Shane Robert Miles Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Shane Robert Miles [2012] APO 116

Patent Application: 2009238291

Title:Apparatus for Storing or Holding Items

Patent Applicant: Shane Robert Miles

Delegate: E J Knock

Decision Date: 1 November 2012

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

Representation: Patent applicant: Gary Nock, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009238291
Title:Apparatus for Storing or Holding Items

Patent Applicant: Shane Robert Miles

Date of Decision: 1 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009238291 was filed by Shane Robert Miles, as a divisional of application 2007229415 on 16 November 2009. An examination report issued on 7 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) items 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2007229415. 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 7 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 matter before the Australian Patent Office involves a patent application filed by Shane Robert Miles, seeking protection for an "Apparatus for Storing or Holding Items." The application, numbered 2009238291, was a divisional of an earlier application, 2007229415. The Commissioner of Patents issued an examination report on 7 May 2012, raising several objections to the application. As no response was filed by the applicant within the stipulated two-month period, the Commissioner proceeded to issue a hearing notice, allowing the applicant one month to file submissions addressing the objections. The applicant, however, did not respond or file any submissions. Consequently, the Commissioner was required to make a decision based on the objections raised in the examination report and the lack of response from the applicant.

The central legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report. The Commissioner had to determine if there were reasonable prospects of the applicant overcoming the objections and whether the application could be amended to meet the requirements for patentability. Given the applicant's inaction and the absence of any submissions, the Commissioner concluded that the objections were valid and the application did not meet the necessary criteria for patent protection.

In reaching the decision, the Commissioner reviewed the examiner's report and found the objections to be appropriately raised. The applicant's decision not to defend the application, coupled with the absence of any submissions or proposed amendments, left no reasonable prospect of overcoming the objections. The Commissioner concluded that the application should be refused. The Commissioner's decision was based on the statutory provisions allowing for the refusal of an application under section 49(2) of the Act, given the applicant's failure to respond to the objections and provide any valid grounds for continuing the examination.

The final order of the Commissioner was to refuse the patent application 2009238291, as no response to the objections had been filed by the applicant and no reasonable prospects existed for the applicant to overcome the objections. The Commissioner's decision was based on the statutory authority and the procedural requirements for handling divisional applications under the Patents Act.

Shane Robert Miles

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Background to the litigation

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Legal Principle Established