23 March 2011

Divisional ‘Case Management’ Still Occupying Patent Office Time

We last reported on the effects of IP Australia’s ‘case management’ approach to divisional applications back in mid-February, when we speculated as to whether or not the rate of refusals under the new processes might drop off.  It seems that, to date, there is no real sign of abatement.

By this time last year, the Patent Office had issued only four written decisions, all in relation to inter partes matters.  As of the time of writing, there have been 21 written decision issued in 2011, of which 15 are refusals of divisional applications under the case management approach.

As far as more substantial matters are concerned, therefore, the rate of issuance of decisions is on par with previous years.  However, the corpus of published Patent Office decisions is clearly becoming bloated with stock refusals of divisional applications, which is unfortunate since it adds nothing of any real substance to the body of administrative decision-making.

This is not to say, however, that there has been no refinement of the case management approach, or that IP Australia is not listening to the concerns of stakeholders.

FURTHER ‘CASE MANAGEMENT’ DECISIONS

The more recent refusals of divisional applications are reported as:
  1. Fw: John Crampton [2011] APO 12 (25 February 2011)
  2. The Proctor & Gamble Company [2011] APO 14 (11 March 2011)
  3. McNeill-PPC,Inc. [2011] APO 15 (11 March 2011)
  4. Beth Israel Deaconess Medical Center, Yale Unidersity and Ikara Holdings, Inc. [2011] APO 16 (15 March 2011)
  5. Biogen Idec, Inc [2011] APO 17 (22 March 2011)
  6. Rubicon Forests Holdings Limited and ArborGen LLC [2011] APO 18 (22 March 2011)
  7. Institut Pasteur and Institut Pasteur de Tunis [2011] APO 19 (22 March 2011)
  8. Auckland Uniservices Limited [2011] APO 20 (22 March 2011)
  9. Bionomics Limited [2011] APO 21 (22 March 2011)
The bulk of these decisions continue to be penned by Hearing Officer Dr Steven Barker, who now seems to be in the swing of churning out his standard refusal decision.

The one exception is the rather strange case of Proctor & Gamble, which was decided by Hearing Officer Owen Haggar.  In this case, the application had already lapsed due to non-payment of an annual continuation fee, and the applicant (through its Australia attorneys) had indicated in writing that it did not intend to defend the refusal of the application.  The decision acknowledges that there is no application to refuse, although the potential for revival via an application for an extension of time exists (see paragraph [45]).  And yet, some 40 paragraphs are devoted to explaining firstly why the application would be refused if it were to be revived, and then why there is, in fact, no application to refuse.

While the review of relevant case law might be useful to someone, we do wonder about the value delivered by this deployment of Patent Office resources on what is, in the circumstances, essentially a procedural matter.

REFINEMENTS TO THE PROCESS

In our previous article on the topic, we noted that the advice of the shortened (two-month) response period under the case management approach was located at the end of the examination report, where it is likely to be missed by the clerical staff who, in many larger firms, handle the processing of incoming correspondence and diarying of deadlines.

We are therefore very pleased to report that IP Australia appears to have recognised this as an issue, and moved the notice to the beginning of the examination report.

We have also become aware that the Patent Office understands that the new practice may be having an adverse effect on some genuine applicants, and is very willing to discuss specific cases on their merits.  Accordingly, if you find yourself in a difficult situation in relation to a divisional application subject to case management, we would strongly encourage you to pick up the phone and speak with Dr Steve Barker, or one of the other friendly staff at IP Australia, about your particular circumstances.  Bear in mind that this is an administrative procedure introduced by IP Australia, and it therefore has a great deal of discretion in how it manages each individual case.  In particular, the initial two-month deadline is not set in stone.

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