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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

ACEI AB [2012] APO 23

Patent Application: 2011200568
Title:A method of gaming and a gaming system

Patent Applicant: ACEI AB

Delegate: E J Knock

Decision Date: 21 February 2012

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

Representation: Patent applicant: Nick Mountford, Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011200568

Title:A method of gaming and a gaming system

Patent Applicant: ACEI AB

Date of Decision: 21 February 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011200568 was filed by ACEI AB as a divisional of application 2008200181 on 10 Feb 2011. An examination report issued on 6 October 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2008200181. 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 6 October 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

In the matter of a patent application by ACEI AB, the Australian Patent Office was required to determine the validity of the application for a patent for a method of gaming and a gaming system. The application was filed as a divisional of an earlier application, and objections were raised during the examination process. The applicant did not respond to the examination report or the subsequent hearing notice, leading to the Commissioner's decision to refuse the application.

The primary legal issue the court had to address was whether the objections raised in the examination report were valid and if the applicant had adequately responded to them. Given the applicant's failure to submit any response or amendments, the court needed to determine if there were reasonable prospects of the applicant overcoming the objections. The Commissioner had to consider whether to proceed with a hearing or to refuse the application outright due to the lack of engagement from the applicant.

In reaching its decision, the court noted that the objections raised in the examination report were valid and that the applicant had not provided any submissions or amendments to address these objections. The Commissioner's approach to case management of divisional applications requires a response within a specified timeframe, and the applicant's failure to respond led to the conclusion that there were no reasonable prospects of overcoming the objections. Therefore, the court upheld the Commissioner's decision to refuse the application.

The final order was that the patent application 2011200568 by ACEI AB was refused. The court's decision was based on the applicant's failure to respond to the objections raised and the absence of any submissions or proposed amendments to address these objections.

ACEI AB

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