Napoleon Corporation as Trustee for the Technology Trust

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Napoleon Corporation as trustee for the Technology Trust [2012] APO 31

Patent Application: 2011201928
Title:A Consumer Credit Finance Cashflow Funding System
Patent Applicant: Napoleon Corporation as trustee for the Technology Trust

Delegate: E J Knock

Decision Date: 22 March 2012

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

Representation: Patent applicant: Alice Brooks, Watermark Patent and Trade Marks Attorneys, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011201928

Title:A Consumer Credit Finance Cashflow Funding System

Patent Applicant: Napoleon Corporation as trustee for the Technology Trust

Date of Decision: 22 March 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011201928 was filed by Napoleon Corporation as trustee for the Technology Trust as a divisional of application 2004278795 on 29 April 2011. An examination report issued on 14 November 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 1 & 3 of my report are based on the same grounds objected to in the examination of patent application 2004278795. 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."

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

"The examination report of 14 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

The Australian Patent Office was faced with a decision regarding patent application 2011201928, a divisional of application 2004278795, filed by Napoleon Corporation as trustee for the Technology Trust. The application, titled "A Consumer Credit Finance Cashflow Funding System," encountered objections from the examiner, prompting a review by Delegate E J Knock on 22 March 2012. The primary issue before the court was whether the objections raised against the application were valid and if the applicant had adequately responded to these objections. The applicant had been given ample opportunity to address the objections, including a specific deadline to respond or propose amendments, but failed to do so.

The court considered the case management approach typically employed for divisional applications, which required the applicant to respond to the objections within a stipulated period. Given that the applicant did not respond or provide any submissions addressing the objections, the court found that the objections were valid and had not been contested. This inaction led the court to conclude that there were no reasonable prospects for the applicant to overcome the objections. Consequently, the court was required to decide whether the application should be refused based on the lack of response from the applicant.

In reaching its decision, the court highlighted that the objections raised were appropriately identified and warranted consideration. The applicant's failure to respond to the examination report or to propose any amendments meant that the application could not be saved. The court thus ruled that the application should be refused as the applicant had not demonstrated any reasonable prospect of overcoming the objections. The decision was made in accordance with the statutory provisions that allow the Commissioner to refuse an application if the objections are not satisfactorily addressed. The court's decision was clear and aligned with the procedural requirements for handling divisional applications.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established