The University of Alabama

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

The University of Alabama [2012] APO 9

Patent Application: 2011200596

Title:Polymer dissolution and blend formation in ionic liquids

Patent Applicant: The University of Alabama

Delegate: E J Knock

Decision Date: 17 January 2012

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

Representation: Patent applicant: John Landells, Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011200596

Title:Polymer dissolution and blend formation in ionic liquids

Patent Applicant: The University of Alabama

Date of Decision: 17 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011200596 was filed by The University of Alabama as a divisional of application 2005231083 on 11 February 2011. An examination report issued on 11 July 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 2-3 of my report are based on the same grounds objected to in the examination of patent application 2005231083. 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 11 July 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

The University of Alabama brought a patent application in relation to polymer dissolution and blend formation in ionic liquids. The application was filed as a divisional of an earlier application and faced objections during examination. The Commissioner of Patents, acting as the delegate, reviewed the objections and decided to refuse the patent application. The applicant did not respond to the objections raised by the examiner and did not file any submissions in defence of the application.

The key legal issue before the Commissioner was whether the patent application met the requirements for patentability, given the objections raised by the examiner. The Commissioner considered the objections, the lack of response from the applicant, and the possibility of the applicant overcoming the objections. The Commissioner concluded 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 objections and found that the applicant had not provided any submissions or proposed any amendments to overcome the objections. The Commissioner noted that the applicant had been given an opportunity to respond and that the application had not been amended to address the objections. The Commissioner found that the application should be refused.

The Commissioner refused the patent application, and no further action will be taken in relation to the application. The applicant has the right to appeal the decision within one month of the date of the decision.

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established