Energy and Technical Services Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Energy and Technical Services Limited [2012] APO 120

Patent Application: 2010241196

Title:Utility Usage Evaluation System And Method

Patent Applicant: Energy and Technical Services Limited

Delegate: E J Knock

Decision Date: 1 November 2012

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

Representation: Patent applicant: Matt Adams, A J Park, Wellington

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010241196
Title:Utility Usage Evaluation System And Method

Patent Applicant: Energy and Technical Services Limited

Date of Decision: 1 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010241196 was filed by Energy and Technical Services Limited, as a divisional of application 2003238977 on 3 November 2010. An examination report issued on 25 May 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection 1 of my report are [sic] based on the same grounds objected to in the examination of patent application 2003238977. 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 25 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

Energy and Technical Services Limited lodged a patent application for a utility usage evaluation system and method, which was a divisional application of an earlier patent application. The Australian Patent Office issued an examination report raising objections to the patentability of the invention. Despite the patent office's efforts to facilitate the applicant's response, the applicant failed to provide any submissions or amendments to address the objections. The delegate of the Commissioner of Patents considered the objections and concluded that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the patent application.

The primary legal issue in this case was whether the objections raised in the examination report were valid and whether the applicant had provided sufficient grounds to overcome those objections. The delegate had to determine whether the applicant's failure to respond to the examination report and objections justified the refusal of the patent application. The delegate also considered the Commissioner's approach to case management of divisional applications and whether the applicant's failure to respond within the specified timeframe warranted the refusal of the application.

The delegate reviewed the examination report and agreed with the objections raised by the examiner. The applicant did not provide any submissions or proposed amendments to address the objections. The delegate concluded that, in these circumstances, there were no reasonable prospects of the applicant overcoming the objections. Consequently, the delegate decided to refuse the patent application. The delegate emphasized that the applicant had the opportunity to respond to the examination report and objections but chose not to do so, leading to the refusal of the application.

In light of the applicant's failure to respond to the examination report and objections, the delegate refused the patent application. The applicant has the right to appeal the decision within the specified timeframe. However, the delegate's decision stands until such an appeal is lodged and determined.

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