Silvan Australia Pty Ltd Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Silvan Australia Pty Ltd [2011] APO 87

Patent Application: 2009251027

Title:A spraying apparatus

Patent Applicant: Silvan Australia Pty Ltd

Delegate: E J Knock

Decision Date: 4 November 2011

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

Representation: Patent applicant: Ewen Wynne, Wynnes Patent and Trade Mark Attorneys, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009251027

Title:A spraying apparatus

Patent Applicant: Silvan Australia Pty Ltd

Date of Decision: 4 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009251027 was filed by Silvan Australia Pty Ltd as a divisional of application 2007216830 on 18 December 2009. An examination report issued on 23 June 2011, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 2 to 4 of my report are based on the same grounds objected to in the examination of patent application 2007216830. 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 June 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

Silvan Australia Pty Ltd filed a patent application for a spraying apparatus, which was a divisional of an earlier application. The Australian Patent Office issued an examination report raising four objections to the application. The applicant did not respond to the report or the subsequent hearing notice. The Commissioner of Patents, represented by E J Knock, decided to refuse the application as the applicant had failed to provide any submissions or proposed amendments to overcome the objections. The Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections, and therefore the application should be refused.

The legal issues before the court were whether the applicant had adequately responded to the examination report and whether the objections raised by the examiner were appropriately addressed. The Commissioner had to consider the case management approach to divisional applications and the applicant's failure to respond to the hearing notice. The Commissioner also had to determine whether the objections raised by the examiner were appropriately addressed and whether there were any reasonable prospects of the applicant overcoming the objections.

The Commissioner considered the case management approach to divisional applications and the applicant's failure to respond to the hearing notice. The Commissioner noted that the applicant had been given two months to respond to the examination report, but had failed to do so. The Commissioner also noted that the applicant had not provided any submissions or proposed amendments to overcome the objections. The Commissioner concluded that the objections raised by the examiner were appropriately addressed and that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner therefore decided to refuse the application.

The Commissioner refused the patent application for a spraying apparatus filed by Silvan Australia Pty Ltd. The Commissioner noted that the applicant had failed to respond to the examination report and the hearing notice, and had not provided any submissions or proposed amendments to overcome the objections. The Commissioner concluded that the objections raised by the examiner were appropriately addressed and that there were no reasonable prospects of the applicant overcoming the objections.

Silvan Australia Pty Ltd

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