OMX Technology AB Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

OMX Technology AB [2011] APO 73

Patent Application: 2010200452

Title:An automated semi-deterministic trading system

Patent Applicant: OMX Technology AB

Delegate: E J Knock

Decision Date: 21 September 2011

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

Representation: Patent applicant: Sarah Middleton, Watermark Patent and Trade Marks Attorneys, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200452

Title:An automated semi-deterministic trading system

Patent Applicant: OMX Technology AB

Date of Decision: 21 September 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200452 was filed by OMX Technology AB as a divisional of application 2003206570 on 9 February 2010. An examination report issued on 29 April 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 2 and 3 of my report are based on the same grounds objected to in the examination of patent application 2003206570. 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 29 April 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

CaseChat Overview and Summary

In the case of OMX Technology AB, the patent applicant, the Australian Patent Office was presented with a dispute concerning the patentability of an automated semi-deterministic trading system. The application in question was filed by OMX Technology AB as a divisional of a previous application on 9 February 2010. Following the issuance of an examination report on 29 April 2011, which raised three objections, the Commissioner, in line with their approach to managing divisional applications, gave the applicant two months to respond to the report. However, no response was received from the applicant, leading to the issuance of a hearing notice allowing one month for written submissions to address the grounds of objection. Despite this opportunity, the applicant did not provide any submissions or amendments, effectively choosing not to defend the application.

The legal issues at the heart of this case revolve around the patentability of the invention as described in the application and whether the applicant had adequately responded to the objections raised by the examiner. The applicant was required to either provide a response to the objections within the specified timeframe, propose amendments to overcome the objections, or face the potential refusal of the application. Given the applicant's failure to respond or amend the application, the primary issue was whether the application could still be considered viable or if refusal was the appropriate outcome.

In rendering their decision, the Commissioner reviewed the examiner's report and determined that the objections were appropriately raised. Given that the applicant had provided no submissions or amendments to overcome the objections, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. As a result, the Commissioner decided to refuse the application, citing the lack of response from the applicant as a decisive factor. The Commissioner's decision was based on the principle that without a proper response or amendments from the applicant, the application could not proceed.

The final orders of the Commissioner were to refuse the patent application 2010200452. The applicant's failure to respond to the examination report and the hearing notice, coupled with the absence of any submissions or proposed amendments, led to this outcome. The refusal of the application was a direct consequence of the applicant's decision not to engage with the objections raised, thereby forfeiting their opportunity to defend the application.

OMX Technology AB

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established