Gregory George Reynolds et al

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Gregory George Reynolds et al [2018] APO 10

Patent Application: 2017202198

Title:Composition

Patent Applicant: Gregory George Reynolds
Stephen Maxwell Papa

Delegate: Greg Powell

Decision Date: 15 February 2018

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

Representation: Patent attorney for the applicant: Wrays Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2017202198

Title:Composition

Patent Applicant: Gregory George Reynolds
Stephen Maxwell Papa

Date of Decision: 15 February 2018

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2017202198 was filed on 3 April 2017 by Gregory George Reynolds and Stephen Maxwell Papa (“the applicants”) as a divisional of application 2015227492 (“parent application”). The parent application was itself a divisional of 2013203025 (“grandparent application”). An examination report issued on 15 September 2017, raising three objections. Given the circumstances associated with this application, as well as the parent and grandparent applications, the report included the following statement:

“Noting the objections in the attached report, and given the circumstances of this case, if a response overcoming the objections is not filed within three (3) 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.”

The applicants did not respond to this report. Subsequently, on 3 January 2018, the Commissioner issued a hearing notice in the following terms:

“The examination report of 15 September 2017 raised objections equivalent to those already raised against the parent and grandparent applications. You were given three 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 grounds 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 applicants have not provided any submissions.

Background

I have reviewed the examiner’s report, and I agree that there are appropriately raised objections. The applicants have 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 applicants overcoming the objections. The application should be refused.

Greg Powell
Delegate of the Commissioner of Patents

The decision of Greg Powell, Delegate of the Commissioner of Patents, concerns patent application 2017202198, a divisional of application 2015227492, which itself was a divisional of application 2013203025. The application was filed by Gregory George Reynolds and Stephen Maxwell Papa. The delegate considered objections raised in an examination report issued on 15 September 2017, and subsequently issued a hearing notice on 3 January 2018, giving the applicants one month to submit written responses addressing the objections. The applicants did not respond to either the examination report or the hearing notice, and did not submit any amendments to the application.

The key legal issue before the delegate was whether there were reasonable prospects of the applicants overcoming the objections raised in the examination report, given their failure to respond to the report or the hearing notice, and their failure to propose any amendments to the application. The delegate held that since the applicants had not provided any submissions or amendments to address the objections, there were no reasonable prospects of them overcoming the objections, and the application should be refused.

The delegate found that the objections raised in the examination report were appropriately raised, and that the applicants had chosen not to defend the application. In these circumstances, the delegate concluded that there were no reasonable prospects of the applicants overcoming the objections, and refused the application. The delegate noted that the Commissioner could have directed amendment of the application under section 107 or proceeded to refuse the application under section 49(2) of the Act, but that the applicants had not taken any steps to address the objections.

The delegate refused the application.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established