PAYCOOL International Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

PAYCOOL International Limited [2011] APO 75

Patent Application: 2009210397

Title:System to enable a telecom operator provided financial transactions services and methods for implementing such transactions

Patent Applicant: PAYCOOL International Limited

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: Graham Cowin, Phillips Ormonde Fitzpatrick, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009210397

Title:System to enable a telecom operator provided financial transactions services and methods for implementing such transactions

Patent Applicant: PAYCOOL International Limited

Date of Decision: 22 September 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009210397 was filed by PAYCOOL International Limited as a divisional of application 2002258595 on 19 August 2009. An examination report issued on 23 May 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 2 of my report is based on the same grounds objected to in the examination of patent application 2002258695. 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 23 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

PAYCOOL International Limited filed a patent application for a system to enable a telecom operator to provide financial transaction services. The application was a divisional of an earlier application and was refused by the Australian Patent Office. The applicant failed to respond to objections raised by the examiner, resulting in the application being refused. The applicant did not provide any submissions in response to the objections, nor did they propose any amendments to overcome the objections. The delegate of the Commissioner of Patents agreed with the examiner's objections and found that there were no reasonable prospects of the applicant overcoming the objections. The application was ultimately refused.

The primary legal issue in this case was whether the patent application met the requirements for patentability. The examiner raised two objections to the application, and the applicant failed to respond to the objections. The delegate of the Commissioner of Patents found that the objections were appropriately raised and that the applicant had not provided any submissions or amendments to overcome the objections. The delegate concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The court's reasoning was based on the fact that the applicant had failed to respond to the objections raised by the examiner. The delegate noted that the applicant had not provided any submissions or amendments to overcome the objections and that, in these circumstances, there were no reasonable prospects of the applicant overcoming the objections. The delegate agreed with the examiner's objections and found that the application should be refused.

The final orders of the court were that the patent application be refused. The applicant had one month to file any submissions they wished, but failed to do so. The delegate concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused. The applicant did not propose any amendments to overcome the objections, and the delegate found that the application should be refused.

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established