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 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.
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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 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
3. 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 Austar
Finance v Campbell NSWSC 1793 (21 December 2007)], this meant that
service was not completed until the following morning when the email was
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3. brought to the addressee’s 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
delegate’s 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 delegate’s 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 applicant’s 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 Commissioner’s letter to both parties of 30 July 2008
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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 cases—at 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 communication—the entity’s
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 information—the entity’s 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 entity—the 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 person’s 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 person’s 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
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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
addressee’s 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?
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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 Commissioner’s 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 Court’s approach is relevant to the
Commissioner’s consideration.
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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 applicant’s 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
addressee’s 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
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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
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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 recipient’s 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 addressee’s computer, fax or
3 http://www.ag.gov.au/www/agd/agd.nsf/Page/e-commerce_Electroniccommerceexpertgroupsreport
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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 addressee’s
mailbox or be received by the addressee’s 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 recipient’s 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 applicant’s 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?
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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 applicant’s 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 applicant’s 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
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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
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