Agensys, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Agensys, Inc. [2012] APO 68

Patent Application: 2009230789

Title:Nucleic acid and corresponding protein entitled 98P4B6 useful in treatment and detection of cancer

Patent Applicant: Agensys, Inc.

Delegate: E J Knock

Decision Date: 19 June 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: 2009230789

Title:Nucleic acid and corresponding protein entitled 98P4B6 useful in treatment and detection of cancer

Patent Applicant: Agensys, Inc.

Date of Decision: 19 June 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009230789 was filed by Agensys, Inc. as a divisional of application 2003223469 on 27 October 2009. An examination report issued on 25 January 2012, raising six objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-6 of my report are based on the same grounds objected to in the examination of patent applications 2003223469. 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 January 2012 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

Agensys, Inc. filed a patent application in 2009 as a divisional application of an earlier application. The patent was for a nucleic acid and corresponding protein entitled 98P4B6 useful in the treatment and detection of cancer. The application was refused by the Australian Patent Office. The applicant did not respond to objections raised by the examiner or propose any amendments to overcome the objections. The delegate of the Commissioner of Patents, E J Knock, reviewed the case and agreed with the examiner's objections. The application was refused as there were no reasonable prospects of the applicant overcoming the objections. The applicant did not provide any submissions to the Commissioner in response to the objections.

The legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to objections raised by the examiner. The court considered the examiner's report, the applicant's failure to respond, and the Commissioner's approach to case management of divisional applications. The court found that the objections raised by the examiner were appropriately raised and that the applicant had not provided any submissions or proposed any amendments to overcome the objections. The court concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The court's reasoning was based on the applicant's failure to respond to the objections raised by the examiner. The court noted that the applicant had been given a reasonable opportunity to respond to the objections and to propose any amendments to overcome the objections. The applicant did not take up this opportunity and provided no submissions or proposed any amendments. The court found that the objections raised by the examiner were appropriately raised and that the applicant had not provided any submissions or proposed any amendments to overcome the objections. The court concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

The final orders of the court were that the application was refused. The applicant was given a one-month period to file any submissions they wished, but they did not take up this opportunity. The court found that the objections raised by the examiner were appropriately raised and that the applicant had not provided any submissions or proposed any amendments to overcome the objections. The court concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused.

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