Olympic Amusements Pty Ltd v Aristocrat Leisure Industries P/L

official notice

decision of a delegate of the commissioner of patents

Application : No. 632454 in the name of OLYMPIC AMUSEMENTS PTY LTD

Title: IMPROVEMENTS IN VIDEO GAMING MACHINES

Action: Application under S.69 of the Patents Act 1990 for extension of term of a petty patent. Notice under S.28 by ARISTOCRAT LEISURE INDUSTRIES PTY LTD. Final decision.

Decision: Issued .
Abstract: Patent invalid. Opportunity to amend, no amendments proposed. Extension of term refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty patent No. 632454 in the name of OLYMPIC AMUSEMENTS PTY LTD and section 28 Notice by ARISTOCRAT LEISURE INDUSTRIES PTY LTD.

background

In my decision dated 25 August 1994 I found that, in view of a section 28 information notified by ARISTOCRAT LEISURE INDUSTRIES PTY LTD, petty patent No 632454 in the name of OLYMPIC AMUSEMENTS PTY LTD was invalid by reason of claim 1 lacking novelty and claims 2 and 3 being obvious. I allowed the patentee 60 days in which to propose amendments to the specification directed toward removing the grounds of invalidity, else I would refuse to grant the extension of term.

This period has passed and no amendments have been proposed.

The informant has advised that it wished to be heard in the event of any further hearing in the matter, but as the patentee has advised that it does not wish to be further heard, a final decision can be made.

DECISION

I refuse to grant the extension of term sought.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the patentee : Griffith Hack & Co, Melbourne
Patent attorneys for the informant : FB Rice & Co, Sydney

CaseChat Overview and Summary

Olympic Amusements Pty Ltd (the patentee) sought an extension of the term of their petty patent for improvements in video gaming machines, while Aristocrat Leisure Industries P/L (the informant) objected to the extension on the grounds of invalidity. The dispute was brought before a delegate of the Commissioner of Patents, who was tasked with deciding whether to grant the extension and, if not, to provide reasons. The delegate had previously found that the patent was invalid due to lack of novelty and obviousness, and had allowed the patentee a period of 60 days to propose amendments to address these issues. As no amendments were proposed, the delegate was required to make a final decision on the matter.

The primary legal issue before the delegate was whether the term of the patent should be extended, given that the patent had been found to be invalid due to a lack of novelty and obviousness. The delegate had to consider the statutory provisions governing the extension of patent terms and whether the circumstances justified an extension despite the invalidity of the patent. Additionally, the delegate had to consider whether the patentee had taken any action to remedy the invalidity within the prescribed timeframe.

In reaching the decision, the delegate considered the statutory framework and the previous decision that had found the patent to be invalid. The delegate noted that the patentee had not proposed any amendments to address the grounds of invalidity within the 60-day period allowed. Given that the patent remained invalid and no steps had been taken by the patentee to remedy the situation, the delegate concluded that the extension of the patent term should not be granted. The delegate's decision was based on the premise that an extension of a patent term is not appropriate if the patent remains invalid.

Accordingly, the delegate refused to grant the extension of term sought by the patentee. The decision was issued as a final determination, and no further action can be taken by the patentee to amend the patent or seek an extension. The delegate's decision is based on the statutory provisions and the circumstances of the case, and provides a clear and definitive resolution to the dispute.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established