1. 1. 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 applicants 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. 5 10 15 20 25 30 35
2. 2. 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. 1. 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. 2. As recognised by the applicant, IGT made a number of attempts to serve their SGP electronically at the applicants address for service (their patent attorneys Griffith Hack, Melbourne): (a) an email which was received by email by the Aristocrat attorneys server at 23:59:59 on 17 July 2008; (b) a facsimile which was received by the Aristocrat attorneys Melbourne Office at approximately 12:30am on 18 July 2008; and (c) a facsimile which was received by the Aristocrat attorneys Perth Office at 10:32 pm (Perth time) on 17 July 2008 3. Only the email was actually received by the applicants 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 Austar Finance v Campbell NSWSC 1793 (21 December 2007)], this meant that service was not completed until the following morning when the email was 2 5 10 15 20 25 30 35 40
3. 3. brought to the addressees attention1 . As this was outside the statutory deadline, the applicant then argued that the SGP had not been properly served. 4. A delegate of the Commissioner advised the parties that the Commissioner prima facie accepted the date of receipt of the email as the date of service and was therefore was satisfied that service was completed in time . In the delegates view, the decision of Austar Finance v Campbell [supra] was not relevant because it concerned originating service which required personal service. This level of service was not required for a SGP in a section 59 opposition. 5. The applicant disagreed with the delegates view and requested the Commissioner dismiss the section 59 opposition under regulation 5.5 for failure to serve a SGP within the statutory deadline. The matter was set for hearing in Canberra on 17 November 2008. The applicant was represented by Ben Fitpatrick of counsel instructed by Nick Mountford, patent attorney of Griffith Hack, Melbourne. The opponent was represented by Richard McCormack of Counsel instructed by Stephen Krouzecky patent attorney of Hodgkinson McInnes Patents, Sydney. 6. At the hearing, I noted that unlike the situation in Austar Finance v Campbell [supra], the deadline for serving a SGP is not an absolute one. The Commissioner has the discretionary power to extend this deadline under section 223 if the opponent can establish a causative error or omission which led to their failure to serve the SGP. Both parties therefore agreed that even if I found that service was outside the prescribed deadline, it would be premature to dismiss the opposition without providing the opponent an opportunity to file a section 223 request for the Commissioner to consider. The hearing was therefore necessarily confined to the preliminary issue of determining the effective date of service and was not a final determination of the request for dismissal. Relevant law 7. The key issue in the current dispute is whether service of the SGP was effected on the date of receipt of the email or the date at which it came to the attention of the applicants agent. The Electronic Transactions Act 1999 (hereafter the ETA) provides for both possibilities and (as both parties accept) provides the relevant statutory framework to determine which date is the correct one. 8. The ETA allows a party to give information by electronic means provided the receiving party has consented to this form of communication. This is outlined in section 9(2) and in particular section 9(2)(d). 9. Writing 1 See Nicholas George Mountford declaration dated 25 July 2008 at paragraph 3 See the Commissioners letter to both parties of 30 July 2008 3 5 10 15 20 25 30 35 40
4. 4. Permission to give information in writing (2) If, under a law of the Commonwealth, a person is permitted to give information in writing, the person may give the information by means of an electronic communication, where: (a) in all casesat the time the information was given, it was reasonable to expect that the information would be readily accessible so as to be useable for subsequent reference; and (b) if the information is permitted to be given to a Commonwealth entity, or to a person acting on behalf of a Commonwealth entity, and the entity requires that the information be given, in accordance with particular information technology requirements, by means of a particular kind of electronic communicationthe entitys requirement has been met; and (c) if the information is permitted to be given to a Commonwealth entity, or to a person acting on behalf of a Commonwealth entity, and the entity requires that particular action be taken by way of verifying the receipt of the informationthe entitys requirement has been met; and (d) if the information is permitted to be given to a person who is neither a Commonwealth entity nor a person acting on behalf of a Commonwealth entitythe person to whom the information is permitted to be given consents to the information being given by way of electronic communication. 9. The consent referred to in section 9(2)(d) does not have to be explicit because the definition of consent in section 5 also allows for an implied consent: consent includes consent that can reasonably be inferred from the conduct of the person concerned. 10. The purpose of this definition of consent is explained in the Revised Explanatory Memorandum to the ETA: Consent includes consent that can be reasonably inferred from the conduct of the person. This term is used in clauses 9, 10 and 11 in provisions that state a person must consent to receiving information in the form of an electronic communication. While consent would clearly be demonstrated by a persons expressed statement of consent, the purpose of this definition is to ensure that express consent is not required in every case and that consent can be inferred from, for example, a history of transactions or previous dealings. However, when determining whether consent can be inferred from a persons conduct it will be necessary to look at the circumstances of the electronic communication including the express statements of the person. A person should not, by the operation of 4 5 10 15 20 25 30 35 40 45
