Aristocrat Technologies Australia Pty Ltd v Acres Gaming, Inc - [2005] APO 27

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 760716 in the name of Acres Gaming, Inc

Title: Method for Awarding Variable Bonus Awards to Gaming Machines over a Network

Action: Request for an extension of time to serve evidence in support of an opposition by Aristocrat Technologies Australia Pty Ltd.

Decision: Issued 20 May 2005.
Abstract

Application for an extension of time in which to serve evidence in support from 21 February 2005 to 12 April 2005 was granted.
Further time was also requested in which to file a statutory declaration. However, while terms could be applied to the service of the expert’s declaration in a manner similar to that proposed by the delegates in Aristocrat Technologies Australia Pty Ltd vAcres Gaming Inc [2005] APO 16 (7 April 2005) and ExxonMobile Chemical Patents Inc v The Associated Octel Company Limited [2002] APO 34 (13 September 2002), a direction similar to that which issued in Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd [2004] APO 20 (14 July 2004) was considered more appropriate given the agreement made by the parties at the hearing.
The direction was that:

Providing the complete evidence in support is served on or before 21 May 2005, a grant the extension of time that has been sought by the patent applicant would be granted, otherwise, the extension will be refused.

If new circumstances intervene that will prevent service of the evidence by 21 May 2005, these would likely need to be of a force majeur nature in order for reconsideration of the time for serving evidence in support to occur.

Consequently, the time for filing evidence in answer under Patents Regulation 5.1(2) will be three months from either the date of refusal of the extension of time or the date of filing of the declaration.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No.760617 by Acres Gaming, Inc and a request for an extension of time in which to serve evidence in support of an opposition by Aristocrat Technologies Australia Pty Ltd.

