ESPEED, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

ESPEED, Inc. [2012] APO 85

Patent Application: 2011202067

Title:System and method for matching trading orders based on priority

Patent Applicant: ESPEED, Inc.

Delegate: E J Knock

Decision Date: 7 August 2012

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

Representation: Patent applicant: Robert Finzi, Pizzeys, Canberra

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011202067

Title:System and method for matching trading orders based on priority

Patent Applicant: ESPEED, Inc.

Date of Decision: 7 August 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011202067 was filed by ESPEED, Inc. as a divisional of application 2006278384 on 5 May 2011. An examination report issued on 14 March 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 2 of my report is based on the same grounds objected to in the examination of patent application 2006278384. 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 14 March 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

The Australian Patent Office was presented with a case involving ESPEED, Inc. and their patent application 2011202067, a divisional of application 2006278384. The application, titled "System and method for matching trading orders based on priority," faced objections during its examination. The Commissioner of Patents, E J Knock, issued a decision on 7 August 2012, refusing the application due to the applicant's failure to respond to the objections raised. The primary legal issue in this case was whether the patent application met the requirements for patentability, specifically in light of the objections raised by the examiner. Given the applicant's lack of response and submissions, the Commissioner determined that there were no reasonable prospects of overcoming the objections, leading to the refusal of the application.

The Commissioner reviewed the examiner's report and found the objections to be appropriately raised. The applicant, ESPEED, Inc., did not provide any submissions or proposed amendments to address the objections. The Commissioner concluded that the application did not meet the requirements for patentability and should be refused. The case management approach of the Australian Patent Office for divisional applications was also considered, where the Commissioner has the discretion to refuse an application or direct amendment if no response is received within the stipulated timeframe. In this instance, the Commissioner exercised this discretion, resulting in the refusal of the application.

The court found that the applicant had failed to respond to the objections raised in the examination report and did not provide any submissions or amendments to overcome the objections. Consequently, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the application. The Commissioner's decision was based on the lack of response from the applicant and the appropriately raised objections by the examiner. The Commissioner also considered the case management approach for divisional applications, which allows for the refusal of an application if no response is received within the stipulated timeframe.

The final order of the court was the refusal of the patent application 2011202067 by ESPEED, Inc. The Commissioner's decision was based on the applicant's failure to respond to the objections raised in the examination report and the lack of submissions or amendments to overcome the objections. The Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the application. The case highlights the importance of timely responses and submissions in patent applications, as well as the Commissioner's discretion in case management of divisional applications.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established