Aristocrat Technologies Australia Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Aristocrat Technologies Australia Pty Ltd [2012] APO 7

Patent Application: 2010219373

Title:Gaming machine illuminating arrangement

Patent Applicant: Aristocrat Technologies Australia Pty Ltd

Delegate: E J Knock

Decision Date: 17 January 2012

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

Representation: Patent applicant: Stephen Starkie, Griffith Hack, Perth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010219373

Title:Gaming machine illuminating arrangement

Patent Applicant: Aristocrat Technologies Australia Pty Ltd

Date of Decision: 17 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010219373 was filed by Aristocrat Technologies Australia Pty Ltd as a divisional of application 2003234753 on 9 September 2010. A first examination report issued on 9 May 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-3 of my report are based on the same grounds objected to in the examination of patent application 2003234753. 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."

A response to the first report was filed on 11 July 2011. This response resulted in a second examination report being issued on 13 September 2011, maintaining all objections and reiterating the note from the previous report quoted above.

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

"The examination report of 13 September 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 second 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 Aristocrat Technologies Australia Pty Ltd, the patent applicant filed a divisional application in relation to a gaming machine illuminating arrangement. The application was lodged on 9 September 2010 as a divisional of application 2003234753. After initial objections were raised in a first examination report, the applicant filed a response on 11 July 2011. However, this response did not address the objections, leading to the issuance of a second examination report on 13 September 2011. Despite being notified of the need to file submissions within one month to address the objections, the applicant did not provide any submissions or proposed amendments. The Commissioner, in line with the case management approach for divisional applications, ultimately decided to refuse the application due to the lack of a viable defence or proposed amendments by the applicant.

The key legal issue before the court was whether the application should be refused due to the applicant's failure to adequately respond to objections raised in the examination reports. The applicant had been given multiple opportunities to address the objections, including the chance to file submissions or propose amendments. However, the applicant did not take any action to overcome the objections, leading to the conclusion that there were no reasonable prospects of the applicant succeeding in the application. The Commissioner noted that the applicant's inaction and lack of submissions or proposed amendments made it clear that the application should be refused.

The Commissioner, E J Knock, reviewed the examiner's second report and agreed with the raised objections. The applicant's decision not to defend the application, coupled with the absence of any submissions or proposed amendments, led to the conclusion that the application should be refused. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections, and therefore, the application was refused. The Commissioner's decision was based on the applicant's failure to respond to the objections and the lack of any viable defence or proposed amendments.

The final orders of the court were that the application 2010219373 be refused. The Commissioner found that the applicant had failed to address the objections raised in the examination reports and had not proposed any amendments to overcome the objections. As a result, the application was refused, and the applicant was not granted a patent for the gaming machine illuminating arrangement. The Commissioner's decision was based on the applicant's inaction and the lack of any reasonable prospects of the applicant overcoming the objections.

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established