BACKGROUND

Patent Application 36763/99 by Acres Gaming, Inc (herein after called Acres) was advertised accepted on 22 May 2003 and allocated serial number 760617. Aristocrat Technologies Australia Pty Ltd (hereinafter called Aristocrat) filed an opposition on 21 August 2003. Subsequently, Aristocrat served its Statement of Grounds and Particulars (hereinafter called SGP) on 21 November 2003.
Part evidence in support has been filed. This evidence consisted of a Statutory Declaration by Jeremy Dobbin which exhibited copies of five prior art documents (that were set out in the SGP) and was served on 24 February 2004 and a declaration by John Vincent Willis which was served on 20 October 2004.
The time for serving evidence in support has been extended by five extensions to 21 February 2005. On 5 August 2004, the applicant filed written comments but did not object to the then current extension. These written comments stated that:
“Whilst it is noted that partial evidence in support has been served in connection with this opposition, it is noted that the application for extension of time to 21 October 2004 to serve evidence in support does not actually set out the progress that has been made in relation to the preparation of the evidence in support since the previous extension of time application was made. The only reference is to the expert witness still proving “difficult to meet with” which was apparently the situation at the time that the previous extension of time application was made. The extension of time application also does not set out any proposed course of action or time frame for progressing the evidence in support.
In view of the above, the applicant hereby gives notice that it intends to object to any further extension of time applications that are made, particularly if no significant progress is demonstrated in relation to the development of the evidence in support.”
On 7 March 2005, Acres filed an objection to the current (“sixth”) extension of time application. A hearing on this extension was set down in Canberra for 12 April 2005. John Dower, patent attorney of Freehills, Sydney, represented the opponent. Boris Golja, patent attorney of Wray & Associates, Perth, represented the applicant. Both parties appeared by telephone and filed written submissions.
Previous extensions
In the following summary I have enumerated the witnesses as per the applicant’s submissions as I found them helpful in discussion of the issues.
The First Extension (21 February 2004—21 May 2004)
The first application for extension of time stated that it had taken time for the opponent to locate an expert witness to provide the necessary evidence as to common general knowledge and that whilst a potential witness (“the first witness”) had been identified, as at the date of the extension application, there was no finality as to whether or not the potential witness was able and/or willing to act in the matter. The extension application indicated that partial evidence in support will be filed by 23 February 2004. This evidence was subsequently filed.
The Second Extension (21 May 2004—21 July 2004)
The second application for extension of time stated that the opponent had located an expert witness who had reviewed various documentations and had provided preliminary views on prior art issues and that a draft statutory declaration was being prepared. Consequently, further time was requested to complete the declaration. However, the extension application noted that the witness was relatively difficult to contact due the witness’s full time employment and travel around Australia and overseas which occurred on a regular basis. Hence, it was stated that this made it difficult for the witness to met with Aristocrat’s attorneys.
The Third Extension (21 July 2004—21 October 2004)
In the third extension, it was stated that the draft declaration had not yet been completed as the witness has proved difficult to meet with due to his employment and travel commitments. Furthermore, Aristocrat’s attorney was also unavailable for a period due to absence overseas for family commitments. It was submitted that it would be extremely difficult for another attorney to take over the handling of the matter and have the evidence completed by the then current deadline. Consequently more time was required by Aristocrat in which to complete its evidence.
The Fourth Extension (22 October 2004—21 December 2004)
In the fourth extension application Aristocrat had decided not to rely on the first witness because of the witness’s employment and travel commitments. A replacement expert witness, John Willis (“the second witness”) had been used and his evidence dealing with aspects of prior art and common general knowledge was stated as having been completed and which was filed at the same time the extension application was filed (i.e. 20 October 2004). John Willis was not able to give evidence relating to certain preferred features disclosed in the opposed application and further time was required to canvass another witness (“the third witness”), who had been identified, on those aspects prior to filing that witness’s evidence.
In correspondence between the Patent Office and Aristocrat’s attorneys regarding the period of the extension sought, it was stated that “the third witness” was at the time on vacation and would not be available until 9 November 2004 and that the extension to 21 December 2004 had been requested in the event that the third witness was able to provide evidence. Subsequently, the two month extension was granted.
The Fifth Extension (21 December 2004 —21 February 2005)
