Invention Pathways Pty Ltd Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Invention Pathways Pty Ltd [2012] APO 107

Patent Application: 2010201574

Title:Method for Commercialising Inventions

Patent Applicant: Invention Pathways Pty Ltd

Delegate: E J Knock

Decision Date: 4 October 2012

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

Representation: Patent applicant: Regan Gourley, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010201574

Title:Method for Commercialising Inventions

Patent Applicant: Invention Pathways Pty Ltd

Date of Decision: 4 October 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010201574 was filed by Invention Pathways Pty Ltd as a divisional of application 2009201212 on 20 April 2010. An examination report issued on 12 June 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection 1 of my report is based on the same grounds objected to in the Decision of a Delegate of the Commissioner of Patents, Invention Pathways Pty Ltd [2010] APO 10, 21 July 2010, and the examination of patent application 2009201212. 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 12 June 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

CaseChat Overview and Summary

Invention Pathways Pty Ltd applied for a patent for a method of commercialising inventions. The application was filed as a divisional of an earlier application, 2009201212, which had also been objected to by the Commissioner. The Commissioner issued an examination report on the divisional application, raising objections. The applicant was given two months to respond, but failed to do so, either by providing submissions or by filing amendments to the application. The Commissioner issued a hearing notice, allowing one month for the applicant to file submissions or amendments, but the applicant failed to take advantage of this opportunity. The delegate considered the matter and decided that the application should be refused, as the applicant had not provided any submissions or amendments to overcome the objections.

The legal issue for the court was whether the application should be refused due to the applicant's failure to respond to the objections raised by the Commissioner. The delegate found that the objections were appropriately raised and that the applicant had not provided any submissions or amendments to overcome the objections. The delegate also noted that the applicant had failed to respond to previous objections raised in relation to the parent application. In these circumstances, the delegate found that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The delegate emphasised the importance of responding to objections raised by the Commissioner in a timely manner. The delegate noted that the applicant had been given ample opportunity to respond to the objections, but had chosen not to do so. The delegate also noted that the applicant had failed to respond to previous objections raised in relation to the parent application. In these circumstances, the delegate found that the application should be refused. The delegate concluded that the application did not meet the requirements of the relevant legislation and that there were no reasonable prospects of the applicant overcoming the objections.

The delegate refused the application and ordered that it be removed from the register of patents. The applicant had one month from the date of the decision to appeal to the Full Court of the Federal Court of Australia.

Invention Pathways Pty Ltd

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