Race Lotto Pty Ltd v AWA Ltd - [1998] APO 72

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No.684731 in the name of Race Lotto Pty Limited

Title: Gambling Games

Action: Opposition under section 59 of the Patents Act 1990 by AWA Limited and objection to an application for an extension of time in which to serve evidence in support.

Decision: Issued .
Abstract

No evidence at all in support of the opposition has been served by the opponent. Nor has it provided any indication of the nature of the evidence for which the extension is sought or if preparation of the evidence has even begun. It was thus not possible to consider the nature of the evidence or its relevance to the proceedings but it was concluded that it is likely that a serious opposition is in train and that the public interest would not be served by the opponent being unable to serve evidence in support of the opposition. On balance it was found that the public interest lies in the extension being granted.

AWA Limited and Race Lotto Pty Limited have been in negotiations for some time regarding the licensing of Race's patent application. AWA gave, as reasons for the delay in serving evidence, that it did not wish to jeopardise the negotiations. However, it was concluded that negotiations have now broken down but AWA's reasons were found to be believable since it is unclear when negotiations became untenable

In view of all the considerations, an extension of time to 8 January 1999 in which to serve the evidence in support of the opposition was granted.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 684731 by Race Lotto Pty Limited, opposition under section 59 of the Patents Act by AWA Limited and an application for an extension of time in which to serve evidence in support.

background

Patent application 684731, in the name of Ollington Gaming Pty Limited, was advertised accepted on 8 January 1998. Notice of opposition under section 59 was filed by AWA Limited (hereinafter referred to as AWA) on 8 April 1998, followed by a statement of grounds and particulars on 8 July 1998. On 1 July 1998, Ollington Gaming Pty Limited requested that the Commissioner direct the application to proceed in the name of Race Lotto Pty Limited by virtue of an assignment dated 30 June 1995. The application is now proceeding in the name of Race Lotto Pty Limited (hereinafter referred to as RACE).

On 30 October 1998, AWA applied for an extension of time of three months from 8 October 1998 to 8 January 1999 in which to serve evidence in support of the opposition. This application for extension of time was objected to by RACE and the matter was set down for hearing in Canberra on 4 December 1998. At the hearing RACE was represented by telephone by Mr Robert Miller, patent attorney, of Spruson & Ferguson, Sydney and AWA was represented by…

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: [1998] APO 72
Decision Date: 24 December 1998

CaseChat Overview and Summary

This case concerns an application for an extension of time by AWA Limited to serve evidence in support of an opposition to a patent application lodged by Race Lotto Pty Limited. The application for the extension of time was opposed by Race Lotto Pty Limited, and a hearing was held on 4 December 1998. The delegate of the Commissioner of Patents, Gillian Jenkins, was required to decide whether the extension of time should be granted.

The key legal issue was whether the extension of time to serve evidence in support of the opposition should be granted. The delegate considered the principles governing the granting of an extension of time, which involve a balancing exercise of various considerations, including the explanation of the delay, the public interest, and the interests of the parties. The delegate also had to determine the credibility of the reasons provided by AWA for the delay in serving evidence and the potential impact of the extension on the public interest and the interests of the parties.

The delegate concluded that the reasons provided by AWA for the delay in serving evidence were credible, as they were based on the belief that negotiations with Race Lotto Pty Limited were progressing well and that a settlement would be reached soon. However, the delegate also found that the negotiations had broken down, and it was unlikely that they would be resolved quickly. Despite the lack of evidence provided by AWA, the delegate found that it was likely that a serious opposition was in train, and the public interest would not be served by the opponent being unable to serve evidence in support of the opposition. The delegate granted the extension of time to 8 January 1999, expecting both parties to proceed with all diligence in preparing and serving evidence.

AWA Limited's request for an extension of time to serve evidence in support of the opposition to the patent application lodged by Race Lotto Pty Limited was granted. The delegate of the Commissioner of Patents, Gillian Jenkins, granted the extension of time to 8 January 1999, with the expectation that both parties would proceed with all diligence in preparing and serving evidence. No costs were awarded as AWA Limited did not make an appearance at the hearing.

Orders