The circumstances and grounds set out in the fifth extension application were that the opponent’s attorneys had conducted telephone interviews with a number of potential witnesses (possibly “fourth and fifth witnesses”) to provide evidence on certain preferred features upon which John Willis was not able to give evidence. Initial interviews did not reveal any suitable witnesses but at the end of “last week” (i.e. the week ending 18 December 2004), the opponent was able to nominate a further witness (a “sixth witness”) to give the evidence on the features on which John Willis was unable to, and further time was required to fully brief that witness and allow that witness to review documentation and to obtain evidence in declaratory form. The extension also requested further time because of the Christmas period and because the opponent was transferring responsibility of its opposition to replacement attorneys which were expected to disrupt the completion of the evidence.
The Sixth Extension (21 February 2005—21 April 2005)
In the sixth extension, the following circumstances were set out:
- Further time is required in view of the opponent transferring substantially is entire IP portfolio to its current attorneys
- It had transpired that the “sixth witness” was not suitable and that a further two witnesses (“the seventh and eighth witnesses”) were interviewed but both proved unsuitable
- Further time was required to conduct a search to establish if there are any additional witnesses;
- Supplementary evidence is being prepared from the current expert witness, John Willis
- Additional prior art has been identified which the opponent plans to submit as evidence in the next few weeks
- While new attorneys received the present case file on 14 January 2005 it was involved in a review of all of the opponent’s oppositions.
Acre’s objection
While Acres made a number of submissions, it is more convenient to deal with these submissions using the heading points from Aristocrat’s written submissions.
Transfer of carriage
As previously indicated, Aristocrat transferred its IP portfolio, which included the current application, to its current attorneys. Acres submitted that two issues arise from this transfer, firstly that Acres was prejudiced by the further delay that was caused by this transfer and secondly that Aristocrat should have taken alternative action so that the opposition could progress in a timely manner.
“The applicant should not be prejudiced by the opponent’s transfer of its IP portfolio to other attorneys, being one of the circumstances/grounds as set out in the extension of time application. This action on the part of the opponent only serves to further delay the opponent’s evidence and consequently the conclusion of the opposition and grant of the applicant’s patent. This is particularly the case in the present opposition where the opponent is well into its period for serving evidence in support — indeed, the notice of opposition was filed almost 20 months ago and evidence in support was initially due almost 14 months ago. Given that, if the opponent was in any doubt that its replacement attorneys would not be able to continue the processing of the opposition immediately, they should have taken alternative action, and e.g. the opponent could have held off transferring this opposition at least until the evidence in support was concluded. In contrast, the applicant is now being asked to endure further delay in the opponent completing its evidence in support, arising from the action taken by the opponent in transferring its cases, including this opposition as this late stage.”
Aristocrat submitted firstly that the transfer involved 13 active oppositions in addition to local and foreign prosecution files. The transfer occurred in January 2005 and was conducted not without difficulties.
“Due to the nature of the Opposition and related oppositions which were transferred at the same time, the transfer took some time and significantly disrupted the Opponent’s ability to advance its preparation of evidence in support. The Opponent’s present attorneys did not receive all relevant files until late on 14 January 2005. As will be appreciated the attorneys have required some time to review both this and related files, review the evidence that has already been prepared, study the prior art documents identified, and reach a position where the Opposition could be further advanced.”
Aristocrat also submitted that it was entitled to choose its representative in these proceedings and that this would allow the opponent to receive a fair hearing before the Commissioner.
“Furthermore the representatives of the Opponent play a core role in the identification, presentation and agitation of evidence and argument before the Commissioner and so allow the Commissioner to make appropriate determinations. For these reasons, the public and the Commissioner have a significant interest in ensuring that the Opponent, as a party to an opposition, is able to appoint a representative who it feels will best represent it.”
Aristocrat submitted that it has actively managed the transfer of this opposition so that any delay is minimised and that while it was inevitable that some disruption to the opposition’s preparation would result, to refuse an extension of time on this ground would penalise Aristocrat for reappointing its representative and thus cause significant prejudice to it, the integrity of the opposition proceedings and the public interest. In contrast, Aristocrat submitted that the prejudice claimed by the Acres to date consists only of further delay of a relatively short duration, and that whilst giving due consideration to the importance of timely resolution of the opposition proceedings, it was submitted that the prejudice to Acres is significantly outweighed by the prejudice to the opponent and the public interest. Aristocrat submitted that it would be impossible for the transfer of carriage to be conducted seamlessly and that to undertake it in a piecemeal fashion was also not an attractive or tenable operation.
Engagement of appropriate expert
