ABS Corporation

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

ABS Corporation [2011] APO 57

Patent Application: 2010200382

Title:Interpositional arthroplasty system and method

Patent Applicant: ABS Corporation

Delegate: E J Knock

Decision Date: 10 August 2011

Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused

Representation: Patent applicant: Linda Kennaugh, Wrays, Perth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200382

Title:Interpositional arthroplasty system and method

Patent Applicant: ABS Corporation

Date of Decision: 10 August 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200382 was filed by ABS Corporation as a divisional of application 2003205319 on 03 February 2010. An examination report issued on 24 March 2011, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-4 of my report are based on the same grounds objected to in the examination of patent application 2003205319. Please note that if a response overcoming this objection is not filed within two months of the date of this report the Commissioner will consider whether to direct amendment of the application under section 107 or proceed to refuse the application under section 49(2) of the Act. If you intend to proceed under either of these provisions the Commissioner will notify you in writing and indicate the time and place you may be heard on the matter. In deciding the matter the Commissioner will consider all possible grounds of objection to the application not only those identified above."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 24 March 2011 raised an objection(s) equivalent to that in the parent application. In line with our approach to case management of divisionals, you were given two months to respond to that report. As no response has been received, the matter will now be set for hearing.
I believe that it is possible to hear this matter on the basis of written submissions, so I allow you one (1) month from the date of this letter to file any submissions you wish. Your submissions should address the ground(s) of objection identified in the examination report. Once your submissions have been received, or alternatively if no submissions are received, the matter will be passed to a hearing officer to issue a written decision. Please note that it is possible for the Commissioner to refuse the application or direct amendment.
Alternatively, if you file amendments overcoming the objection(s) within this period, the Commissioner will not proceed with the hearing. However, if the amendments do not fully overcome the objection(s), you will be advised of this fact and the hearing may continue as above."

The applicant has not provided any submissions.

The objection

I have reviewed the examiner's report, and I agree that there are appropriately raised objections. The applicant has chosen not to defend the application. They have provided no submissions disputing the objections, and have not proposed any amendment to attempt to overcome the objections. In these circumstances there are no reasonable prospects of the applicant overcoming the objections. The application should be refused.

E J Knock
Delegate of the Commissioner of Patents

ABS Corporation recently faced a decision by the Australian Patent Office concerning their patent application 2010200382. The application, a divisional of an earlier application 2003205319, pertains to an interpositional arthroplasty system and method. The Commissioner, E J Knock, issued an examination report on 24 March 2011, raising five objections that were essentially the same as those raised in the examination of the parent application. The report noted that if the applicant failed to respond within two months, the Commissioner would consider either directing an amendment of the application under section 107 or refusing the application under section 49(2) of the Act.

The key legal issues before the court were whether the objections raised in the examination report were valid and, if so, whether the applicant had provided sufficient grounds to overcome these objections. The Commissioner's approach to managing divisional applications was also relevant, as it was noted that the objections in this case mirrored those raised in the parent application. The applicant, ABS Corporation, represented by Linda Kennaugh from Wrays in Perth, did not respond to the objections within the stipulated time, nor did they propose any amendments to address the objections.

The Commissioner, E J Knock, reviewed the objections and found them to be valid. The applicant's failure to respond or propose amendments meant there were no reasonable prospects of overcoming the objections. Consequently, the Commissioner refused the application. The decision was based on the applicant's inaction and the similarity of the objections to those raised in the parent application.

The final orders of the court were to refuse the patent application 2010200382. The Commissioner's decision was clear and based on the principles of case management for divisional applications and the applicant's failure to engage with the objections raised.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established