Amgen Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Amgen Inc. [2012] APO 6

Patent Application: 2009245850

Title:Antibodies to DKK-1

Patent Applicant: Amgen Inc.

Delegate: E J Knock

Decision Date: 17 January 2012

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: 2009245850

Title:Antibodies to DKK-1

Patent Applicant: Amgen Inc.

Date of Decision: 17 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009245850 was filed by Amgen Inc. as a divisional of application 2005267722 on 8 December 2009. An examination report issued on 30 August 2011, raising nine 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 2005267722. 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 30 August 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

Amgen Inc. applied for a patent for antibodies to DKK-1, a divisional application of an earlier application. The application was objected to by the examiner, and no response was filed by the applicant within the prescribed period. The delegate of the Commissioner of Patents was required to determine whether the application should be refused or directed for amendment. The applicant did not provide any submissions or proposed amendments to overcome the objections.

The legal issues before the delegate were whether the objections raised by the examiner were appropriately raised, and whether there were reasonable prospects of the applicant overcoming the objections. The delegate reviewed the examiner's report and found that the objections were appropriately raised. The applicant had not provided any submissions disputing the objections, and had not proposed any amendments to overcome the objections. The delegate found that there were no reasonable prospects of the applicant overcoming the objections.

In these circumstances, the delegate decided to refuse the application. The delegate noted that the Commissioner's approach to case management of divisional applications was to consider all possible grounds of objection to the application, not only those identified above. The applicant had not provided any submissions or proposed amendments to overcome the objections, and the delegate found that there were no reasonable prospects of the applicant overcoming the objections.

The delegate refused the application, and the applicant was given the option to appeal the decision to the Full Court of the Federal Court of Australia within one month of the decision. The delegate noted that the applicant could also file amendments overcoming the objection(s) within this period, in which case the Commissioner would not proceed with the hearing. However, if the amendments did not fully overcome the objection(s), the applicant would be advised of this fact and the hearing may continue as above.

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Background to the litigation

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Legal Principle Established