Acres submitted that “it appears that at least eight potential witnesses have been approached by the opponent, one of whom has actually given evidence, one was not used as he was difficult to contact, but the bulk were considered unsuitable”. Hence, in Acres view, further time in which to locate a witness is unlikely to be fruitful. In addition, Acres submitted that as the specification was not a long one (there are only 2 independent method claims and 13 dependent claims), and that as the only remaining evidence that was sought to be produced related to certain preferred features, any further time in which to try and obtain expert evidence is only prolonging the opposition and that there is only a “hope” that the evidence will be completed prior to the expiration of the currently sought extension period. In response, Aristocrat submitted significant difficulties have been experienced in locating and retaining expert witnesses which as a result of recent mergers and acquisitions had made the task of locating relevant expert witnesses more difficult.
“However the Opponent has experienced significant difficulties in locating and engaging suitable expert witnesses due to the nature of the Opposition and the relevant field of endeavor. Such difficulties have resulted in delays to the preparation of the Opponent’s evidence, as a result of mergers and acquisitions in the gaming industry since mid-1990; the number of participants has declined. Consequently, many of the experts who would have been able to provide the necessary expert testimony are either employed by, or affiliated with, competitors of the Opponent. Such experts, even if suitable for the purposes of presenting the Opponent’s evidence, are generally unwilling to provide such evidence. These circumstances are beyond the control of the Opponent. In this regard, it should be noted that the Applicant has encountered and regularly relied on similar difficulties in seeking extensions of time.”
Acres commented that such reasons were not put forward in its reasons for the extension of time but as commented by Aristocrat this is a situation that is well known to the parties.
Furthermore, Aristocrat submitted that as a result of some recent federal court cases, the law concerning the collection of expert evidence has resulted in a lengthier process of selecting expert witnesses. These decisions held that evidence from experts relating to inventive step be accorded less weight when experts were provided with a copy of the specification prior to formulating their opinions: 3M v. Tyco [2002] FCA31 and Gambro Pty Ltd & Anor v. Fresenius Medical Care Australia Pty Ltd [2004] FCA323). Consequently, Aristocrat’s attorneys did not initially provide potential expert witnesses with a copy of the patent application in question or any relevant prior art. Instead, the attorneys took further time in interviewing and corresponding with the potential experts before providing them with the relevant documentation.
Aristocrat submitted that it had now located a suitable witness, Mr Kopif, who was interviewed on 1 April 2005 and whom the opponent believes to be suitable. Aristocrat submitted that it should have the opportunity to fully brief Mr Kopif and obtain his evidence. Aristocrat submitted that it would be in the public interest for this evidence to be served in the opposition. At the hearing, Aristocrat stated that it had interviewed Mr Kopif on 1 April 2005 and was due to conduct the second interview on 13 April 2005. During the hearing, there was some discussion on the point of how long it would take for Mr Kopif’s evidence to be ready and served. Mr Dower for the opponent conceded that the evidence would not be able to be filed if the current extension was granted but that a short extension from 21 April to 21 May would be sufficient for this to be done. Mr Golja for the applicant was prepared to agree with this suggestion.
Additional prior art
Acres submitted that while the current extension of time application (the “sixth” application) states that further time is required for supplementary evidence to be prepared from the current expert, John Willis, this appears to be in conflict with the application for extension of time filed in October 2004 in which it was stated that John Willis’s evidence had been completed and filed (on 20 October 2004). In that extension of time application, as stated previously, an alternative expert was being sought because Mr Willis was not able to give evidence relating to certain preferred features disclosed in the opposed application. Acres submitted that it is now almost 6 months since that evidence was completed and filed and now the opponent has decided that he has supplementary evidence to prepare, with no indication given as to what that evidence is nor any supporting reasons as to why it is now required nor why it was not served earlier when his other declaration was done.
Acres further submitted that the application for extension of time (the “sixth” application) also stated that additional prior art had been identified and that the opponent plans to submit as evidence in the next few weeks. However, Acres points out, that if prior art has indeed been identified, the extension of time application has not set out why that prior art could not be filed immediately and in its view it should have been filed once the opponent was aware of it.
Aristocrat submitted that it had sound reasons for not serving the additional prior art when it became aware of it. Firstly, the art came to light in February 2005 and while this art could have been served, the opponent felt that there had been insufficient opportunity to review the prior art and confirm its relevance. Aristocrat further submitted that it would be more appropriate and cause less inconvenience to Acres for the opponent to submit its evidence after having the opportunity to review it properly, rather than to submit evidence in haste which turned out to be of limited or no relevance. Secondly, Aristocrat intends to serve this prior art on the applicant on the date of this hearing.

