Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd
[2003] APO 58
•24 December 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent Application : No. 762889 in the name of Aristocrat Technologies Australia Pty Ltd
Title: Gaming Machine with a Fixed Wild Symbol
Action: An application under section 223 for an extension of time to file a notice of opposition by Konami Australia Pty Ltd
Decision: Issued
Abstract
The prospective opponent had an established procedure in place that, had it not been for a breakdown in that procedure, would have resulted in filing of the notice of opposition by the due date. The circumstances of the procedural breakdown were adequately explained.
The prospective opponent acted very promptly upon recognition that the procedural breakdown had occurred. A serious opposition is foreshadowed with the interests of the public and the prospective opponent outweighing the interests of the patent applicant.
In the circumstances, an extension of time to 16 October 2003 to file notice of opposition was granted under the provisions of s.223(2) of the Patents Act 1990 and note that, if it were necessary, the extension of time would be granted under s.223(2A).
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 762889 in the name of Aristocrat Technologies Australia Pty Ltd and application under section 223 for an extension of time to file a notice of opposition by Konami Australia Pty Ltd.
BACKGROUND
Patent Application 39027/01 was filed in the name of Aristocrat Technologies Australia Pty Ltd (Aristocrat) on 23 March 2001 as PCT application PCT/AU01/00323, published as WO01/72387, claiming priority from Australian provisional patent application PQ6637. The application was advertised accepted in the Official Journal as Patent Application 762889 on 10 July 2003 and hence, any notice of opposition to the grant of a patent on the application was due to be filed by Friday, 10 October 2003.
A notice of opposition was filed by Konami Australia Pty Ltd (Konami) on the following Thursday, 16 October 2003, by facsimile transmission, together with an application for extension of the time to file the notice of opposition and indicating that a supporting statutory declaration would be forthcoming. On 27 October 2003, Konami filed statutory declarations by Jason Quayle and Toshiaki Shimizu, referring to respective identical exhibits JC1 and TS1, in support of its application. Konami provided the same documents to Aristocrat by facsimile transmission on 28 October 2003. Aristocrat objected to the extension of time and the matter was set for hearing in Canberra on 21 November 2003. Konami filed a further statutory declaration JQQ1 on 20 November 2003, which was received by Aristocrat at the hearing.
Mr Peter Dummer of Wallington-Dummer Patent & Trade Mark Attorneys represented the prospective opponent, Konami, and appeared at the hearing by telephone. Mr. Charles Berman of F B Rice & Co represented the patent applicant, Aristocrat, and appeared in person. Both parties presented relevant and cogent argument which has greatly assisted my considered determination of the matter.
APPLICATION FOR EXTENSION OF TIME
Konami’s application requests an extension of time to file notice of opposition and gives the circumstances and grounds as follows:
“Due to an error or omission on the part of the person concerned or their Attorney, Opposition was not entered by 10 October 2003.
The details are outlined in a Statutory Declaration to follow.”
In its submissions, Konami has indicated that its application is based on the provisions of section 223(2) and/or section 223(2A) of the Patents Act 1990, viz.
"Section 223
(2) Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(2A) If:
(a) a relevant act that is required to be done within a certain time is not done within that time; and
(b) the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure the doing of the act within that time;the Commissioner must, on application made by the person concerned in accordance with the regulations and within the prescribed period, extend the time for doing the act.
(2B) An extension of time under subsection (2A) cannot exceed the period prescribed for the purposes of this subsection."
EVIDENCE
The evidence supporting the extension of time consists of
a statutory declaration by Jason Quayle, with Exhibit JC1 (referred to as JQ1), made and filed 27 October 2003
a statutory declaration by Toshiaki Shimizu, with Exhibit TS1 (identical to Exhibit JC1), made and filed 27 October 2003
a second statutory declaration by Jason Quayle, with Exhibit JQQ1, made and filed 20 November 2003.
Mr. Dummer, for Konami, has submitted the issues, identified by precedent, to be considered in determination of Konami's application and explained the circumstances of its application in that context.
Mr. Dummer has submitted that the evidence shows a clear procedure in place by Konami for evaluating the relevance of accepted Australian Patent Applications prior to opposition deadlines, a decision to act with a view to opposition had been taken by Konami prior to the opposition deadline, subject to review by technical specialists, and a breakdown in the review procedure that resulted in Konami's failure to file the notice of opposition by the due date of 10 October 2003.
