Glaxo Group Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Glaxo Group Limited [2012] APO 117

Patent Application: 2010201953

Title:A fluid dispensing device

Patent Applicant: Glaxo Group 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: Graham Cowin, Phillips Ormonde Fitzpatrick, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010201953
Title:A fluid dispensing device

Patent Applicant: Glaxo Group Limited

Date of Decision: 1 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010201953 was filed by Glaxo Group Limited, as a divisional of application 2005221876 on 14 May 2010. An examination report issued on 31 May 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 - 4 of my report are based on the same grounds objected to in the examination of patent application 2005221876. 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 31 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

Glaxo Group Limited filed a patent application for a fluid dispensing device, as a divisional of an earlier application. The Australian Patent Office issued an examination report on 31 May 2012, raising four objections. The applicant did not respond to the report or the subsequent hearing notice. The Commissioner refused the application on 1 November 2012.

The legal issues in this case were whether the objections raised in the examination report were valid and whether the applicant had provided any submissions or proposed amendments to overcome the objections. The Commissioner considered the objections raised in the examination report and the applicant's failure to respond to the report or the hearing notice. The Commissioner found that the objections were valid and that the applicant had not provided any submissions or proposed amendments to overcome the objections.

The Commissioner concluded that the applicant had chosen not to defend the application and had provided no submissions disputing the objections. The Commissioner also noted that the applicant had not proposed any amendment to attempt to overcome the objections. In these circumstances, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The final orders were that the patent application 2010201953 was refused. The applicant had one month from the date of the decision to appeal the decision to the Federal Court of Australia.

Glaxo Group Limited

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