Joseph R. Burke and BGC Partners, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Joseph R. Burke and BGC Partners, Inc. [2011] APO 76

Patent Application: 2010200014

Title:Systems and methods for facilitating completion of repurchase agreements

Patent Applicant: Joseph R. Burke and BGC Partners, Inc.

Delegate: E J Knock

Decision Date: 22 September 2011

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

Representation: Patent applicant: Robert Finzi, Pizzeys Patent and Trade Mark Attorneys, Canberra

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200014

Title:Systems and methods for facilitating completion of repurchase agreements

Patent Applicant: Joseph R. Burke and BGC Partners, Inc.

Date of Decision: 22 September 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200014 was filed by Joseph R. Burke and BGC Partners, Inc.
as a divisional of application 2007200849 on 4 January 2010. An examination report issued on 17 May 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 1 and 2 of my report are based on substantially the same grounds objected to in items 2 and 3 respectively of the First Examination Report of the parent application (AU 2007200849) dated 1 April 2008. Please note that if a response overcoming those objections 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 17 May 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

Joseph R. Burke and BGC Partners, Inc. filed a patent application for a system and methods facilitating the completion of repurchase agreements, which was a divisional application of a previously filed patent application. An examination report was issued by the Australian Patent Office, raising objections to the application. Despite the opportunity to respond, the applicants did not submit any arguments or amendments to address the objections. The case was then referred to the Delegate of the Commissioner of Patents for a decision.

The primary legal issue before the court was whether the patent application should be refused due to the applicants' failure to respond to the objections raised in the examination report. The court needed to determine if the applicants had provided sufficient grounds to overcome the objections or if their inaction warranted a refusal of the application. Another issue was whether the Commissioner's approach to case management of divisional applications was appropriate in this context.

The court considered the Commissioner's approach to case management of divisional applications, which involved giving applicants a period of time to respond to objections before proceeding with a hearing. The court noted that the applicants had not provided any submissions or amendments to address the objections, and therefore, there were no reasonable prospects of them overcoming the objections. The court agreed with the objections raised in the examination report and found that the application should be refused. The court emphasised that the applicants had chosen not to defend the application, and their inaction warranted a refusal.

As a result, the court refused the patent application for systems and methods for facilitating the completion of repurchase agreements. The court found that the objections raised in the examination report were valid and that the applicants had not provided any arguments or amendments to address them. The court also noted that the Commissioner's approach to case management of divisional applications was appropriate in this context.

Joseph R. Burke and BGC Partners, Inc.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established