Extensions of Time - date of service of document delivered electronically outside business hours - whether failure to serve in time electronically was a relevant "error or omission" justifying grant of an extension of time
ELECTRONIC COMMUNICATIONS — A PRACTICAL REVIEW
In particular, if you wish to transmit information "in writing", which relates to a matter under a relevant law of the Australian Commonwealth (including patent matters), via electronic means, then you must have the consent of the recipient to do so. The consent may be express, or implied by the conduct of the parties. So preferably you would ask the other party beforehand whether they agree to communication via, eg fax or email. However, if all prior communications between you had been electronic on both sides, then an implied consent would most likely exist.
Nonetheless, in normal circumstances an electronic communication, like a traditional letter, is only formally "received" once it comes to the attention of the addressee. Thus an email or fax sent after hours, is only "received" once it is read by the recipient the next morning, even though an electronic record might exist to prove that it was actually received electronically the night before.
If you wish to have the benefit of after-hours delivery, you must send to a "designated information system". This will typically be an email address or facsimile number that has been explicitly nominated by the recipient for the receipt of the document(s) in question. A general consent, either express or implied, is not sufficient.
The upshot of all this is that a party to proceedings under the Patents Act 1990 should not assume that official documents can be served on another party electronically, and certainly should not assume that it is possible to do so after hours on the due date. In the case discussed below, an opponent (PIHA Pty ltd) was granted an extension of time within which to serve a Statement of Grounds and Particulars of opposition, but this was only because, in the particular circumstances, a relevant error had resulted in electronic delivery outside business hours. In different circumstances (particularly deliberately leaving service until the "last minute") the result of late service could be fatal.
ELECTRONIC SERVICE OF OPPOSITION DOCUMENTS
This Patent Office decision, by the Commissioner's Delegate Karen Ayers, relates to an application by PIHA Pty Ltd ("PIHA") for an extension of time under Section 223 pf the Patents Act 1990 to serve a Statement of Grounds and Particulars (SGP) of opposition on patent applicant Spiral Tube Makers Pty Ltd ("Spiral").
The SGP was due on 21 April 2010. It was sent by the opponent via facsimile after normal business hours, and could not have been received by the applicant any earlier than 7:24pm on the due date.
The use of electronic communications in relation to Commonwealth laws is governed by the Electronic Transactions Act 1999. Assuming that all other requirements are satisfied, including consent to electronic communications between the parties, the provisions relevant to the circumstances in this case are those of Section 14. In particular, subsection 14(4) reflects the default position that in the absence of a "designated information system", the time of receipt of a communication "is the time when the electronic communication comes to the attention of the addressee."
Subsection 14(3) allows for "designation" of an information system, such that the time of receipt of a communication by such a designated information system "is the time when the electronic communication enters that information system."
PIHA noted "that most companies only have one facsimile. They argued that where there is implied consent to receive documents via facsimile it would be clear that the Company’s facsimile machine would be the designated information system" (at ).
However, the Patent Office has previously determined that "designation" must be explicit, and cannot be implied (Aristocrat Technologies, Inc. v IGT  APO 33). Furthermore, it is clear following a more recent decision that any "practice" of accepting after-hours service on the basis of "goodwill" is not sustainable (IGT v Aristocrat Technologies, Inc.  APO 11) Thus PIHA's argument was unsuccessful.
Accordingly, the SGP was not received until the morning of 22 April 2010, ie one day late. For the opposition to remain in train, the opponent required that its request for an extension of time be granted.
EXTENSION OF TIME
An extension of time may be granted under subsection 223(2) of the Patents Act 1990, inter alia, if because of "an error or omission by the person concerned or by his or her agent or attorney" a relevant act was not done in time.
The evidence established, to the Delegate's satisfaction, that the opponent and applicant had been negotiating a settlement to the opposition, and that the opponent had been given reason to believe that the applicant would sign an agreement on 21 April 2010, such that it would not be necessary to continue to pursue the opposition. This, it turned out, was a "mistaken belief" (at ), which was a first relevant error. A second error was that the opponent's attorney was apparently unaware of the requirement for electronic service to be completed prior to the close of business, in the absence of an agreed "designated information system" (at ).
The Delegate was satisfied that these errors occurred, and were causative of the late service. She was therefore required to consider whether it was appropriate, in the case, to exercise the Commissioner's discretion to allow the extension. Given the very short period requested, the absence of any delay in requesting the extension, and the fatal consequences to the opposition were the extension denied, the Delegate had no difficulty in determining that the extension should be allowed (at -).
Electronic communication, by its very nature, facilitates "last minute" filing and service of legal documents. It would be a mistake to believe, however, that it is a simple substitute for traditional methods of delivery.
Electronic transmission requires consent by the recipient. While this may be implied, rather than express, if service of a required document is an early communication between two parties prior to any habitual means of correspondence being established, there may be no implied consent.
Furthermore, if it is necessary to deliver a document electronically after hours, this may only be done to an expressly-agreed "designated information system", such as a nominated fax number or email address.
Under the Patents Act 1990, extensions of time will typically be applicable if a genuine error or omission has occurred, or whether circumstances beyond the control of the sender have prevented timely delivery. However, intentionally delaying service until the "last minute" may mitigate against the grant of an extension if anything goes wrong!