Reckitt Benckiser (UK) Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Reckitt Benckiser (UK) Limited [2012] APO 52

Patent Application: 2010202351

Title:Dispenser

Patent Applicant: Reckitt Benckiser (UK) Limited

Delegate: E J Knock

Decision Date: 10 May 2012

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

Representation: Patent applicant: Greg Whitehead, Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010202351

Title:Dispenser

Patent Applicant: Reckitt Benckiser (UK) Limited

Date of Decision: 10 May 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202351 was filed by Reckitt Benckiser (UK) Limited as a divisional of application 2004266477 on 4 June 2010. An examination report issued on 19 December 2011, raising seven objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-3, 5-7 of my report are based on the same grounds objected to in the examination of patent application 2004266477. 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 19 December 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

Reckitt Benckiser (UK) Limited lodged a patent application for a dispenser on 4 June 2010. The application was a divisional of application 2004266477. An examination report issued on 19 December 2011 raised seven objections, which were based on the same grounds objected to in the examination of the parent application. The Commissioner gave the applicant two months to respond to the report but no reply was received. The Commissioner issued a hearing notice, giving the applicant one month to file submissions addressing the grounds of objection. The applicant provided no submissions and the application was referred to a hearing officer to issue a written decision.

The legal issues the court was required to decide were whether the objections raised in the examination report were appropriately raised, and whether the applicant had any reasonable prospects of overcoming the objections. The applicant had not provided any submissions disputing the objections, nor had they proposed any amendment to attempt to overcome the objections. The Commissioner found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections.

In reaching the decision, the Commissioner noted that the applicant had not provided any submissions or proposed any amendment to overcome the objections. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused. The Commissioner agreed with the examiner's report and found that the objections were appropriately raised. The Commissioner noted that the applicant had not responded to the examination report or provided any submissions to address the grounds of objection. In these circumstances, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The final order of the court was that the application was refused. The Commissioner found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. The applicant had not provided any submissions or proposed any amendment to overcome the objections and the application was therefore refused.

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Background to the litigation

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Legal Principle Established