Carter Holt Harvey Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Carter Holt Harvey Limited [2011] APO 38

Patent Application: 2009206195

Title:Indexable containers

Patent Applicant: Carter Holt Harvey Limited

Delegate: Dr S.D.Barker

Decision Date: 3 June 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: 2009206195

Title:Indexable containers

Patent Applicant: Carter Holt Harvey Limited

Date of Decision: 3 June 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009206195 was filed by Carter Holt Harvey Limited as a divisional of application 2005222510 on 7 August 2009. An examination report issued on 27 January 2011, raising one objection. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2005222510. 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 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 January 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 is an appropriately raised objection. The applicant has chosen not to defend the application. They have provided no submissions disputing the objection, and have not proposed any amendment to attempt to overcome the objection. In these circumstances there are no reasonable prospects of the applicant overcoming the objection. The application should be refused.

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

The case of Carter Holt Harvey Limited involved a patent application for "Indexable containers" filed as a divisional of application 2005222510 on 7 August 2009. The application was examined and an examination report issued on 27 January 2011, raising a single objection. The applicant, Carter Holt Harvey Limited, did not respond to the report, despite being given two months to do so. Following this, the Commissioner issued a hearing notice allowing the applicant one month to file submissions addressing the objection or alternatively file amendments to overcome the objection. The applicant provided neither submissions nor amendments, leading to the Commissioner's decision to refuse the application.

The legal issues that arose in this case were primarily concerned with the case management of divisional patent applications and the consequences of an applicant's failure to respond to an examination report. The Commissioner was required to decide whether the objection raised in the examination report was appropriately raised and whether the applicant had provided any submissions or amendments that could potentially overcome the objection. Additionally, the Commissioner needed to determine the appropriate outcome under the circumstances of the applicant's inaction.

In reaching its decision, the Commissioner reviewed the examination report and found the objection to be appropriately raised. The applicant had chosen not to defend the application and had provided no submissions or proposed any amendments to overcome the objection. Given these circumstances, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objection. The Commissioner agreed with the examiner's objection and determined that the application should be refused. This decision was based on the Commissioner's authority to refuse an application or direct amendment if the applicant fails to respond appropriately to an examination report.

The final orders of the Commissioner were to refuse the patent application 2009206195 for "Indexable containers." The applicant's failure to respond to the examination report and provide any submissions or amendments led to this outcome. The Commissioner's decision was based on the principles of case management for divisional applications and the applicant's inaction in addressing the objection raised.

Carter Holt Harvey Limited

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established