Alcon, Inc. Summary | CaseChat AU

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Alcon, Inc. [2013] APO 27

Patent Application: 2012200976

Title:RNAI-Mediated inhibition of frizzled related protein-1 for treatment of gluacoma

Patent Applicant: Alcon, Inc.

Delegate: E J Knock

Decision Date: 21 March 2013

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

Representation: Patent applicant: Graham Cowin, Phillips Ormonde Fitzpatrick, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012200976

Title:RNAI-Mediated inhibition of frizzled related protein-1 for treatment of gluacoma

Patent Applicant: Alcon, Inc.

Date of Decision: 21 March 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2012200976 was filed by Alcon, Inc. as a divisional of application 2006223131 on 20 February 2012. An examination report issued on 13 August 2012, raising one objection. 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/are based on the same grounds objected to in the examination of patent application 2006223131. 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 intending 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."

The applicant responded to this report by filing submissions but did not file any proposed amendments, whereupon on 2 November 2012 the examiner issued a second report once again raising a single objection and reiterating the note quoted above.

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 2 November 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

Alcon, Inc. sought to secure a patent for an RNAI-mediated inhibition of frizzled related protein-1 for treatment of glaucoma, as a divisional of a previous application. The Australian Patent Office refused the application, finding that it was not open to the applicant to overcome objections raised in the examination report, and that the application should be refused. The case involved an objection raised by an examiner in an examination report, which was reiterated in a subsequent report. Despite being given the opportunity to submit further arguments or amendments, the applicant did not respond, resulting in the Commissioner's decision to refuse the application.

The legal issues in the case centred around the applicant's failure to respond to the objections raised by the examiner, and the Commissioner's authority to refuse the application in such circumstances. The applicant had been given multiple opportunities to address the objections and propose amendments, but chose not to do so. The court needed to determine whether the applicant's failure to respond constituted a sufficient ground for refusal of the application, and whether the Commissioner had the authority to refuse the application without a hearing.

The Commissioner found that the objections raised by the examiner were appropriately raised, and that the applicant had not provided any submissions disputing the objections. The Commissioner also noted that the applicant had not proposed any amendments to overcome the objections. In these circumstances, the Commissioner determined that there were no reasonable prospects of the applicant overcoming the objections, and that the application should be refused. The Commissioner's decision was based on the applicant's failure to respond to the objections, and the authority of the Commissioner to refuse the application without a hearing in such circumstances.

The Commissioner refused the patent application, finding that the applicant had failed to respond to objections raised in the examination report, and that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner's decision was based on the applicant's failure to provide submissions or propose amendments to overcome the objections, and the authority of the Commissioner to refuse the application without a hearing in such circumstances.

Alcon, Inc.

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