Aristocrat Technologies Australia Pty Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Aristocrat Technologies Australia Pty Limited [2011] APO 88

Patent Application: 2010249172

Title:Gaming system

Patent Applicant: Aristocrat Technologies Australia Pty Limited

Delegate: E J Knock

Decision Date: 7 November 2011

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

Representation: Patent applicant: Andreas Hartmann, Griffith Hack, Perth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010249172

Title:Gaming system

Patent Applicant: Aristocrat Technologies Australia Pty Limited

Date of Decision: 7 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010249172 was filed by Aristocrat Technologies Australia Pty Limited as a divisional of application 2007202182 on 3 December 2010. An examination report issued on 27 June 2011, raising eight objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 to 7 of my report are based on the same grounds objected to in the examination of patent application 2007202182. Specifically objections 1 to 7 of the present report correspond to objections 2 to 8 given in the first examination report of the parent application 2007202182. 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 27 June 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

Aristocrat Technologies Australia Pty Limited applied for a patent for a gaming system. The application was a divisional of an earlier application, 2007202182, and was filed on 3 December 2010. An examination report was issued on 27 June 2011, raising eight objections. The report noted that objections 1 to 7 corresponded to objections 2 to 8 in the examination of the parent application. The applicant was given two months to respond to the report, but did not provide any submissions. Consequently, a hearing notice was issued, allowing the applicant one month to file submissions or amendments. The applicant did not respond, leading to the application being refused.

The legal issues before the court were whether the objections raised in the examination report were valid and whether the applicant had provided a satisfactory response to the objections. The applicant did not provide any submissions or amendments to overcome the objections. The court needed to determine whether the objections were valid and whether the applicant had any reasonable prospects of overcoming the objections. The court also needed to consider the Commissioner's approach to case management of divisional applications and whether the applicant had complied with the requirements.

The court reviewed the examiner's report and agreed that the objections were appropriately raised. The applicant had not provided any submissions disputing the objections, and had not proposed any amendment to attempt to overcome the objections. In these circumstances, there were no reasonable prospects of the applicant overcoming the objections. The application should be refused. The court considered that the applicant had chosen not to defend the application, and had not provided any submissions or amendments to overcome the objections. The court concluded that the application should be refused.

The final order of the court was that the patent application 2010249172 was refused. The applicant was given an opportunity to file submissions or amendments to overcome the objections, but did not respond. The court found that the objections were valid and that there were no reasonable prospects of the applicant overcoming the objections. The application was refused in accordance with the Commissioner's approach to case management of divisional applications.

Aristocrat Technologies Australia Pty Limited

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