Allergan, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Allergan, Inc. [2011] APO 62

Patent Application: 2010201226

Title:8-azaprostaglandin analogs as agents for lowering intraocular pressure

Patent Applicant: Allergan, Inc.

Delegate: E J Knock

Decision Date: 12 August 2011

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

Representation: Patent applicant: Gavin Recchia, Davies Collison Cave, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010201226

Title:8-azaprostaglandin analogs as agents for lowering intraocular pressure

Patent Applicant: Allergan, Inc.

Date of Decision: 12 August 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010201226 was filed by Allergan, Inc. as a divisional of application 2003231188 on 26 March 2010. An examination report issued on 20 April 2011, raising eight objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 3-7 of my report are based on the same grounds objected to in the examination of patent application 2003231188. 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 20 April 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

In the matter of Allergan, Inc., the Australian Patent Office was tasked with deciding on the patentability of a divisional application, 2010201226, filed by the patent applicant, Allergan, Inc. The application, concerning 8-azaprostaglandin analogs as agents for lowering intraocular pressure, was a divisional of application 2003231188. An examination report issued on 20 April 2011 raised eight objections, with the Commissioner indicating that failure to respond within two months would lead to consideration of refusal or direction of amendment. No response was received by the applicant, and thus, the Commissioner issued a hearing notice, allowing one month for submission of any arguments or amendments. The applicant did not provide any submissions.

The primary legal issue before the court was whether the objections raised in the examination report were valid and whether the applicant had any reasonable prospects of overcoming these objections. The objections raised in the examination report pertained to the patentability of the claims under the Australian Patents Act, particularly focusing on novelty, inventive step, and utility. The Commissioner's approach to the case management of divisional applications was also a critical consideration, as it provided a framework for the decision-making process.

In reviewing the examiner's report, the Delegate, E J Knock, found that the objections were appropriately raised and agreed with the examiner's findings. The applicant had not provided any submissions or proposed amendments to overcome the objections, which led the Delegate to conclude that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the Delegate ruled that the application should be refused. This decision was grounded in the Commissioner's case management approach and the lack of any response from the applicant to the objections raised.

Allergan, Inc.

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