The statutory declarations identify the relevant errors and/or omissions as being
that Toshiaki Shimizu
"Through error or omission on my part I failed to review the patent application titled "Gaming machine with fixed wild symbol" until on or about 14th of October 2003, at which time I determined that it was relevant to our operations and immediately took steps to inform our Patent Officer."
after
"The entry pages of Exhibit TS1 were made available on the Konami Intranet on or about 24th of September 2003, at which time I was advised by email to review the patent specifications listed on the entry pages on exhibit TS1 which fell in the designated area of "game"."that Jason Quayle
"In this particular instance through error or omission on my part I failed to follow up with the relevant specialists in relation to cases whose opposition deadlines fell due 10th of October 2003."
it being
"My usual procedure is to follow up with the various specialists prior to the opposition deadlines indicated in the "due" column if I have not heard from the specialists by the relevant date in that column."
10. Mr. Dummer has further submitted that Konami acted very promptly to file the notice of opposition as soon as the error and/or omission had been determined, that a serious opposition is foreshadowed by the evidence already filed in support of the opposition, that Konami can be expected to diligently prosecute the opposition as an important participant in the industry, thereby assisting the public interest, and that the review by Konami technical specialists demonstrates "due care", if not excessive care.
DISCUSSION
11. Section 223, like previous section 160 of the Patents Act 1952, is a remedial section and is to be applied where it appears to be applicable unless there is some indication to the contrary. (AB Scaniainventor v The Commissioner of Patents (1981) 36 ALR 101 at page 105)
12. In deciding whether the time is to be extended under s.223(2), it is first necessary to establish that the failure to file the notice of opposition by 10 October 2003 was due to an error or omission on the part of the person concerned or by his or her agent or attorney. If so established, the Commissioner's true discretion whether to grant or refuse the extension of time can then be exercised having regard to all relevant considerations and no others. (Michigan Technological University v Deputy Commissioner of Patents (1982) 40 ALR 577 and Lehtovaara v Commissioner of Patents (1981-2) 39 ALR 103)
13. As decided in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) 13 IPR 569 in respect of previous s.160(2), circumstances that suffice to enliven the Commissioner's power under s.223(2) may not be sufficient to justify its exercise. As also expressed by Jenkinson J in respect of previous s.160(2), granting an extension of time under s.223(2) is an indulgence
"In order to make out the "proper case . . . . justifying an extension" to which Bowen CJ referred in that case, an applicant would in my opinion have to go beyond a disclosure of the processes by which an agent's errors came to be committed, and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant (or, in the case of the corporation aggregate, of the relevant officers and other agents) relevant to an understanding of the way failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct. Whether or not the error or omission of the agent which enlivened the power occurred without moral fault on his part, the applicant's claim to the exercise of the power cannot be judged without the means of evaluating the applicant's moral claim to an indulgence which will, to some extent at least, work a prejudice to the efficient operation of what Bowen CJ in that case called "the system", even if no prejudice to the applicant for a patent."
". . . its exercise is not lightly to be granted, and a power to be invoked only upon a prompt, frank, comprehensive and clear disclosure of all the circumstances relevant to the weighing of the discretionary considerations upon which grant or refusal of an extension of time will depend."
14. Mr. Berman, for Aristocrat, has offered that Section 223 of the Patents Act 1990 is applicable to the type of extension of time sought by Konami but submits that the application does not meet various requirements of the decided law.
15. Mr. Berman has submitted that the evidence filed by Konami is inadequate and does not constitute full and frank disclosure. Mr. Berman has quite appropriately pointed out various gaps and shortcomings in the filed evidence. I have little doubt that, had some or all of these gaps and shortcomings been addressed, I could have acted with greater certainty in deciding this matter in accordance with the decided law. However, the salient issue remains what does the filed evidence establish that is probative to deciding this matter.
16. I consider that the statutory declarations by Quayle and Shimizu, together with their attachments, establish that Konami had identified Australian Patent Application 762889 prior to 24 September 2003 as an application that may be of interest, that Konami had an established procedure in place prior to 24 September 2003 to consider patent applications that may be of interest, that the established procedure included technical specialist review of the patent applications, that the established procedure results in the filing of a notice of opposition by the due date when the procedure results in a decision by Konami to oppose an application and that the established procedure results in a notice of opposition not being filed when the procedure results in a decision by Konami not to oppose an application.
17. I also consider that the statutory declaration by Shimizu, together with its attachment, establishes that there was a breakdown in Konami's established procedure when Shimizu failed to review Australian Patent Application 762889 until on or about 14 October 2003 when the due date for filing the notice of opposition was 10 October 2003. The breakdown in Konami's established procedure is clearly an "error or omission" within the meaning of that expression in s.223(2), as interpreted by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) (supra).