5. 5. this definition, be deemed to have consented to the receipt of information in the form of an electronic communication merely because they have sent it previously used electronic communications. If a person sent an electronic communication containing a message in which a person explicitly stated that they did not want to receive any or all information in the form of an electronic communication, then that express withdrawal of consent must be accepted. 11. If a party has consented to receiving electronic communication, the ETA provides two different times of receipt for that communication depending on whether the form of communication was designated by the receiving party or not. Where an information system is designated, the ETA prescribes the time of receipt as the time when the electronic communication enters in the addressees information system [section 14(3)]. Where an information system has not been designated, the ETA prescribes the time of receipt as the time when the communication comes to the attention of the addressee [see section 14(4)]. 12. These provisions are outlined in full below: 14. Time and place of dispatch and receipt of electronic communications Time of receipt (3) For the purposes of a law of the Commonwealth, if the addressee of an electronic communication has designated an information system for the purpose of receiving electronic communications, then, unless otherwise agreed between the originator and the addressee of the electronic communication, the time of receipt of the electronic communication is the time when the electronic communication enters that information system. (4) For the purposes of a law of the Commonwealth, if the addressee of an electronic communication has not designated an information system for the purpose of receiving electronic communications, then, unless otherwise agreed between the originator and the addressee of the electronic communication, the time of receipt of the electronic communication is the time when the electronic communication comes to the attention of the addressee. DECISION 13. As the applicant noted, consent (referred to in section 9 of the ETA) and designation (referred to in section 14 of the ETA) are separate considerations under the ETA and have different requirements. I will deal with these two issues separately below. Does the ETA apply and was consent given under the ETA to use electronic communication between the parties? 5 5 10 15 20 25 30 35 40
6. 6. 14. Consent under the ETA requires a party receiving information to agree to receiving it in an electronic form. It is a necessary pre-requisite for the ETA to apply in a given circumstance. 15. Both parties agreed that there was no explicit consent from the applicant to receive the SGP electronically. However the definition of consent in section 5 of the ETA (see above) also includes an implied consent. As explained in the Revised Explanatory Memorandum to the ETA, this is consent that can be reasonably inferred from the conduct of the person. The purpose of this definition is to ensure that express consent is not required in every case and that consent can be inferred from, for example, a history of transactions or previous dealings. 16. In this regard, I note that the two parties have been involved in more than forty section 59 oppositions before the Commissioner. The Commissioners long- standing practice is to send all correspondence in an opposition by facsimile unless this is impractical (for example, lengthy further evidence applications). Both parties have also conducted most of their correspondence with the Commissioner by this means. As far as I am aware, the applicant has never objected to this form of communication in any of their oppositions over a number of years. 17. Citing the Explanatory Memorandum, the applicant argued that a person should not be deemed to have consented to the receipt of information in the form of electronic communication merely because they have sent or previously used electronic communications. While this might be true if there were one or two isolated electronic communications, this is clearly not the case here where there has been a long (and almost exclusive) history of electronic communications. 18. The applicant then suggested that service was somehow different than receiving material from the Commissioner. The applicant noted that the Federal Court Rules treat service differently than other types of documents requiring that service of material is within normal business hours. Under order 7, rule 6 of the Federal Court rules (for example) an address for service for a person must be the address of a place within Australia at which documents in the proceeding may, during ordinary business hours, be left for the person and to which the documents in the proceeding may be posted to the person (emphasis added). Order 7, rule 4(1)(a) also prescribes that where personal service of a document is not required, the document may be served by leaving a copy of the document at the proper address of the person to be served between the hours of 9 in the morning and 5 on the afternoon on any day on which the Registry in that State or Territory is opened. 19. The applicant argued that these Federal Court rules were codified common sense which the Commissioner ought also to apply in the current case. However the Federal Court rules do not apply to matters before the Commissioner and further under section 13(4) of the ETA, courts are exempt from the ETA. I therefore do not believe the Courts approach is relevant to the Commissioners consideration. 6 5 10 15 20 25 30 35 40 45 50
