Valueadmin.com Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Valueadmin.com Pty Ltd [2012] APO 19

Patent Application: 2009202640

Title:Telephone for sending voice and text messages

Patent Applicant: Valueadmin.com Pty Ltd

Delegate: E J Knock

Decision Date: 31 January 2012

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

Representation: Patent applicant: Andrew Morton, Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009202640

Title:Telephone for sending voice and text messages

Patent Applicant: Valueadmin.com Pty Ltd

Date of Decision: 31 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009202640 was filed by Valueadmin.com Pty Ltd as a divisional of application 2005220986 on 29 June 2009. An examination report issued on 22 September 2011, raising eight objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 of my report are (sic) based on the same grounds objected to in the examination of patent application 2005220986. 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 22 September 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 decision of Valueadmin.com Pty Ltd was delivered by the Australian Patent Office on 31 January 2012, concerning patent application 2009202640, a divisional of application 2005220986. The applicant, Valueadmin.com Pty Ltd, sought to patent a telephone device for sending voice and text messages. The application was refused by the Commissioner of Patents, with the decision being overseen by E J Knock, Delegate of the Commissioner of Patents. The applicant did not respond to the examiner's objections or file any submissions, leading to the refusal of the application.

The legal issues at hand involved whether the patent application met the requirements of novelty, inventive step, and utility as stipulated by the Patents Act 1990. The Commissioner issued an examination report on 22 September 2011, which outlined eight objections to the application. The applicant was given a period of two months to respond to these objections but failed to do so. The Commissioner then issued a hearing notice allowing the applicant one month to file submissions or amendments to overcome the objections. Despite this opportunity, the applicant did not respond, and no amendments were proposed.

The Delegate of the Commissioner, E J Knock, reviewed the examiner's report and found that the objections were appropriately raised. Given that the applicant had not provided any submissions or amendments to counter the objections, the Delegate concluded that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application was refused, and the decision was made to not proceed with any further hearings or amendments.

In summary, the application for patent 2009202640 was refused by the Australian Patent Office due to the applicant's failure to respond to the examiner's objections or propose any amendments to overcome these objections. The decision was based on the lack of any reasonable prospects of the applicant successfully defending the application against the raised objections.

CaseChat Overview and Summary

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Background to the litigation

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Reasons for decision

Legal Principle Established