DYWIDAG Systems International Pty Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

DYWIDAG Systems International Pty Limited [2011] APO 86

Patent Application: 2010235895

Title:Adhesively Fastening Rock Bolts

Patent Applicant: DYWIDAG Systems International Pty Limited

Delegate: E J Knock

Decision Date: 4 November 2011

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

Representation: Patent applicant: Norman Morcom, Morcom Pernat, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010235895

Title:Adhesively Fastening Rock Bolts

Patent Applicant: DYWIDAG Systems International Pty Limited

Date of Decision: 4 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 201035895 was filed by DYWIDAG Systems International Pty Limited as a divisional of application 2004203289 on 19 October 2010. An examination report issued on 28 June 2011, raising thirteen objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 1-13 of my report are based on the same grounds objected to in the examination of patent application 2004203289. 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 28 June 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 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

The decision in this case was handed down by the Australian Patent Office on 4 November 2011. The case involved a patent application 2010235895, titled "Adhesively Fastening Rock Bolts," filed by DYWIDAG Systems International Pty Limited. This application was a divisional of an earlier application 2004203289. The applicant, DYWIDAG Systems International Pty Limited, was represented by Norman Morcom from Morcom Pernat in Melbourne. The matter was decided by the Delegate, E J Knock.

The primary legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examiner's report. The examiner had raised thirteen objections to the application, which were based on the same grounds as those objected to in the parent application. The applicant was given two months to respond to these objections but did not provide any submissions or proposed amendments to overcome the objections. The Delegate had to determine whether there were reasonable prospects of the applicant overcoming the objections and whether the application should be refused.

The Delegate, E J Knock, reviewed the examiner's report and agreed that the objections were appropriately raised. The applicant had chosen not to defend the application and had provided no submissions disputing the objections. Additionally, the applicant had not proposed any amendments to overcome the objections. In these circumstances, the Delegate found that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the application was refused.

The final orders of the court were that the patent application 2010235895 for "Adhesively Fastening Rock Bolts" filed by DYWIDAG Systems International Pty Limited was refused. The applicant was given the opportunity to file amendments to overcome the objections but did not take advantage of this opportunity. Consequently, the application was refused, and the applicant's patent application was not granted.

DYWIDAG Systems International Pty Limited

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established