IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FutureLogic, Inc. [2012] APO 86
Patent Application: 2012201163
Title:Promotional coupon system with anonymous player tracking in a gaming environment
Patent Applicant: FutureLogic, Inc.
Delegate: E J Knock
Decision Date: 8 August 2012
Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused
Representation: Patent applicant: Ernest Graf, Fisher Adams Kelly, Brisbane
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012201163
Title:Promotional coupon system with anonymous player tracking in a gaming environment
Patent Applicant: FutureLogic, Inc.
Date of Decision: 8 August 2012
DECISION
I refuse the application.
REASONS FOR DECISION
Patent application 2012201163 was filed by FutureLogic, Inc. as a divisional of application 2007208167 on 28 February 2012. An examination report issued on 27 March 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:
“Objection(s) 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2007208167. 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 27 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
- AGLC
- FutureLogic, Inc. [2012] APO 86
- Case
- [2012] APO 86
- Decision Date
CaseChat Overview and Summary
The key legal issue for the court was whether the application should be refused due to the applicant's failure to respond to the objections raised in the examination report and hearing notice. The Commissioner's approach to case management of divisional applications requires that objections raised in the examination of the parent application be addressed in the divisional application. The applicant had two months to respond to the objections, but failed to do so, resulting in the refusal of the application. The applicant's failure to provide any submissions or amendments to overcome the objections meant that there were no reasonable prospects of the application being successful.
The hearing officer reviewed the examiner's report and found that the objections were appropriately raised. The applicant had chosen not to defend the application and had provided no submissions disputing the objections. The applicant also did not propose any amendments to overcome the objections. In these circumstances, the hearing officer found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused. The applicant's failure to respond to the objections and provide any submissions or amendments meant that the application was unlikely to succeed, and the refusal of the application was the appropriate outcome.
The final orders of the court were that the patent application 2012201163 be refused. The applicant had failed to respond to the objections raised in the examination report and hearing notice, and had provided no submissions or amendments to overcome the objections. As a result, the application was unlikely to succeed, and the refusal of the application was the appropriate outcome. The Commissioner's approach to case management of divisional applications meant that the objections raised in the examination of the parent application must be addressed in the divisional application, and the applicant's failure to do so led to the refusal of the application.
Orders
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Background
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Evidence
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Decision
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Ratio Decidendi
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