AstraZeneca AB

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

AstraZeneca AB [2011] APO 46

Patent Application: 2009208107

Title:A process for resolving, optionally substituted, mandelic acids by salt formation with chiral base cyclic amide

Patent Applicant: AstraZeneca AB

Delegate: E J Knock

Decision Date: 29 June 2011

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

Representation: Patent applicant: Keith Leslie of Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009208107

Title:A process for resolving, optionally substituted, mandelic acids by salt formation with chiral base cyclic amide

Patent Applicant: AstraZeneca AB

Date of Decision: 29 June 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009208107 was filed by AstraZeneca AB as a divisional of application 2004295152 on 11 August 2009. An examination report issued on 17 February 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2004295152. 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 17 February 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 case of AstraZeneca AB, the matter involved a patent application for a process for resolving, optionally substituted, mandelic acids by salt formation with a chiral base cyclic amide. The application was lodged by AstraZeneca AB and was a divisional of a previous application. The delegate of the Commissioner of Patents, E J Knock, was tasked with examining the application and deciding its fate.

The primary legal issue that the delegate had to address was whether the patent application met the requirements for patentability as stipulated by the Australian Patent Act. The examination report issued on 17 February 2011 raised objections to the application, citing issues similar to those raised in the examination of the parent application. Given the Commissioner's policy on managing divisional applications, the delegate gave the applicant two months to respond to the report, but no reply was received. Consequently, a hearing notice was issued, allowing the applicant one month to file submissions or amendments to address the objections. However, the applicant did not respond, nor did they propose any amendments to the application. The delegate found that there were no reasonable prospects of the applicant overcoming the objections, leading to the conclusion that the application should be refused.

Upon reviewing the examiner's report and the applicant's lack of response, the delegate concluded that the objections raised were appropriately identified and that there were no reasonable prospects of the applicant overcoming them. The application was thus refused, and no further action was required from the applicant. The delegate's decision was based on the applicant's failure to provide submissions or propose amendments to overcome the objections raised in the examination report.

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