Auckland Uniservices Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Auckland Uniservices Limited [2011] APO 20

Patent Application: 2008202008

Title:Methods And Compositions For Assessment Of Pulmonary Function And Disorders

Patent Applicant: Auckland Uniservices Limited

Delegate: Dr S.D.Barker

Decision Date: 22 March 2011

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

Representation: Patent applicant: A J Park

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2008202008

Title:Methods And Compositions For Assessment Of Pulmonary Function And Disorders

Patent Applicant: Auckland Uniservices Limited

Date of Decision: 22 March 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008202008 was filed by Auckland Uniservices Limited as a divisional of application 2002323841 on 6 May 2008. An examination report issued on 28 October 2010, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objections 1-4 of my report are based on the same grounds objected to in the examination of patent application 2002323841. Documents D1-D5 were cited during that examination. Please note that if a response overcoming those objections 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 intending 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 28 October 2010 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.

Dr S.D.Barker
Delegate of the Commissioner of Patents

Auckland Uniservices Limited filed a patent application for "Methods and Compositions for Assessment of Pulmonary Function and Disorders" with the Australian Patent Office, which was a divisional of an earlier application. Following an examination report raising four objections, the applicant did not respond within the required two months, leading to a hearing notice being issued. Despite the opportunity to submit written arguments or amend the application, the applicant failed to respond or propose any amendments. The Delegate of the Commissioner of Patents concluded that the objections were appropriately raised and that the applicant had no reasonable prospects of overcoming them, resulting in the refusal of the application.

The legal issues before the Delegate centred on whether the objections raised in the examination report were valid and whether the applicant's failure to respond or propose amendments justified the refusal of the patent application. The Delegate had to determine if the application met the criteria for patentability and whether there were reasonable prospects of the applicant overcoming the objections.

The Delegate noted that the objections were based on the same grounds as those objected to in the examination of the parent application and that the applicant had not provided any submissions or amendments to address the objections. The Commissioner's approach to case management of divisional applications required the applicant to respond within a specified period, and the applicant's failure to do so indicated a lack of reasonable prospects of overcoming the objections. Consequently, the Delegate concluded that the application should be refused.

In light of the above, the Delegate refused the patent application. The applicant's failure to respond to the examination report and to propose any amendments led to the conclusion that there were no reasonable prospects of overcoming the objections. Therefore, the application was deemed not to meet the criteria for patentability and was refused accordingly.

Auckland Uniservices Limited

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