Aristocrat Technologies, Inc. v IGT - [2008] APO 33

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 2002334685 in the name of Aristocrat Technologies Inc

Title: Apparatus and Method for retrofitting gaming machine to issue and redeem tickets

Action: Request under regulation 5.5 by Aristocrat Technologies Inc for a Dismissal of a section 59 opposition by IGT

Decision: Issued 15 December 2008
Abstract

The hearing was confined to the preliminary issue of determining the effective date of service rather than a final determination of the request for dismissal.

The applicant had consented to receive electronic communications to enliven the provisions of the ETA. However, no specific information system was “designated” for the purposes of section 14(3). As a result, section 14(4) of the ETA applies and the SGP was only served when the email was brought to the attention of the applicant’s agent. As this was one day after the statutory deadline prescribed in regulation 5.4, the SGP has been filed out of time.

This problem can be remedied by an extension of time under section 223 of the Patents Act [1990] if the opponent files an application and can demonstrate a causative error to enliven the provision. I therefore allow the opponent 21 days to file such an application.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2002334685 by Aristocrat Technologies Inc and request under regulation 5.5 for a dismissal of a section 59 opposition by IGT

BACKGROUND

Patent application 2002334685 was filed on 25 September 2002 in the name of Aristocrat Technologies Inc under the provisions of the PCT. It claimed priority from US basic application (09/968622) filed on 1 October 2001 and entered the National Phase in Australia on 1 April 2004.

The Australian application was advertised accepted on 17 January 2008 and a Notice of Opposition was filed by IGT on 17 April 2008. Under regulation 5.4, the opponent then had 3 months from to serve a copy of their Statement of Grounds and Particulars (SGP) on the applicant. This meant that the deadline for serving the SGP was 17 July 2008.

As recognised by the applicant, IGT made a number of attempts to serve their SGP electronically at the applicant’s address for service (their patent attorneys Griffith Hack, Melbourne):

(a)an email which was received by email by the Aristocrat attorney’s server at 23:59:59 on 17 July 2008;
(b)a facsimile which was received by the Aristocrat attorney’s Melbourne Office at approximately 12:30am on 18 July 2008; and
(c)a facsimile which was received by the Aristocrat attorney’s Perth Office at 10:32 pm (Perth time) on 17 July 2008

Only the email was actually received by the applicant’s address for service in Melbourne on 17 July 2008 and this occurred (somewhat remarkably) at one second to midnight. The applicant argued that this was outside of normal business hours when no one was around to receive the email. According to the applicant [citing the decision of NSW Supreme Court judgement in

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.

Continue reading Aristocrat Technologies, Inc. v IGT

Details

AGLC: Aristocrat Technologies, Inc. v IGT [2008] APO 33
Case: [2008] APO 33
Decision Date: 15 December 2008

CaseChat Overview and Summary

The case of Aristocrat Technologies, Inc. v IGT involved a dispute regarding the effective date of service of a Statement of Grounds and Particulars (SGP) in a patent opposition. Aristocrat Technologies, Inc. (the applicant) filed a patent application which was opposed by IGT. The key issue before the delegate of the Commissioner of Patents was whether the SGP was served within the statutory deadline. The applicant argued that the SGP was not properly served as it was received outside of normal business hours, while IGT maintained that service was completed when the email was received by the applicant’s server. The delegate found that the applicant had consented to receiving electronic communications, thus satisfying the requirements of the Electronic Transactions Act 1999 (ETA). However, no specific information system was designated by the applicant for the purpose of receiving electronic communications. As a result, the SGP was only deemed to be served when it came to the attention of the applicant's agent, which was one day after the statutory deadline. Consequently, the delegate allowed IGT 21 days to file a section 223 extension of time application, after which the opposition would be dismissed if no such application was filed.

The decision highlights the importance of clearly designating an information system for receiving electronic communications, as well as the need for parties to be aware of the different timing rules for receipt of electronic communications under the ETA. The case also demonstrates the Commissioner's discretion in extending time limits for serving a SGP in a patent opposition, provided a causative error or omission can be established.

Orders