In support of its extension application, Aristocrat submitted that recent Federal Court decisions have indicated that in appeals to the Federal Court from decisions of the Commissioner, the Federal Court has discretion to admit fresh evidence and this discretion is now being exercised more strictly: see F Hoffman La-Roche AG v New England Biolabs Inc [2000] FCA 263 and Fins Research SA v Halliburton Energy Services Inc [2002] FCA 1505. Given the likely relevance of this prior art to the proceedings, Aristocrat submitted that it is likely to be acutely prejudiced if the additional prior art is not served. Furthermore, Aristocrat submitted that it would be contrary to public interest and the interests of the Commissioner that an opposition be determined on the basis of incomplete evidence.
In response to the allegation of the inconsistency between the statement in the application for extension of time of 20 October 2004 to the effect that John Willis’ evidence had been completed and filed and the subsequent application for an extension of time on 21 February 2005 in which it was noted that supplementary evidence was being prepared by John Willis, Aristocrat submitted that this can be explained largely on the basis of the newly located prior art, which requires commentary from an expert. Aristocrat submitted that the newly identified witness will be commenting on this prior art, although this does not preclude the possibility of Mr Willis also providing comments. Aristocrat stated that the prior art that was served on the day of the hearing related to the preferred features and that it was Aristocrat intention that the new witness deal with this evidence rather than Mr Willis.
Timely manner
Acres submitted that the actions of the opponent do not appear to be consistent with the assertion made in the application for extension of time of the “proactive and thorough manner” with which the opponent asserts that its opposition is being conducted. It appears, submitted Acres, that no progress in the development of its evidence has been demonstrated as no additional evidence has been served. In its view Acres submitted that the opponent appears to be obtaining repeated extensions for its evidence for its own agenda to delay the opposition proceedings.
In reply, Aristocrat submitted the opponent’s applications for extension of time demonstrate that the opponent’s ongoing and diligent efforts in preparing evidence and that the request for another extension of time is not inconsistent with the opponent diligently prosecuting its case during the opposition. Aristocrat submitted that it was taking steps to ensure that its evidence is completed as soon as possible but noted that the opponent has limited control over the availability or suitability of the expert witnesses or their workloads.
DECISION
The relevant regulations, in relation to extensions of time to serve evidence in opposition matters, are regulations 5.10(2) and 5.10(5) and the law regarding these extensions is well known. These provisions provide, inter alia, that the Commissioner must not grant an application for an extension of time unless the Commissioner is reasonably satisfied that an extension of time is appropriate in all the circumstances. The relevant legislation is as follows.
“Regulation 5.10(2) The Commissioner may:
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
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 paragraph 5.4 (1) (a)."
Sub- regulation 5.10(5) provides
"The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a) if he or she proposes to grant an application by a party is reasonably satisfied that the other party has been notified of the application; and
(b) if he or she proposes to act on his or her own motion ensures that the parties are notified of the proposed action; and
(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."
In a recent decision of a delegate of the Commissioner of Patents, Acres Gaming Inc v Aristocrat Technologies Australia Pty Ltd [2005] APO 6 (21 February 2005), and there are many examples of this, the delegate set out that an extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & CoLtd v Commissioner of Patent (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) A1PC 91-697, 50 IPR 398 are relevant. The general principles that flow from these decisions are as follows:
a) the power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations: Ferocem (supra) at AIPC 38, 208; IPR 247-8 and Goninan (supra) at AIPC 39, 434; IPR 220.
b) Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement: Ferocem (supra) at AIPC 38, 207-6; PR 247). It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patent Office: Ferocem (supra) at AIPC 38, 208; IPR 247, Goninan (supra) at AIPC 39, 436; IPR 222.
c) The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration: Goninan (supra) at AIPC 39, 435-6; IPR 222.
- in order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings: Goninan(supra) at AIPC 39, 438; IPR 225-6.
- the significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself: National Starch (supra) at [33].
- the public interest is not protected merely because some evidence has already been served: Goninan (supra) at AIPC 39, 438; IPR 225.
d) The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration: Ferocem (supra) at AIPC 38, 208; IPR 247.
Acres submitted that Aristocrat has not set out “good reasons” as to why the extension is required. In its view, the reasons are that evidence is now required from a witness who had completed his evidence 6 months ago and that previously unidentified (and thus unserved) prior art has been identified and that the opponent, after having approached at least 8 witnesses, was now embarking upon a renewed witness expedition to see if it can identify a suitable witness.
Acres submitted that 20 months after filing the notice of opposition, these are not “good reasons” for an extension as they are not consistent with a diligent preparation of evidence by the opponent to bring its evidence to a conclusion. In contrast, Acres submits that it seems that the opponent’s evidence is no closer to completion.
Acres submitted that that the nature and significance of the evidence is to be assessed on any relevant material, including the patent specification and the SGP as per National Starch (supra) and in applying this to the facts of the present application, no case for an extension is made out. In particular, Acres submitted that
- The evidence was merely in relation to certain preferred features which were not identified;