7. 7. 20. The ETA also does not distinguish service of documents from sending other types of documents. It defines giving information for the purposes of section 9 broadly to include both giving, sending and serving: (4) This section applies to a requirement or permission to give information, whether the expression give, send or serve, or any other expression, is used. (5) For the purposes of this section, giving information includes, but is not limited to, the following: (a) making an application; (b) making or lodging a claim; (c) giving, sending or serving a notification; (d) lodging a return; (e) making a request; (f) making a declaration; (g) lodging or issuing a certificate; (h) making, varying or cancelling an election; (i) lodging an objection; (j) giving a statement of reasons. 21. The applicant argued that if they had given expressed consent for the electronic service of documents, they would have restricted it to receiving documents in normal business hours. However, consent under section 9 of the ETA is a general permission to receive documents electronically. Nothing in the ETA limits this receipt as occurring at a particular time. If the applicant wished to limit their consent in this manner, they would need to make this explicit in their consent. It is not appropriate to imply limitations into the general consent provided under the ETA. 22. I find that the applicants lengthy history of filing and receiving correspondence by facsimile has provided implied general consent for the purposes of section 9 of the ETA and the provisions of this Act are therefore enlivened. Was the email system designated for the purposes of section 14(3)? 23. Under section 14, a party can designate a specific information system to receive electronic communications. If a specific information system has been designated, then the time of receipt of a communication is when it enters the addressees information system [section 14(3)]. Otherwise, a communication is only received when it comes to the attention of the addressee [see section 14(4)]. 24. This difference in timing is critical in the current case. If the Griffith Hack general email address was designated by the applicant for the purposes of the ETA, then the SGP was received at one second to midnight on 17 July 2007 and falls within the deadline prescribed in regulation 5.4 of the Patents Act [1990]. Otherwise service occurred when the email came to the attention of 7 5 10 15 20 25 30 35 40 45
8. 8. Griffith Hack staff on the morning of 18 July 2008 which is one day outside the prescribed deadline. 25. Unlike the term consent, there is no definition of the term designate in the ETA nor is there any explicit recognition in the ETA that a designation can be implied. The applicant argued that the ETA is based on the UNCITRAL Model Law on Electronic Commerce2 and that paragraph [102] of the Guide to Enactment of the Model Law provides some guidance as to what the term designate might mean: Paragraph (2), the purpose of which is to define the time of receipt of a data message, addresses the situation where the addressee unilaterally designates a specific information system for the receipt of a message (in which case the designated system may or may not be an information system of the addressee), and the data message reaches an information of the addressee which is not the designated system. In such a situation, receipt is deemed to occur when the data message is retrieved by the addressee. By designated information system the Model Law is intended to cover a system that has been specifically designated by a party, for instance in the case where an offer expressly specifies the address to which acceptance should be sent. The mere indication of an electronic mail or telecopy address on the letter head or other document should not be regarded as express designation of one or more information systems. 26. According to the applicant, this paragraph clearly envisages that designation would need to be an expressed designation and a mere indication of an electronic mail or telecopy address on the letter head or other document would not suffice as designating a particular information system. In the current case, the applicant argued that there had been no expressed designation of the Griffith Hack general email system as an electronic address for service and hence the date of receipt of the SGP was governed by section 14(4). 27. I note that the UNCITRAL Model Law is model legislation which member states are encouraged (but not bound) to use when enacting their national legislation for electronic commerce. The time of receipt of an electronic communication is governed by Article 15 of the Model law: 15 (2) Unless otherwise agreed between the originator and the addressee, the time of receipt of a data message is determined as follows: (a) If the addressee has designated an information system for the purpose of receiving data messages, receipt occurs: (i) at the time when the data message enters the designated information system; or 2 See United Nations Commission of International Trade Law (UNCITRAL) Model law on Electronic Commerce (1996) http://www.uncitral.org 8 5 10 15 20 25 30 35 40 45
9. 9. (ii) if the date message is sent to an information system of the address that is not the designated information system, at the time when the data message is retrieved by the addressee. (b) If the addressee has not designated an information system, receipt occurs when the data message enters an information system of the addressee. 28. The default position under these provisions is that an electronic message is received when it enters any information system of the addressee unless a particular information system has been designated (in which case only electronic messages received through this designated information system are received when they enter the information system). 29. An Electronic Commerce Expert Group established by the Australian Government to consider the Model Law provisions prior to the introduction of the ETAAct on 20 March 2000 recommended that these timing provisions not be followed. An excerpt3 from their report explains their rationale: x) Time and place of dispatch and receipt of data message (paras 4.5.84 - 4.5.87) 4.5.84 There is some uncertainty as to how rules applying to dispatch and receipt of paper documents are applicable to data messages. Specific rules may be required to ensure uniformity and certainty. 4.5.85 Article 15 recognises that for the operation of many existing rules of law it is important to ascertain the time and place of dispatch and receipt of information. The test with respect to time of dispatch under article 15 relies upon the data message entering an information system outside the control of the sender. The Uniform Bill closely follows this formulation. The Unidroit Principles of International Commercial Contracts do not include rules on dispatch but simply provide that parties are free to stipulate the application of the dispatch principle. The approach in article 15 should be followed. 