of prior use, under s.7 of the Patents Act 1990. It is also relevant that Aristocrat’s evidence in support of its opposition includes expert evidence. Consequently, the nature of the evidence for which the extension of time is sought is inherently relevant to the determination of the opposition on its merits, at which determination the content of that evidence would be fully assessed to the extent appropriate.
I agree with Aristocrat’s submissions that
·    the Commissioner should start from the position that filing of evidence in opposition matters should normally be capable of completion within the 3 month period provided by regulation 5.8,
·    except where the Commissioner is reasonably satisfied that an extended time period is appropriate in all the circumstances under regulation 5.10,
·    the onus rests squarely on the party seeking the extension of time to justify its grant by the Commissioner, and
·    there is a public interest in having opposition matters dealt with expeditiously.
While an initial period of 3 months is available under the legislation to file evidence in patent oppositions, obviously the legislation allows extended periods where this is ‘appropriate in all the circumstances’. It is not unusual for much longer periods than the initial 3 month period to be required as was the case for Aristocrat to file evidence in support in the instant opposition. I also refer to Re: Neville William Lyons (carrying on business as Mitty's Authorised Newsagency) v The Registrar of Trade Marks (1983) 78 FLR 217, where Beaumont J. said
"Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time.”
While the matter before Beaumont J. was the delegate's decision in respect of an application for extension of time for the opponent to file evidence in support of their opposition to registration of a trade mark, the consideration before Beaumont J. is directly relevant to the instant consideration. Evidence, in the form of statutory declarations from appropriately skilled practitioners in the relevant industry(s), to establish the disclosure of an anticipatory document or the state of the common general knowledge, years prior at the priority date of the accepted patent claims, is also notorious for taking considerable time. Evidence suggestive of this for oppositions involving the technology of the gaming machine industry was submitted by Acres and confirmed by Aristocrat. While each application for extension of time under regulation 5.10 must be assessed on its merits alone, it is to be expected that relevant factors of the industry are likely to impact both the patent applicant and the opponent.
In any case, were it to be that the public interest of having oppositions dealt with expeditiously was now paramount because of the overall timeframe of the instant opposition, my consideration of all relevant circumstances would require me to consider the balance between whether both the opponent’s and applicant’s interests had been fairly served in the overall timeframe of the opposition and the causation of the delay to the public interest contributed by each party. In this consideration, the 18 month extension granted to Aristocrat to file evidence in support and the extension to 15 months now applied for by Acres to file evidence in answer, and the circumstances of each, would be relevant factors.
In this regard, apart from the relevance explained in the preceding paragraphs, the justification provided in Acres’ application in referring to the extensions granted to Aristocrat is of little relevance to the instant application, its relevance being limited to being suggestive that obtaining expert evidence in the gaming machine industry for patent oppositions can be time consuming without being probative, of itself, that this is the case in this instance.
The circumstances presented by Acres in its instant application are consistent with Acres’ submissions and Acres’ previous applications for extension of time. Acres’ applications for extension of time present an ongoing account with increasing detail of its actions in preparing evidence in answer. Acres’ submissions do not change or supplement the circumstances presented in its application(s), they merely consolidate the explanations.
Aristocrat has submitted that there appear to be inconsistencies in the events put forward in Acres’ extension of time applications and consequently, the delay has not been fully explained and the extension has not been adequately justified. Aristocrat seems to have attributed distorted meanings to selected excerpts from Acres’ applications that are neither the plain meaning of those excerpts nor their meaning in the context of Acres’ overall applications. On the balance of probabilities, I consider it appropriate to accept the events as plainly and consistently described by Acres.
Aristocrat has pointed to particular events described in Acres’ application for extension of time as not being relevant to causing a delay and hence, not warranting an extension of time. My understanding of Acres’ applications is that, in providing justification for an extension of time ‘in all the circumstances’, they not only provide an explanation of the critical path timeline for filing evidence in answer (although not expressed in those terms) but also of progress to date. To my mind, this is as it should be. The former explains that more time is needed to complete the evidence while the latter explains that progress continues to be made while demonstrating that the applicant for the extension has continued to act diligently.
Aristocrat has submitted that many of the factors advanced by Acres as justifying the extension of time are generic to the normal conduct of patent opposition proceedings and/or are within Acres’ control. As such, it is expected that Acres will address such factors diligently and with appropriate resourcing. Obviously however, if having done so, an extension of time may still be appropriate ‘in all the circumstances’ if the consequent elapsed timeframe inherent to those factors is outside of the currently allowed time period.
Aristocrat has submitted that the retention of counsel and the related staged approach to obtaining expert evidence do not justify the extension of time. The 2002 decision of the Full Federal Court of Australia in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (3M v Tyco), 56 IPR 248, is directly relevant to obtaining expert evidence in the instant opposition. The Court commented
"The manner in which the evidence of some of the experts in the present case was brought into existence suggests that relatively little weight should be given to certain of that evidence. ……To give the Patent to a prospective witness is tantamount to leading the witness.”