18. From Quayle's statutory declaration of 27 October 2003, there was a further breakdown in procedure when Quayle did not follow up with the various technical specialists prior to the due date for filing the notice of opposition. As Mr. Berman has submitted, Konami has not filed any corroborating or supporting documentation or detail in respect of this breakdown in procedure. This is perplexing given the indulgent nature of s.223(2) and that Konami has put forward this breakdown in procedure as one of the errors and/or omissions resulting in failure to file the notice of opposition by the due date and justifying the discretionary grant of an extension of time. However, I consider Quayle's error or omission to be a dependent error or omission exacerbating the primary error or omission by Shimizu. Had Shimizu replied to Quayle prior to 10 October 2003, Quayle's error or omission would not have eventuated.
19. To enliven s.223(2), the error or omission must have a causal connection leading to the failure to file the notice of opposition by 10 October 2003. There have been many decisions considering different actual, and alleged, causal connections that have usefully developed various premises for determining whether a causal connection does, or does not, exist. One of these premises is that, if the applicant for the extension of time had no intention of doing the act by the due date, then whatever errors and/or omissions may exist were intrinsically not the reason that the act was not done by the due date.
20. Unfortunately, this premise has been incompletely stated, and hence so reported, on occasion and has been similarly incompletely stated and misinterpreted in Mr. Berman's submissions. It appears that its misinterpretation has also been partially responsible for the filing of the Quayle statutory declaration of 20 November 2003. However, it is perplexing, and of concern, that the other aspects of Quayle's second declaration were not provided to the Commissioner at an earlier time given the grounds of Konami's application.
21. I consider that the premise has been well expressed by the Commissioner's Delegate Mr. Bruhn in Stork Pompen B.V. v Weir Pumps Limited [1988] 11 IPR 542 as
"Whilst I acknowledge that in the above decision (and others like it), the link between the initial instructions and an intention to oppose may be rather tenuous, instructions were given and which, if they had been carried out, could at least have placed the accepted application before the party in time to enable it to decide whether to oppose and more than likely would have led to a notice of opposition being lodged. However, in the present case, WEIR at no stage before 16 October 1987 took any steps which would have put it in a position to make a decision on whether this application should be opposed. Therefore, while in some previous situations like Firmaframe Nominees v. Automatic Roller Doors (supra) the intention to oppose may not have been entirely definite but the intention to get in a position to be able to decide whether to oppose was there, in this case I am satisfied from the evidence that there was never any such intention.
Therefore, I conclude that as there was never any intention by WEIR to oppose application 563613 on or before 16 October 1987, or even any intention to place itself in a position to decide whether to oppose, there was no error or omission on its part or by its attorneys within the terms of sub-section 160(2)."
22. The Delegate's comments in Stork Pompen B.V. v Weir Pumps Limited are consistent with the plain meaning of s.223(2), which does not require the decision to do the act to have been made prior to the error or omission preventing the act being done, and as interpreted by Jenkinson J in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) (supra). Jenkinson J acknowledged such
"But in my opinion those conclusions do not necessarily preclude a conclusion that some prior error or omission had contributed to cause the failure to lodge the notice. The various acts and omissions of the applicant's agents in this country which contributed to the result that the applicant's servants and agents overseas, who were charged with the responsibility to decide whether or not the applicant would oppose Minnesota's application, received Minnesota's complete specification at so late a date may be said to have contributed to cause those two deliberate decisions to be made and so to cause the omission to lodge the notice. If the delay in communicating the complete specification to those persons overseas had not occurred, lodging of notice of opposition on or before 7 August 1987 would probably have occurred, one may suppose that the delegate would have found."
and
"And, whatever other finding may have been open to the delegate, I do not consider that the finding he did make, of a sufficient causal connection between the errors and omissions which preceded 20 July 1987 and the failure to lodge notice of opposition on or before 7 August 1987, was one which on the material before him was not open to him."
and
"I have already indicated, when dealing with Mr Handley's submissions concerning causation, my opinion that the material before the Commissioner's delegate would support his conclusion that the causal connection between the errors and omissions of Mr Sandercock's firm and the failure to lodge notice of opposition on or before 7 August 1987 satisfied the requirement expressed by the words "by reason of" in s 160(2)."
23. So, for the instant application, I consider that the relevant consideration is whether, had Shimizu replied to Quayle prior to 10 October 2003, would the notice of opposition have been filed by the due date of 10 October 2003.
