Alza Corporation

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Alza Corporation [2012] APO 75

Patent Application: 2010202357

Title:Transdermal analgesic systems having reduced abuse potential

Patent Applicant: Alza Corporation

Delegate: E J Knock

Decision Date: 20 July 2012

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

Representation: Patent applicant: Charles Tansey, Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010202357

Title:Transdermal analgesic systems having reduced abuse potential

Patent Applicant: Alza Corporation

Date of Decision: 20 July 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202357 was filed by Alza Corporation as a divisional of application 2004286852 on 4 June 2010. An examination report issued on 29 February 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 2-3 of my report are based on the same grounds objected to in the examination of patent application 2004286852. 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.

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

"The examination report of 29 February 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

CaseChat Overview and Summary

The decision in Alza Corporation involved a patent application 2010202357 filed by Alza Corporation, which was a divisional of application 2004286852. The application, titled "Transdermal analgesic systems having reduced abuse potential", was subject to an examination report issued by the Commissioner on 29 February 2012. The report raised three objections, with two of them being based on the same grounds as those objected to in the examination of the parent application. The Commissioner, in accordance with their case management approach for divisional applications, notified the applicant that if a response to the objections was not filed within two months, the Commissioner would consider either directing amendment of the application under section 107 or proceeding to refuse the application under section 49(2) of the Act. The applicant did not respond to the examination report, and as such, the Commissioner issued a hearing notice, providing a one-month period for the applicant to file submissions addressing the grounds of objection. No submissions were received by the Commissioner, leading to the decision to refuse the application.

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 examination report and objections. The Commissioner, in their role, needed to determine whether the objections were appropriately raised and whether there were reasonable prospects of the applicant overcoming the objections. Given that the applicant did not respond to the objections or propose any amendments to overcome them, the Commissioner needed to assess whether the application could proceed or should be refused. The court's role was to review the Commissioner's decision and ensure that it was based on appropriate grounds and legal considerations.

The Commissioner reviewed the examiner's report and determined that the objections were appropriately raised. The applicant had chosen not to defend the application and provided no submissions disputing the objections. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections, as they had not proposed any amendments to address the issues raised. The Commissioner concluded that, in these circumstances, the application should be refused. The Commissioner's decision was based on the lack of response from the applicant, the appropriateness of the objections, and the absence of any proposed amendments or submissions to overcome the objections. The Commissioner's decision to refuse the application was upheld by the court.

In conclusion, the court upheld the Commissioner's decision to refuse the patent application 2010202357 filed by Alza Corporation. The applicant failed to respond to the examination report and objections, and did not propose any amendments or submissions to overcome the objections. The court found that the objections were appropriately raised and that there were no reasonable prospects of the applicant overcoming the objections. As a result, the patent application was refused.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established