Siemans Industry, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Siemans Industry, Inc. [2013] APO 3

Patent Application: 2011239340

Title:Membrane bioreactor for phosphorus removal

Patent Applicant: Siemans Industry, Inc.

Delegate: E J Knock

Decision Date: 10 January 2013

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

Representation: Patent applicant: Peter Heathcote, Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011239340
Title:Membrane bioreactor for phosphorus removal

Patent Applicant: Siemans Industry, Inc.

Date of Decision: 10 January 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011239340 was filed by Siemans Industry, Inc. as a divisional of application 2007313255 on 26 October 2011. An examination report issued on 3 September 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 of my report is/are based on the same grounds objected to in the examination of patent application 2007313255. 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 3 September 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

CaseChat Overview and Summary

The Australian Patent Office recently dealt with a patent application by Siemens Industry, Inc. The application, numbered 2011239340, was a divisional of an earlier application, 2007313255, and related to a membrane bioreactor designed for phosphorus removal. The applicant, Siemens Industry, Inc., was represented by Peter Heathcote of Shelston IP in Sydney. The decision was handed down by Delegate E J Knock on 10 January 2013, and the application was ultimately refused. The primary legal issue before the court was whether the objections raised by the examiner in the examination report were valid and, if so, whether the applicant had demonstrated any reasonable prospect of overcoming them. The Commissioner's approach to case management of divisional applications was also a factor in the decision-making process.

The court found that the objections raised in the examination report were indeed valid and were based on the same grounds as those raised in the examination of the parent application. The applicant had been given two months to respond to the report but failed to provide any submissions or amendments to address the objections. In the absence of any response from the applicant, the Commissioner issued a hearing notice allowing the applicant one month to file submissions or amendments. Again, the applicant did not respond. The court concluded that the applicant had chosen not to defend the application and had not demonstrated any reasonable prospects of overcoming the objections. Therefore, the application should be refused.

In reaching its decision, the court considered the Commissioner's approach to case management of divisional applications, which involves treating the divisional application in a manner similar to the parent application. The court found that this approach was appropriate in this case and that the objections raised in the examination report were valid. The applicant's failure to respond to the report or to the hearing notice meant that there were no reasonable prospects of the applicant overcoming the objections. The court therefore upheld the objections and refused the application.

The final orders of the court were that the patent application 2011239340 be refused. The court noted that the applicant had one month from the date of the decision to appeal the decision to the Federal Court of Australia. However, if no appeal was lodged within that time, the decision would become final and binding on all parties. The applicant was also given the option to file amendments to overcome the objections within the one-month period, but if the amendments did not fully overcome the objections, the hearing would continue as above.

Siemans Industry, Inc.

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Background to the litigation

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Legal Principle Established