24. Relevant to this consideration is whether there was sufficient time between 24 September 2003, when Shimizu was notified of Australian Patent Application 762889, for Shimizu to review 762889 and advise Quayle and for Quayle to then file the notice of opposition. Otherwise, failure to file notice of opposition by 10 October 2003 could not have been due to the errors and/or omissions put forward by Konami. However, as declared, Shimizu reviewed 762889 on or about 14 October 2003 with Konami's notice of opposition being filed on 16 October 2003.
25. Consequently, I consider that the error or omission by Shimizu, exacerbated by the error or omission by Quayle, in carrying out Konami's established procedure, directly resulted in the notice of opposition not being filed by 10 October 2003. Had Shimizu replied to Quayle prior to 10 October 2003 in the same manner as was done on or about 14 October 2003, the notice of opposition would have been filed by the due date. Shimizu's reply to Quayle on or about 14 October 2003 also confirms Konami's established procedure and demonstrates it to be effective in monitoring patent applications for opposition purposes other than when affected by errors or omissions by its servants and/or agents in carrying out that procedure.
26. I have thus determined that s.223(2) is enlivened by the circumstances of Konami's application for extension of the time to file notice of opposition. Mr. Berman has submitted that Konami should not be granted the indulgence of having the Commissioner's discretion being exercised in its favour because Konami has not given a full and frank disclosure of all the surrounding circumstances, because Aristocrat would suffer greater prejudice than Konami, because a serious opposition is not foreshadowed and because the public interest is not compromised by grant of Patent Application 762889.
27. I have noted above that gaps and shortcomings in the evidence filed by Konami are perplexing, and of concern, given Konami's application and submissions. Nevertheless, any lack of disclosure does not pertain to the relevant facts that I have determined from the evidence nor to the application of s.223(2) to those facts. In this regard, I note that, in Kimberly-Clark Ltd v Commissioner of Patents and Another (No 3) (supra), Kimberly-Clark had taken separate action prior to the due date for filing notice of opposition that was prima facie inconsistent with its application for extension of time in which to file notice of opposition. Consequently, Kimberly-Clark had an onus to explain or resolve that inconsistency, including that no moral fault was involved, before the Commissioner's discretion could be properly exercised. Such a circumstance is not present in the instant application.
28. Konami progressed filing notice of opposition very promptly upon recognition that the error or omission had occurred. While I have not reviewed the evidence already filed in support of the opposition, the nature of that material and Konami's actions demonstrate that a serious opposition is foreshadowed. Obviously, Aristocrat's interests would be prejudiced by having to defend an opposition that would otherwise not have arisen. However, on balance, Konami's interests and the interests of the public carry the greater weight in this instance.
DECISION
29. From the filed evidence, I am satisfied that there was an error or omission by Konami's agents that resulted in filing of notice of opposition to the grant of a patent on Patent Application 762889 not being done by the due date. I am also satisfied from the filed evidence that it is appropriate for the Commissioner's discretion under s.223(2) to be exercised to extend the period of time for filing the notice of opposition.
30. Mr. Dummer has also submitted that the extension of time should be granted to Konami under the provisions of s.223(2A). S.223(2A) is a comparatively new provision of the Patents Act 1990, having been enacted in 2002, and has not yet been subject to contested or judicial interpretation. It provides for an extension of time, without consideration of discretionary issues but subject to prescribed time periods, provided the Commissioner is satisfied that the person concerned took due care, as required in the circumstances, to ensure the doing of the act in the time.
31. Based on my findings under the provisions of s.223(2), which has been well interpreted judicially, I consider that the circumstances of Konami's application also meet the requirements of s.223(2A).
32. Consequently, I extend the time for Konami to file notice of opposition to Patent Application 762889 to 16 October 2003 under the provisions of s.223(2) of the Patents Act 1990 and note that, if it were necessary, I would extend the time under s.223(2A).
33. I note that the provisions of regulation 5.4 require Konami to serve on Aristocrat a copy of the statement that sets out the grounds of opposition, and the particulars relating to each ground, within three months of filing the notice of opposition. This time limit is dependent on when the notice of opposition was filed and not when the section 223 application was granted. Therefore, I note that the statement of grounds and particulars is due on 16 January 2004.
COSTS
34. The power to award costs is based on section 210 and regulation 22.8. The normal practice is that costs should follow the event. Because the statutory declaration filed by Konami on 20 November 2003 was not determinative of this matter, I see no reason to depart from the normal practice of costs. Consequently, I award costs to Konami.
Bill Major
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicant : F B Rice & Co, Sydney
Patent attorneys for the opponent : Wallington-Dummer, Sydney
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