VP Holding, LLC

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

VP Holding, LLC [2012] APO 5

Patent Application: 2011200266

Title:Apparatus for enhanced nano-spectroscopic scanning

Patent Applicant: VP Holding, LLC

Delegate: E J Knock

Decision Date: 10 January 2012

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

Representation: Patent applicant: Tony Davis, FB Rice & Co, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011200266

Title:Apparatus for enhanced nano-spectroscopic scanning

Patent Applicant: VP Holding, LLC

Date of Decision: 10 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011200266 was filed by VP Holding LLC as a divisional of application 2005334507 on 21 January 2011. An examination report issued on 25 August 2011, raising two 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 is based on the same grounds objected to in the examination of patent application 2005334507- please see Examiner’s first report of 16 January 2009 on patent application 2005334507. 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 25 August 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 concerns a patent application 2011200266 filed by VP Holding, LLC, which was a divisional application of patent application 2005334507. The application, titled "Apparatus for enhanced nano-spectroscopic scanning," was assessed by the Australian Patent Office, with E J Knock acting as the delegate. The dispute revolves around objections raised by the examiner regarding the patentability of the invention. The applicant failed to respond to these objections, leading to the application being refused.

The primary legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report. The objections were based on the same grounds that were previously objected to in the examination of the parent application. The Commissioner's approach to managing divisional applications meant that if no response was received within two months, the Commissioner would either direct amendment of the application or proceed to refuse it.

The court, through the delegate E J Knock, reviewed the examiner's report and found that the objections were appropriately raised. The applicant did not provide any submissions or amendments to address the objections. Given that the applicant had not demonstrated any reasonable prospects of overcoming the objections, the delegate concluded that the application should be refused. The lack of response from the applicant solidified the decision to proceed with the refusal.

The final order of the court was to refuse the patent application 2011200266. The decision was made in line with the Commissioner's policy on managing divisional applications, where failure to respond to objections within the specified timeframe leads to the refusal of the application. The applicant's inaction and lack of response to the objections were pivotal in the delegate's decision.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established