Viacor, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Viacor, Inc. [2011] APO 98

Patent Application: 2010200752

Title:Method and apparatus for improving mitral valve function

Patent Applicant: Viacor, Inc.

Delegate: E J Knock

Decision Date: 23 November 2011

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

Representation: Patent applicant: Bill Bennett, Pizzeys, Canberra

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200752

Title:Method and apparatus for improving mitral valve function

Patent Applicant: Viacor, Inc.

Date of Decision: 23 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200752 was filed by Viacor, Inc. as a divisional of application 2004243029 on 1 March 2010. An examination report issued on 18 July 2011, raising nine objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 3-6 of my report are based on the same grounds objected to in the examination of patent application 2004243029. 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 18 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 case involved Viacor, Inc., the applicant for patent application number 2010200752, which was a divisional application of patent application 2004243029. The application was for a method and apparatus for improving mitral valve function. The decision was handed down by the Australian Patent Office on 23 November 2011, with E J Knock acting as the delegate of the Commissioner of Patents. The primary issue for the court was whether the patent application should be refused due to the applicant's failure to respond to objections raised during the examination process.

The legal issue at hand was whether the application could be refused for non-compliance with the Commissioner's approach to the case management of divisional applications. The applicant had been given two months to respond to the examination report, which raised nine objections. The applicant had failed to respond or provide any submissions, leading the Commissioner to issue a hearing notice. Despite this, the applicant still did not provide any submissions or propose amendments to overcome the objections. The court had to determine whether the application should be refused due to the applicant's lack of response and failure to address the objections.

The court concluded that the objections raised in the examination report were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. The applicant had chosen not to defend the application and had not provided any submissions or proposed amendments to address the objections. Therefore, the court decided that the application should be refused. The Commissioner's approach to case management of divisional applications was followed, and the applicant's failure to respond to the objections led to the refusal of the patent application.

The final orders of the court were that the application for patent number 2010200752 be refused. The court's decision was based on the applicant's failure to respond to the objections raised during the examination process and their lack of submissions or proposed amendments to overcome the objections. The court found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused accordingly.

CaseChat Overview and Summary

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Background to the litigation

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Reasons for decision

Legal Principle Established