Asan Laboratories Company (Cayman), Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Asan Laboratories Company (Cayman), Limited [2013] APO 8

Patent Application: 2009202036

Title:Method for Ameliorating Pruritus

Patent Applicant: Asan Laboratories Company (Cayman), Limited

Delegate: E J Knock

Decision Date: 22 January 2013

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

Representation: Patent applicant: Jack King-Scott, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009202036
Title:Method for Ameliorating Pruritus

Patent Applicant: Asan Laboratories Company (Cayman), Limited

Date of Decision: 22 January 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009202036 was filed by Asan Laboratories Company (Cayman), Limited as a divisional of application 2007214300 on 22 May 2009. An examination report issued on 11 September 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1-3 of my report is/are based on the same grounds objected to in the examination of patent application 2007214300. 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 below.

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

"The examination report of 12 September 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

The case involved Asan Laboratories Company (Cayman), Limited, which filed a patent application 2009202036 for a method for ameliorating pruritus. The application was a divisional of a previous application 2007214300. The Commissioner of Patents issued an examination report on 11 September 2012, raising several objections to the application. As no response was received from the applicant within the required two months, the Commissioner issued a hearing notice, allowing the applicant one month to file submissions addressing the objections or propose amendments to overcome them. The applicant did not provide any submissions or amendments, leading to the Commissioner considering the application for refusal.

The primary legal issue was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report and the lack of any submissions or proposed amendments. The Commissioner had to determine if the objections were valid and if the applicant had any reasonable prospects of overcoming them. The case also involved the Commissioner's approach to case management of divisional applications and the consequences of the applicant's inaction.

The Commissioner reviewed the examiner's report and concluded that the objections were appropriately raised. Given the applicant's failure to respond to the objections, provide submissions, or propose amendments, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner agreed with the examiner's objections and decided to refuse the application. The Commissioner noted that the application could have been directed for amendment if the applicant had proposed suitable amendments, but in this case, no such amendments were made.

The final order was that the application 2009202036 for the method for ameliorating pruritus by Asan Laboratories Company (Cayman), Limited was refused by the Commissioner of Patents. The refusal was based on the applicant's failure to respond to the objections raised in the examination report and the absence of any submissions or proposed amendments to overcome the objections. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections, and therefore, the application was appropriately refused.

Asan Laboratories Company (Cayman), Limited

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