Covidien AG

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Covidien AG [2013] APO 11

Patent Application: 2012202830

Title:Method for energy-based stimulation of acupuncture meridians

Patent Applicant: Covidien AG

Delegate: E J Knock

Decision Date: 22 January 2013

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

Representation: Patent applicant: Scott Berggren, Spruson & Ferguson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012202830
Title:Method for energy-based stimulation of acupuncture meridians

Patent Applicant: Covidien AG

Date of Decision: 22 January 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2012202830 was filed by Covidien AG as a divisional of application 2007203269 on 15 May 2012. An examination report issued on 22 August 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 to 4 of my report is/are based on the same grounds objected to in the examination of patent application 2007203269. 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 below.

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

"The examination report of 22 August 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

Covidien AG filed a patent application for a method of energy-based stimulation of acupuncture meridians. The application was a divisional of an earlier application. After an examination report raised objections, the applicant failed to respond within the two-month deadline provided by the Commissioner. The Commissioner subsequently issued a hearing notice allowing the applicant one month to submit written arguments addressing the objections or file amendments. The applicant did not respond in any way. The Commissioner, E J Knock, found that the objections raised in the examination report were appropriately raised, and that the applicant had chosen not to defend the application. There were no reasonable prospects of the applicant overcoming the objections. The Commissioner decided to refuse the patent application.

The legal issue in this case was whether the patent application should be refused due to the applicant's failure to respond to objections raised in the examination report. The Commissioner considered the Commissioner's approach to case management of divisional applications and the lack of response from the applicant. The Commissioner determined that the objections raised in the examination report were appropriately raised and that the applicant had chosen not to defend the application. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner decided to refuse the patent application.

The Commissioner's reasoning was based on the Commissioner's approach to case management of divisional applications. The Commissioner noted that the objections raised in the examination report were equivalent to those raised in the parent application. The Commissioner gave the applicant two months to respond to the examination report, but the applicant did not respond. The Commissioner issued a hearing notice allowing the applicant one month to submit written arguments or file amendments. The applicant did not respond. The Commissioner reviewed the examination report and found that the objections were appropriately raised. The Commissioner found that the applicant had chosen not to defend the application and that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner decided to refuse the patent application.

The final order of the Commissioner was to refuse the patent application. The Commissioner found that the objections raised in the examination report were appropriately raised and that the applicant had chosen not to defend the application. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner decided to refuse the patent application.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established