Aperio Group (New Zealand) Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Aperio Group (New Zealand) Limited [2012] APO 43

Patent Application: 2010201132

Title:Improved packaging system

Patent Applicant: Aperio Group (New Zealand) Limited

Delegate: E J Knock

Decision Date: 12 April 2012

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

Representation: Patent applicant: Anton Blijlevens, AJ Park, Auckland

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010201132

Title:Improved packaging system

Patent Applicant: Aperio Group (New Zealand) Limited

Date of Decision: 12 April 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010201132 was filed by Aperio Group (New Zealand) Limited as a divisional of application 2002313991 on 23 March 2010. An examination report issued on 7 December 2011, raising nine objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 7 of my report are based on the same grounds objected to in the examination of patent application 2002313991. 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 7 December 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 Aperio Group (New Zealand) Limited, the applicant filed a patent application for an improved packaging system. The application was a divisional of an earlier application and was considered by the Australian Patent Office. The application faced objections from the examiner, and after a period of two months without a response from the applicant, the Commissioner of Patents considered the application under section 49(2) of the Act, ultimately resulting in a refusal of the patent application.

The primary legal issue before the court was whether the objections raised in the examiner's report were valid and if the applicant had adequately responded to them. The applicant had the opportunity to address the objections raised by the examiner and propose amendments to overcome the objections, but chose not to do so. The court was required to determine if there were reasonable prospects of the applicant overcoming the objections, and if not, whether the application should be refused.

The court reviewed the examiner's report and found that the objections were appropriately raised. The applicant had not provided any submissions or proposed amendments to overcome the objections, leading the court to conclude that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the court upheld the Commissioner of Patents' decision to refuse the patent application.

The final order of the court was to refuse the patent application, in line with the Commissioner of Patents' decision. The applicant's failure to respond to the objections and propose amendments to overcome them resulted in the refusal of the application. The court found that the objections raised by the examiner were valid, and the applicant had not provided any submissions or proposed amendments to overcome the objections, leading to the conclusion that the application should be refused.

Aperio Group (New Zealand) Limited

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