Bernard Consulting Limited

AUSTRALIA

AUSTRALIAN PATENT OFFICE

Bernard Consulting Limited [2012] APO 53

Patent Application: 2011202009

Title:Database

Patent Applicant: Bernard Consulting Limited

Delegate: E J Knock

Decision Date: 10 May 2012

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

Representation: Patent applicant: Tim Staley, Griffith Hack, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011202009

Title:Database

Patent Applicant: Bernard Consulting Limited

Date of Decision: 10 May 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011202009 was filed by Bernard Consulting Limited as a divisional of application 2008249232 on 2 May 2011. An examination report issued on 3 January 2012, raising four 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 2002222096. 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 3 January 2012 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

CaseChat Overview and Summary

Bernard Consulting Limited applied for a patent for a database on 2 May 2011. The application was a divisional of application 2008249232. The Australian Patent Office issued an examination report on 3 January 2012 raising four objections. The report noted that objections 1-3 were based on the same grounds objected to in the examination of patent application 2002222096. The report gave the applicant two months to respond to the objections. The applicant did not respond to the report or the subsequent hearing notice. The Commissioner of Patents issued a decision refusing the patent application. Bernard Consulting Limited has appealed the decision to the Australian Patent Office. The appeal raises issues regarding the Commissioner's handling of divisional applications and whether the refusal of the application was appropriate given the applicant's failure to respond to the objections.

The appeal hinges on the Commissioner's approach to case management of divisional applications. The Commissioner's report and hearing notice indicated that if the applicant did not respond to the objections, the Commissioner would consider whether to direct amendment of the application or proceed to refuse the application. The Commissioner took the view that the applicant had not provided any submissions disputing the objections and had not proposed any amendments to overcome the objections. The Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused. The appeal questions whether the Commissioner's approach was appropriate and whether the refusal of the application was justified given the applicant's failure to respond.

The Commissioner's approach to case management of divisional applications is consistent with the Commissioner's published guidelines. The guidelines provide that when a divisional application is filed, the Commissioner will consider whether the divisional application is allowable in light of the objections raised in the examination of the parent application. The guidelines also provide that if the applicant does not respond to the objections, the Commissioner will consider whether to direct amendment of the application or proceed to refuse the application. The Commissioner's approach in this case was consistent with the guidelines. The Commissioner gave the applicant two months to respond to the objections and indicated that if the applicant did not respond, the Commissioner would consider whether to direct amendment of the application or proceed to refuse the application. The Commissioner's approach was therefore appropriate.

The refusal of the application was also appropriate given the applicant's failure to respond to the objections. The applicant had two opportunities to respond to the objections but chose not to do so. The applicant also did not provide any submissions disputing the objections or proposing any amendments to overcome the objections. In these circumstances, there were no reasonable prospects of the applicant overcoming the objections. The Commissioner's decision to refuse the application was therefore justified.

The appeal is dismissed. The decision of the Australian Patent Office to refuse Bernard Consulting Limited's patent application is affirmed.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established