Aventis Pasteur, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Aventis Pasteur, Inc. [2012] APO 135

Patent Application: 2012200066

Title:Method of enhanced immunogenicity to meningococcal vaccination

Patent Applicant: Aventis Pasteur, Inc.

Delegate: E J Knock

Decision Date: 20 December 2012

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

Representation: Patent applicant: Andrew Blattman, Spruson & Ferguson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012200066

Title:Method of enhanced immunogenicity to meningococcal vaccination

Patent Applicant: Aventis Pasteur, Inc.

Date of Decision: 20 December 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2012200066 was filed by Aventis Pasteur, Inc. as a divisional of application 2010257354 on 5 January 2012. An examination report issued on 1 August 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-3 of my report are based on the same grounds objected to in the examination of patent application 2010257354. 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 1 August 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 Australian Patent Office dealt with the patent application filed by Aventis Pasteur, Inc., seeking protection for a method of enhanced immunogenicity to meningococcal vaccination. The application, numbered 2012200066, was a divisional of an earlier application, 2010257354, and was filed on January 5, 2012. The Commissioner of Patents issued an examination report on August 1, 2012, raising three objections regarding the application. The Commissioner, in accordance with standard case management practices for divisional applications, notified the applicant that if a response to the objections was not filed within two months, the application would be considered for refusal or directed amendment.

The primary legal issues for the court to decide were whether the objections raised in the examination report were valid and, if so, whether the applicant had provided a sufficient response to overcome those objections. The Commissioner, acting as the delegate, had to determine whether the applicant's failure to respond to the objections or propose amendments meant that there were no reasonable prospects of overcoming the objections. This required an assessment of the application's compliance with the statutory requirements for patentability.

The Commissioner reviewed the objections raised in the examination report and found them to be appropriately raised. The applicant did not provide any submissions or proposed amendments to address the objections. Given this lack of response, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the Commissioner decided to refuse the application. The Commissioner's decision was based on the applicant's failure to engage with the objections and provide a viable path forward for the patent application.

In conclusion, the application for patent protection for the method of enhanced immunogenicity to meningococcal vaccination was refused by the Commissioner. This decision was grounded in the applicant's failure to respond to the objections raised in the examination report or propose any amendments. The Commissioner determined that, without any action from the applicant, there were no reasonable prospects of the application being accepted. The Commissioner's decision effectively terminates the patent application process for this divisional application.

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Background to the litigation

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Legal Principle Established