Ciba Specialty Chemicals Water Treatments Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Ciba Specialty Chemicals Water Treatments Limited [2012] APO 97

Patent Application: 2011213769

Title:Treatment of Aqueous Suspensions

Patent Applicant: Ciba Specialty Chemicals Water Treatments Limited

Delegate: E J Knock

Decision Date: 10 September 2012

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

Representation: Patent applicant: Janelle Borham, Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011213769

Title:Treatment of Aqueous Suspensions

Patent Applicant: Ciba Specialty Chemicals Water Treatments Limited

Date of Decision: 10 September 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011213769 was filed by Ciba Specialty Chemicals Water Treatments Limited as a divisional of application 2010200985 on 18 August 2011. An examination report issued on 9 May 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1, 2-3 of my report are based on the same grounds objected to in the examination of patent application 2010200895. 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 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 9 May 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

Ciba Specialty Chemicals Water Treatments Limited was the patent applicant in an application to the Australian Patent Office (IPO) for a patent titled "Treatment of Aqueous Suspensions." The IPO received an application for a divisional patent on 18 August 2011. This application was a division of a previously filed application numbered 2010200985. An examination report was issued on 9 May 2012, raising three objections. The applicant did not respond to the objections raised within the stipulated two-month period, nor did it file any submissions in response to the hearing notice. The Commissioner of Patents decided to refuse the application.

The legal issues before the Commissioner were whether the objections raised in the examination report were appropriately raised and whether the applicant had a reasonable prospect of overcoming the objections. The Commissioner found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. The applicant had chosen not to defend the application and had not proposed any amendments to overcome the objections.

The Commissioner noted that the objections raised were equivalent to those raised in the parent application, and the applicant had not responded to the examination report or filed any submissions. The Commissioner considered the Commissioner's approach to case management of divisionals, which required the applicant to respond to the objections within two months. As the applicant did not respond, the Commissioner decided to refuse the application.

The Commissioner refused the patent application and issued a written decision. The applicant had one month to file submissions or amendments to overcome the objections, but did not do so. The Commissioner found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the application was refused.

Ciba Specialty Chemicals Water Treatments Limited

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