Aristocrat Technologies Australia Pty Ltd v IGT - [2008] APO 3

ABSTRACTS OF DECISIONS

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application : No. 785277 in the name of Aristocrat Technologies Australia Pty Ltd

Title: Gaming machine with transparent symbol carrier

Action: Application under s223(2) for an extension of time to file a notice of opposition by IGT and the matter of a notice requiring production of certain documents served on IGT.

Decision: Issued 24 January 2008.
Abstract

Lawful excuse for not complying with a Notice requiring production of certain documents including drafts of declarations claimed. Lawful excuse found in relation to some but not all of the documents covered by the notice – claim of privilege, including in relation to US patent attorneys, and implied waver considered.

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 785277 in the name of Aristocrat Technologies Australia Pty Ltd, application under s223(2) for an extension of time to file a notice of opposition by IGT and the matter of a notice requiring production of certain documents served on IGT.

BACKGROUND

This matter arises in the context of an application by IGT for an extension of time to oppose Aristocrat's patent application 785277. The deadline for filing the notice of opposition was 14 March 2007 but IGT filed its notice and application for an extension six days later on 20 March. This was followed on 2 May 2007 by a statutory declaration supporting the extension made by Mr Keith Moore who is an in-house patent attorney employed by IGT in the United States.

Aristocrat advised that it objected to the granting of an extension however in a letter dated 28 May 2007 a delegate of the Commissioner wrote to IGT and Aristocrat advising that he:

“was reasonably satisfied that the information provided by the opponent establishes an error or omission on the part of the opponent or their agent and that this error or omission led to the failure to file the Notice of Opposition within the prescribed time”
Nevertheless, as is the practice of the Commissioner in these circumstances, the delegate invited Aristocrat to indicate if it wished to be heard on the matter.

Aristocrat confirmed that it wished to be heard and on 16 July 2007 requested that the Commissioner issue a notice to IGT requiring production of certain documents. Aristocrat indicated that it wished to “establish whether IGT’s patent attorney Keith Moore was properly instructed in the matter of the preparation of his evidence filed in support of the application”. IGT responded to this claiming privilege in the documents sought to be produced and asserting that they lacked relevance, in particular in that the notice encompassed documents generated after the filing of the notice of opposition. IGT also filed on 23 August a statutory declaration by IGT's Australian patent attorney Stephen Krouzecky, said by IGT to corroborate the statements made by Mr Moore in support of the extension of time.

In the event, a notice requiring production was issued by an acting Deputy Commissioner…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] APO 3
Decision Date: 24 January 2008

CaseChat Overview and Summary

The matter of Aristocrat Technologies Australia Pty Ltd v IGT [2008] APO 1 concerns an application by IGT for an extension of time to oppose a patent application by Aristocrat. IGT's application was six days late, but was supported by a statutory declaration from a patent attorney employed by IGT. Aristocrat objected to the extension and requested a notice requiring IGT to produce certain documents related to the preparation of the declaration. IGT objected to the notice on the basis of privilege and relevance. The case raises issues of privilege, lawful excuse for non-compliance with the notice, and the proper exercise of the Commissioner's discretion under the Patents Act.

The court considered the statutory privilege applicable to communications between patent attorneys and their clients, noting that while privilege applies to Australian patent attorneys, it may not necessarily apply to foreign patent attorneys. The court found that legal professional privilege may apply to communications with US patent attorneys, as they must be attorneys-at-law. The court also considered whether privilege had been waived by IGT through their references to privileged communications in the declarations. The court found that privilege had not been waived for communications related to the preparation of the declaration, but had been waived for certain communications concerning IGT's interest in the application and the state of mind of the patent attorney.

The court allowed IGT a further period to produce the requested documents, but required them to provide a summary list and specific basis for any lawful excuse claims. The court awarded costs against Aristocrat, as they were unsuccessful in relation to much of the scope of the notice and the reasons for which it was initially sought.

The final orders of the court include allowing IGT a further period to produce documents, requiring IGT to provide a summary list and specific basis for any lawful excuse claims, and awarding costs against Aristocrat according to Schedule 8 of the Regulations.

Orders