"Most expert witnesses called in patent cases before the court have specialised knowledge based on training, study or experience. ……Questions of obviousness and inventive step involve questions of law or questions of mixed fact and law. Such experts will not necessarily have a detailed understanding of the intricacies of patent law and, indeed, may have no particular knowledge of that field at all.”
In the same manner that the Court found wanting Tyco’s then procedures for obtaining expert evidence on a patent matter, it is likely that others’ procedures would be similarly deficient. Consequently, I accept that Acres believed that due professional diligence required it to obtain expert evidence in the instant opposition in a considered manner. The manner adopted by Acres of
·    retaining counsel to advise on an objective procedure of obtaining expert evidence,
·    deciding the objective procedure appropriate to the present opposition to be a staged questionnaire,
·    engaging informed experts to provide the necessary technical content of the staged questionnaire, and
·    managing the two independent experts through the procedure of the staged questionnaire
prima facie seems to me to be a reasonable and diligent approach, as long as the timeframe of that approach continues to be appropriate ‘in all the circumstances’ under regulation 5.10. In this regard, the evidentiary requirements explained by the Federal Court in 3M v Tyco supra are quite clearly relevant circumstances to be taken into account.
Aristocrat has raised a pertinent question as to whether Acres’ timing of engagement of counsel has contributed to the extended period for filing evidence in answer. My understanding of the explanations provided in Acres’ applications for extension of time is that the various tasks leading to filing of evidence in answer have generally been progressed in parallel where there hasn’t been a prerequisite dependency. Independent counsel was engaged to assist in the intended briefing of Mr Spencer on 7 and 8 September 2005, inter alia. It may be that Acres could have recognised the need for counsel at an earlier point in time, however I do not consider any failure to do so, if there was such, as necessarily a lack of diligence on its part. Due diligence does not require that every decision made or not made by Acres was wholly sound with the benefit of hindsight. From Acres’ overall applications for extension of time, I believe that Acres has consistently acted with professional care and competent consideration.
Acres has put forward its acquisition by International Game Technology (IGT) as justification in part for the extension of time applied for. The acquisition by IGT has made Acres’ task of filing evidence in support more complicated, further suggesting that Acres has continued to act diligently in progressing preparation of evidence in answer. However, to my mind, little weight should be given to the acquisition by IGT in assessing whether the extension of time applied for is appropriate in all the circumstances. Because IGT’s acquisition was a business decision unrelated to both Aristocrat and the public, it should carry little weight compared to the weight given to the consequential adverse impact on Aristocrat and the public in the instant matter.
Aristocrat has submitted that Acres’ seeking evidence from the regulatory authority does not warrant extension of time. Acres’ application for extension of time submits that one of their expert witnesses believes that the evidence is relevant to the principal ground of prior use put forward by Aristocrat. On the basis of Acres’ application, prima facie, the evidence may be relevant to determination of the opposition on its merits. However, the timeframe for this evidence is not determinable at this stage.
In considering the instant application for extension of time by Acres to file evidence in answer, it is not in Aristocrat’s interests, nor is it in the public interest of having matters before the Patent Office being dealt with in an efficient, orderly manner and not being unduly prolonged, for the extension to be allowed. However, it is apparent that a serious opposition and a serious defence of the opposition are foreshadowed. Consequently, it is in Acres’ interests, and in the public interest of having a serious opposition determined on its merits, that the extension be allowed. Because the evidence being prepared by Acres is, prima facie, of substantive relevance to determination of the opposition, with Acres continuing to progress that evidence in a diligent manner, I consider that the balance of these considerations resides, at this stage, with allowing the extension of time.
While it is well known that the gathering of evidence from third parties in patent opposition matters usually takes considerable time, Acres’ instant application for an extension of time would extend the period for it to file evidence in answer to the opposition from the initial 3 months provided in the legislation to 18 months at this stage. Such a delay is of serious concern, both to the opponent's interests and to the public interest of expeditious and efficient completion of matters before the Patent Office, and consequently obligates the continued attention of Acres in avoiding any unnecessary delays.
DECISION
In summary of my discussion above, I consider that a serious defence of an opposition is foreshadowed, preparation of the expert and other evidence in answer has been progressed in a diligent manner and further time is needed to finalise the evidence, the nature of which is of significance to determination of the opposition. Consequently, at this stage of the proceedings, I consider that the applicant’s and public’s interests in having the opposition determined on its merits hold sway over the patent opponent’s and public’s interests in having the matter decided earlier and in a more efficient and orderly manner. Accordingly, I grant the patent applicant Acres Gaming, Inc. an extension of time to 20 June 2006 in which to file evidence in answer.
COSTS
The normal practice is that costs should follow the event. In the present matter, I have decided that the extension of time was allowable in accordance with the determined law on the circumstances and considerations presented in the application for extension of time, even though not all justification put forward by Acres Gaming, Inc. was considered to be to the point. Consequently, I award costs against Aristocrat Technologies Australia Pty Ltd.
Bill Major
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Wray & Associates, Perth
Patent attorneys for the opponent: Freehills Patent & Trade Mark Attorneys, Sydney