Fletcher Building Holdings Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Fletcher Building Holdings Limited [2012] APO 81

Patent Application: 2011213907

Title:Improvements In/Or Relating To Sliding Panels

Patent Applicant: Fletcher Building Holdings Limited

Delegate: E J Knock

Decision Date: 27 July 2012

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

Representation: Patent applicant: Anton Blijlevens, AJ Park, Auckland

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011213907

Title:Improvements In/Or Relating To Sliding Panels

Patent Applicant: Fletcher Building Holdings Limited

Date of Decision: 27 July 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011213907 was filed by Fletcher Building Holdings Limited as a divisional of application 2005260228 on 26 August 2011. An examination report issued on 1 March 2012, raising nine objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 2, 5, 6, 8, and 9 of my report are based on the same grounds objected to in the examination of patent application 2005260228. 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 1 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

In the matter of patent application number 2011213907, the applicant Fletcher Building Holdings Limited filed a divisional application of 2005260228 on 26 August 2011. The applicant sought a patent for "Improvements In/Or Relating To Sliding Panels". The Australian Patent Office issued an examination report on 1 March 2012 raising nine objections to the application. The applicant did not respond to the examination report within the prescribed period, and subsequently did not provide any submissions in response to the hearing notice issued by the Commissioner. The delegate of the Commissioner of Patents, E J Knock, was required to decide whether the application should be refused or if there were reasonable prospects of the applicant overcoming the objections.

The primary issue for determination was whether the objections raised in the examination report were valid and if the applicant had provided a sufficient response to overcome the objections. The Commissioner's approach to case management of divisional applications required the applicant to respond to the objections within two months of the examination report. As the applicant did not respond, the Commissioner issued a hearing notice allowing the applicant one month to file submissions addressing the grounds of objection. The applicant did not provide any submissions, nor did they file any amendments to overcome the objections.

The delegate of the Commissioner of Patents, E J Knock, reviewed the examiner's report and found that the objections were appropriately raised. The applicant chose not to defend the application and did not provide any submissions disputing the objections or proposing amendments to overcome the objections. In these circumstances, the delegate found that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the delegate decided to refuse the application.

The final order of the court was that the patent application 2011213907 was refused by the delegate of the Commissioner of Patents, E J Knock, due to the applicant's failure to respond to the objections raised in the examination report and their lack of submissions or proposed amendments to overcome the objections.

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