Qualcomm Incorporated Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Qualcomm Incorporated [2012] APO 121

Patent Application: 2011200556

Title:GPS satellite signal acquisition assistance system and method in a wireless communications network

Patent Applicant: Qualcomm Incorporated

Delegate: E J Knock

Decision Date: 2 November 2012

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

Representation: Patent applicant: Anthony Lee, Madderns, Adelaide

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011200556

Title:GPS satellite signal acquisition assistance system and method in a wireless communications network

Patent Applicant: Qualcomm Incorporated

Date of Decision: 2 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011200556 was filed by Qualcomm Incorporated, as a divisional of application 2007202699 on 10 February 2011. An examination report issued on 28 May 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 - 3 of my report is based on the same grounds objected to in the examination of patent application 2007202699 (Objection 1 of my report is based on the same grounds objected to in the first report, dated 15 May 2009 and objections 2-3 of my report are based on the same grounds objected to in the second report dated 23 December 2010). 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 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 below.

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

"The examination report of 28 May 2012 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 considered an application for a patent by Qualcomm Incorporated, involving a GPS satellite signal acquisition assistance system and method in a wireless communications network. The application, numbered 2011200556, was a divisional application stemming from an earlier application, 2007202699. The Commissioner issued an examination report on 28 May 2012, raising three objections, which were consistent with objections raised in the examination of the parent application. Despite being given two months to respond to the report, Qualcomm Incorporated did not provide any submissions or amendments to address the objections. Consequently, the Commissioner proceeded to refuse the application.

The legal issues before the court involved the examination of patent applications and the process for handling objections raised during the examination. The primary concern was whether the objections raised in the examination report were valid and if Qualcomm Incorporated had adequately responded to those objections. Additionally, the court had to determine whether the application could be refused due to the lack of a response from the applicant.

The court found that the objections raised in the examination report were appropriately raised and that Qualcomm Incorporated had failed to respond adequately. The applicant did not provide any submissions or amendments to overcome the objections. Given this inaction, the court concluded that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the court upheld the Commissioner's decision to refuse the application.

In summary, the Australian Patent Office refused the patent application 2011200556 by Qualcomm Incorporated. The refusal was based on the failure of the applicant to respond to the objections raised in the examination report, leading to the conclusion that there were no reasonable prospects of overcoming the objections. The Commissioner's decision to refuse the application was upheld by the court.

Qualcomm Incorporated

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