Kyphon SARL

[2012] APO 47

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Kyphon SARL [2012] APO 47

Patent Application:                   2011201161

Title:Percutaneous spinal implants and methods

Patent Applicant:  Kyphon SARL

Delegate:  E J Knock

Decision Date:  2 May 2012

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

Representation:  Patent applicant:  Rachel Hooke, FB Rice, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2011201161   

Title:Percutaneous spinal implants and methods

Patent Applicant:  Kyphon SARL

Date of Decision:  2 May 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011201161 was filed by Kyphon SARL as a divisional of application 2007260690 on 16 March 2011.  An examination report issued on 22 November 2011, raising three 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 2007260690. 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 you intend 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.

The current report is substantially identical with the first Examination Report issued in respect of Au2007260690. Claims 1 to 229 substantially correspond with original claims 1 to 229 of parent application Au2007260690.”

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 22 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