4.5.86 With respect to time of receipt, article 15 sets out a series of rules which apply in different circumstances depending upon agreement between the parties to the communication and whether or not a particular information system had been designated for the purposes of that communication. The basic test, in the case where an information system has been designated, is that the information has entered the designated system and is retrieved by the recipient. Where no information system has been designated, the test is when the information enters an information system of the recipient. The Uniform Bill adopts a simpler formulation which in the first instance relies upon the recipients ability to retrieve the information and, as a fall back position, upon the information coming to the attention of the recipient. This approach is preferable to the approach in article 15. 4.5.87 The Unidroit Principles of International Commercial Contracts contemplate receipt of an offer by an addressees computer, fax or 3 http://www.ag.gov.au/www/agd/agd.nsf/Page/e-commerce_Electroniccommerceexpertgroupsreport 9 5 10 15 20 25 30 35 40 45
10. 10. telex. Although it is not quite clear what would constitute such receipt in the case of a computer, the notes do indicate that the particular communication in question need not come into the hands of the addressee. It is sufficient that it be placed in the addressees mailbox or be received by the addressees fax, computer or telex. This is presumably analogous to a message entering an information system of the recipient, but nothing further is required. It is our view that the simpler and preferable approach is that adopted by the Uniform Bill, which is to rely upon the recipients ability to retrieve the information and, as a fall back position, upon the information coming to the attention of the recipient. 30. The recommendation was accepted by the Government and is reflected in section 14 of the ETA. Under this section, information is generally received by the recipient when it comes to their attention. The only exception is where the recipient designates a particular information system for the purpose of receiving electronic messages. In such a case, the communication is received as soon as it enters that particular information system. 31. The Australian provisions are explained in the Explanatory Memorandum (EM) to the ETA. Page 34 of the EM notes that sections 14(3) and (4) establish basic rules for the time of receipt of an electronic communication. The rules depend on whether the addressee has told the originator to transmit the electronic communication to a particular information system or not. Where the addressee has given specific directions (my emphasis) and the electronic communications is transmitted in accordance with those directions, sub-clause (3) says that the communication is received as soon as it enters the designated system. In all other cases, sub-clause (4) operates to state that the electronic communication will be received when it comes to the attention of the addressee. 32. The requirement for specific directions allows for section 14(3) to be clearly invoked away from the default position set out in section 14(4). An expressed trigger like this would then provide clarity in the timing of receipt which is critical for the operation of the ETA. This approach is consistent with the structure of the ETA, the EM and the recommendations of the Electronic Commerce Expert Group. 33. In the current case, the applicant did not specifically request that documents be sent via a particular information system. There was therefore no expressed designation of any particular information system as an electronic addressee for service. The opponent argued that all correspondence from applicants address for service contains their general email address. However this is not specific directions to use a particular information system as contemplated by the EM and in my view, it is insufficient to invoke section 14(3). 34. As a consequence, the default position outlined in section 14(4) operates and the relevant time of receipt of the SGP is dependent on when the email came to the attention of the applicant. When did the email come to the attention of the applicant? 10 5 10 15 20 25 30 35 40 45 50
11. 11. 35. The EM notes that the term come to the attention of the addressee does not mean that a communication must be read by the addressee before it is considered to be received. It states that an addressee who actually knows, or should reasonably know in the circumstances, of the existence of the communication should be considered to have received the communication and provides the example of an addressee who is aware that the communication is in their electronic mail box but who refuses to read it should be considered to have received the communication. 36. In the current case, there was no one in the applicants address for service at the time the email was received to be reasonably aware of the communication. There is also no evidence that the opponent contacted the applicant to advise them to expect the SGP by email. My view is therefore that the applicant did not reasonably know of the existence of the email until the following morning on 18 July 2008. CONCLUSION 37. I find that 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 applicants agent. As this was one day after the statutory deadline prescribed in regulation 5.4, I agree with the applicant that the SGP has been filed out of time. 38. This problem can be remedied by an extension of time under section 223 of the Patents Act [1990] if the opponent can demonstrate a causative error to enliven the provision. I therefore allow the opponent 21 days to file a section 223 extension of time application. If the opponent fails to do this within the specified time, I will proceed to dismiss the opposition. COSTS 39. The Commissioner has a discretionary power to award costs under regulation 22.8. In the current case, the decision only concerns a preliminary issue and the dismissal request has been finally determined. Given this, I will defer my 11 5 10 15 20 25 30
12. 12. decision on costs until the outcome of the dismissal request is known. Karen Ayers Delegate of the Commissioner of Patents 15 December 2008 Patent attorneys for the applicant : Griffith Hack, Melbourne Patent attorneys for the opponent : Hodgkinson McInnis Patents, Sydney 12 5 10