Indigo Orb, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Indigo Orb, Inc. [2012] APO 77

Patent Application: 2009251218

Title:Apparatus and Method for Detection, Especially Detection of the Puncture of the Epidural Space

Patent Applicant: Indigo Orb, Inc.

Delegate: E J Knock

Decision Date: 20 July 2012

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

Representation: Patent applicant: Claude Anese, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009251218

Title:Apparatus and Method for Detection, Especially Detection of the Puncture of the Epidural Space

Patent Applicant: Indigo Orb, Inc.

Date of Decision: 20 July 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009251218 was filed by Indigo Orb, Inc. as a divisional of application 2004208544 on 24 December 2009. An examination report issued on 21 February 2012, raising seven objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1-7 of my report are based on the same grounds objected to in the examination of patent application AU 2004208544. 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 21 February 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

Indigo Orb, Inc. sought to patent an apparatus and method for detecting the puncture of the epidural space. The application, number 2009251218, was filed as a divisional of an earlier application, number 2004208544. The Australian Patent Office issued an examination report raising seven objections to the application, mirroring those raised in the examination of the parent application. The applicant was given two months to respond to the report, but no reply was received, leading to the issuance of a hearing notice. Despite the opportunity to file written submissions or amendments, the applicant did not engage with the process, and the matter proceeded to a hearing before the Delegate.

The legal issues before the court were whether the objections raised by the examiner were valid and whether the applicant had taken reasonable steps to defend the application. The key question was whether the applicant had a reasonable prospect of overcoming the objections, given their failure to respond to the examination report or the hearing notice. The Delegate had to consider the Commissioner's approach to case management of divisional applications and the consequences of the applicant's inaction.

The Delegate reviewed the examiner's report and found that the objections were appropriately raised. The applicant had not provided any submissions or proposed any amendments to address the objections. In these circumstances, the Delegate concluded that there were no reasonable prospects of the applicant overcoming the objections. The application was refused in line with section 49(2) of the Patents Act 1990. The Delegate noted that the applicant's inaction effectively abandoned the application.

The application was refused, and no further action was taken by the Commissioner regarding the application. The applicant had one month from the date of the hearing notice to file submissions or amendments, but they failed to do so. As a result, the application was deemed to be abandoned, and no further action was required.

Indigo Orb, Inc.

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