Diabetes Diagnostics, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Diabetes Diagnostics, Inc. [2012] APO 65

Patent Application: 2010201548

Title:Rapid response glucose sensor

Patent Applicant: Diabetes Diagnostics, Inc.

Delegate: E J Knock

Decision Date: 19 June 2012

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

Representation: Patent applicant: Brett Connor, Freehills, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010201548

Title:Rapid response glucose sensor

Patent Applicant: Diabetes Diagnostics, Inc.

Date of Decision: 19 June 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010201548 was filed by Diabetes Diagnostics, Inc. as a divisional of application 2006209265 on 19 April 2010. An examination report issued on 27 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 and 3-4 of my report are based on the same grounds objected to in the examination of patent applications 2001251097 and 2006209265. 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 27 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

In the case of Diabetes Diagnostics, Inc., the Australian Patent Office was tasked with determining the fate of patent application 2010201548, a divisional of application 2006209265. The application, filed by Diabetes Diagnostics, Inc., sought to patent a rapid response glucose sensor. The Commissioner, represented by E J Knock, issued a decision on 19 June 2012, resulting in the refusal of the patent application. The central issue was whether the objections raised by the examiner were valid and whether the applicant had adequately responded to them.

The primary legal issue the court had to address was whether the objections raised by the examiner were appropriately raised and if the applicant had provided a sufficient response to overcome these objections. The examiner's report, issued on 27 January 2012, outlined four objections that needed to be addressed. The report noted that objections 1 and 3-4 were based on the same grounds objected to in the examination of other patent applications. The Commissioner provided the applicant with two months to respond to the objections, warning that failure to do so would lead to the application being refused under section 49(2) of the Act. Despite the deadline passing, the applicant did not respond or submit any amendments to the application.

The court found that the objections were appropriately raised and the applicant had not provided any submissions or amendments to address the objections. Given the lack of response from the applicant, the Commissioner decided that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the patent application. The decision underscores the importance of timely and adequate responses to examiner objections in patent applications.

Diabetes Diagnostics, Inc.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established