IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
InterDigital Technology Corporation [2012] APO 130
Patent Application: 2010202535
Title:Method and apparatus for utilizing a directional beam antenna in a wireless transmit/receive unit
Patent Applicant: InterDigital Technology Corporation
Delegate: E J Knock
Decision Date: 29 November 2012
Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused
Representation: Patent applicant: Paul Fong, Watermark Patent and Trade Marks Attorneys, Melbourne
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010202535
Title:Method and apparatus for utilizing a directional beam antenna in a wireless transmit/receive unit
Patent Applicant: InterDigital Technology Corporation
Date of Decision: 29 November 2012
DECISION
I refuse the application.
REASONS FOR DECISION
Patent application 2010202535 was filed by InterDigital Technology Corporation as a divisional of application 2008203537 on 18 June 2010. An examination report issued on 4 May 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:
“Objection 1 of my report are[sic] based on the same grounds objected to in the examination of patent application (see the objection 1 in the first report issued in relation to the parent application 2008203537 on 13 November 2009). 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 4 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
- AGLC
- InterDigital Technology Corporation [2012] APO 130
- Case
- [2012] APO 130
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report and the lack of submissions to overcome these objections. The court considered the Commissioner's approach to case management of divisional applications and noted that the applicant had not proposed any amendments to overcome the objections. The court found that the objections were appropriately raised and that the applicant had no reasonable prospects of overcoming the objections.
The court found that the objections raised in the examination report were valid and that the applicant had not provided any submissions to counter these objections. The court concluded that the applicant had no reasonable prospects of overcoming the objections. The court was satisfied that the Commissioner had followed the appropriate procedures in issuing the examination report, the hearing notice, and ultimately in refusing the application. The court found that there were no grounds for the applicant to appeal the decision.
The final orders of the court were that the patent application 2010202535 be refused. The applicant was given the opportunity to file submissions within one month of the hearing notice, but failed to do so. The court found that the application should be refused as there were no reasonable prospects of the applicant overcoming the objections. The applicant's failure to respond to the examination report and the lack of submissions to counter the objections were key factors in the court's decision.
Orders
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
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Ratio Decidendi
Legal Principle Established
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