- There appears to be nothing exceptional which requires an additional 6 months from the evidence of John Willis to prepare and requires that at least 6 other witnesses, who have proved unsuitable, be contacted.
- Additional prior art has not been served, nor identified, nor has the SGP being amended.
Thus, Acres submitted that the “relevant materials” (as per National Starch (supra)) do not support the implied significance of this evidence and consequently, it submits that these reasons do not constitute a “good reason” for the extension as required by Ferocem (supra).
While Acres submitted the opponent should not be granted the extension sought based on the reasons provided, it nevertheless acknowledged that if an extension were to be granted that it should be with conditions attached, e.g. that no further extensions will be granted. Acres acknowledged that as the hearing is taking place so close to the end of the extension period, that any further extension that was thought appropriate in the circumstances should be for only a short period for the opponent to serve any evidence that it has ready to hand.
CONCLUSION
In my view, there is no evidence to demonstrate that Aristocrat has not been diligent in preparation of its evidence, although the development of that evidence has been inhibited by the circumstances as set out in the current extension of time application and in its current submissions. Aristocrat sought to distinguish the circumstances of this case from similar cases in which the delegate made critical observations on diligence: In Acres (supra) and in Aristocrat Technologies Australia Pty Ltd v Acres Gaming Inc [2005] APO 2 (17 January 2005), the extensions were allowed, despite a finding of conduct that had been less than diligent. Aristocrat submitted that unlike these cases there has been no lack of diligence by the opponent. However, even in the diligent preparation of evidence there comes a time when searching for further experts has to cease and the application has to be progressed in an expeditious manner. On the facts of this case I think that time has come.
As set out in the submissions, new prior art has come to light and been served and an additional expert witness has been identified and interviewed. It is likely that the evidence that was filed on 12 April 2005 is significant as it pertains to the preferred features. It is my view that Aristocrat should be given an opportunity to present it. Clearly, it is in the interest of all parties that this evidence be considered. Taking these matters into consideration and being mindful of the circumstances and grounds as set out in the extension of time application which were supported and amplified in the submissions, I am reasonably satisfied that an extension of time from 21 February 2005 to 12 April 2005 (the date of the hearing and the date of filing of the additional evidence) is warranted. Therefore, I grant the extension of time from 21 February to 12 April 2005.
In relation to a possible further extension to 21 May 2005, I believe that a short extension from 12 April 2005 to 21 May 2005 is appropriate notwithstanding my previous comments. As the expert has being identified and the opponent has given a commitment that its evidence will be served at the latest by 21 May 2005, it is in the public interest and in the parties interests to allow the opponent an opportunity to serve the declaration of its expert witness whose testimony on the additional prior art is likely to be significant. As the parties were agreeable to this course of action, I believe that an extension to 21 May 2005 is appropriate subject to the filing of the witness’s declaration. If the declaration has not being filed by this date, I shall refuse the extension beyond the 12 May 2005 subject to any circumstances of a force majeur nature that might arise. Consequently, the extension of time from 12 May 2005 to 21 May 2005 will be granted subject to the filing of the declaration.
Acres suggested that terms should be applied. While, I believe that terms could be applied to the service of the expert’s declaration in a manner similar to that proposed by the delegates in Aristocrat Technologies Australia Pty Ltd vAcres Gaming Inc [2005] APO 16 (7 April 2005) and ExxonMobile Chemical Patents Inc v The Associated Octel Company Limited [2002] APO 34 (13 September 2002), I prefer to follow the direction that issued in Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd [2004] APO 20 (14 July 2004) as I find that the latter direction is more appropriate to the facts of the case. Given the agreement made by the parties at the hearing, I am of the view that the appropriate way to proceed is as follows:
- Providing the complete evidence in support is served on or before 21 May 2005, I will grant the extension of time that has been sought by the patent applicant, otherwise, the extension will be refused.
- It may well be that new circumstances intervene that will prevent service of the evidence by 21 May 2005. Such circumstances, as indicated by the delegate in Amcor (supra), would likely need to be of a force majeur nature in order for me to reconsider the time for serving evidence in support.
Consequent upon these actions, the time for filing evidence in answer under Patents Regulation 5.1(2) will be three months from either the date of refusal of the extension of time or the date of filing of the declaration.
COSTS
Acres submitted that the circumstances and grounds as set out in the fourth to sixth extensions of time application do not reasonably satisfy the Commissioner that an extension of time was appropriate in the circumstances. Acres submitted that the award of costs, in this instance, should be in favour of the applicant against the opponent regardless of whether “the extension is refused, granted, granted conditionally, or granted in part only”.
Acres submitted that it had acted reasonably in objecting to the sixth extension of time application based upon the fact that the reasons submitted in the fourth to sixth extension required further explanation. In reply, Aristocrat submitted that the circumstances as set out in the sixth and prior extensions were adequately explained.
In this case, while the extension was granted, it required further explanation from the opponent that was presented at the hearing. Furthermore, I note that further evidence was filed on the day of the hearing with an expectation that the evidence in support will be completed by 21 May 2005. Consequently, in these circumstances, I make no award of costs.
G.M.Cox
Delegate of the Commissioner of Patents
20 May 2005
Patent attorneys for the applicant: Wray & Associates, Perth
Patent attorneys for the opponent: Freehills Patent & Trade Mark Attorneys, Sydney