Insulet Corporation

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Insulet Corporation [2012] APO 101

Patent Application: 2010200623

Title:Self-contained, automatic transcutaneous physiologic sensing system

Patent Applicant: Insulet Corporation

Delegate: E J Knock

Decision Date: 14 September 2012

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

Representation: Patent applicant: Keith Leslie, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200623

Title:Self-contained, automatic transcutaneous physiologic sensing system

Patent Applicant: Insulet Corporation

Date of Decision: 14 September 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200623 was filed by Insulet Corporation as a divisional of application 2003253821 on 19 February 2010. An examination report issued on 15 November 2011, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) of my report are based on the same grounds objected to in the examination of patent application 2003253821. 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 15 November 2011 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

Insulet Corporation, the patent applicant, filed a patent application for a self-contained, automatic transcutaneous physiologic sensing system. The application was a divisional of an earlier application, 2003253821, and was lodged on 19 February 2010. The Commissioner of Patents issued an examination report on 15 November 2011, raising five objections to the patent application. Despite being given two months to respond to the report, the applicant failed to provide any submissions or amendments to overcome the objections. Consequently, the Commissioner issued a hearing notice, offering the applicant a final opportunity to submit written arguments or amendments within one month. However, the applicant did not respond, leading to the decision to refuse the patent application.

The legal issues before the court included whether the objections raised by the examiner were appropriately raised and whether the applicant had provided sufficient grounds to overcome the objections. Given the applicant's inactivity and failure to respond to the Commissioner's notices, the court had to determine if there were reasonable prospects of the applicant overcoming the objections. The applicant's silence and lack of response indicated a lack of intent to pursue the patent application further, leading to the conclusion that the application should be refused.

The Commissioner, E J Knock, reviewed the examiner's report and agreed with the objections. The applicant had not provided any submissions or amendments to address the objections, leaving no reasonable prospects of overcoming them. The Commissioner noted the applicant's failure to respond to the hearing notice and their lack of engagement in defending the application. In these circumstances, the Commissioner concluded that the application should be refused.

The final orders of the court were to refuse the patent application 2010200623. The Commissioner's decision was based on the applicant's failure to respond to the objections raised in the examination report and the hearing notice, and the absence of any submissions or amendments to overcome the objections. The applicant's inaction and lack of engagement in the patent application process led to the refusal of the application.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established