Amazentis SA - [2024] APO 27

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Amazentis SA [2024] APO 27

Patent Application: 2021201143

Title:Compositions comprising an urolithin compound

Patent Applicant: Amazentis SA

Delegate:Dr Scott D. Makin

Decision Date: 28 June 2024

Hearing Date: Written submissions filed on 1 May 2023

Catchwords: PATENTS – examiner objection – novelty and inventive step – amended claims are novel – inventive step objection unable to be maintained – amended claims possess an inventive step - combination of features not obvious – consideration of common general knowledge – no motivation to combine documents – hindsight analysis – application accepted

Representation: Patent attorney for the applicant: FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2021201143

Title:Compositions comprising an urolithin compound

Patent Applicant: Amazentis SA
Date of Decision: 28 June 2024
DECISION

The remaining objections raised by the examiner are not sustainable and I find that all claims as they are currently proposed to be amended are novel and possess an inventive step over the cited prior art. I grant leave to allow the amendments in the third statement of proposed amendments and direct the application proceeds to acceptance.

REASONS FOR DECISION
Background

Patent application 2021201143 (the application or the present application) was filed by Amazentis SA (the applicant) on 22 February 2021. It is a divisional application of 2016314988 (the parent application) and has an earliest claimed priority date of 28 August 2015.
The parent application was the subject of three (3) examination reports (issued on 21 February 2020, 2 February 2021 and 19 February 2021). The parent application failed to gain acceptance within 12 months of issuing the first examination report and duly lapsed.
The present application has so far been the subject of two (2) examination reports—the first was issued on 23 December 2021 and the second on 2 December 2022. The applicant refiled an identical specification to the PCT pamphlet that formed the basis of the specification that entered national phase for the parent application. Accordingly, the first examination report of the present application was raised on identical grounds to the first examination report of the parent application. Proposed amendments and accompanying submissions were filed by the applicant on 11 November 2022. In the second examination report, the examiner maintained that some claims lacked novelty and all claims lacked an inventive step.
In response to the second examination report, a second set of proposed amendments was received on 20 December 2022 proposing to delete the claims alleged to lack novelty accompanied by further submissions as to the inventiveness of the remaining claims. Although a third examination report was not issued, conversation records on file indicate the examiner intended to maintain the inventive step objection to the remaining claims.
Subsequently, the applicant wrote to the Commissioner on 23 December 2022 and requested to be heard in relation to the outstanding objections. Written submissions were received on 1 May 2023 accompanied by a third statement of proposed amendments.
As the present application was filed on 22…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] APO 27
Decision Date: 28 June 2024

CaseChat Overview and Summary

This case concerns an application for the grant of a patent for a composition comprising a source of protein and urolithin A, a metabolite produced by the action of the mammalian gut microbiota on ellagitannins and ellagic acid. The applicant, Amazentis SA, filed an application for the grant of a patent for the composition and its use in enhancing muscle function. The application was the subject of two examination reports, with the examiner maintaining that some claims lacked novelty and all claims lacked an inventive step. The applicant responded to the second examination report by filing a third statement of proposed amendments accompanied by further submissions. This decision concerns the outcome of the application on the third examination. The court found that all claims as they are currently proposed to be amended are novel and possess an inventive step over the cited prior art and directed that the application proceed to acceptance. The court found that the claims as they are currently proposed to be amended are not anticipated by prior art and that the combination of features in the claims does not lead the person skilled in the art to the invention as presently claimed. The court also found that it was not reasonable to combine the prior art documents cited by the examiner in order to arrive at the invention as presently claimed. The court found that the applicant's composition possesses an inventive step over the prior art.

Orders