Banner Pharmacaps, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Banner Pharmacaps, Inc. [2012] APO 45

Patent Application: 2010212463

Title:Controlled Release Preparations

Patent Applicant: Banner Pharmacaps, Inc.

Delegate: E J Knock

Decision Date: 12 April 2012

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

Representation: Patent applicant: Bernadette Hawkins, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010212463

Title:Controlled Release Preparations

Patent Applicant: Banner Pharmacaps, Inc.

Date of Decision: 12 April 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010212463 was filed by Banner Pharmacaps, Inc. as a divisional of application 2004258894 on 20 August 2010. An examination report issued on 9 December 2011, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 - 5 of my report are based on the same grounds objected to in the examination of patent application 2004258894. 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 9 December 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

Banner Pharmacaps, Inc. filed a patent application for a controlled release preparation on 20 August 2010. This application was a divisional of a previous application, 2004258894. An examination report was issued on 9 December 2011, raising five objections against the application. The applicant was given two months to respond to the report, but no reply was received. The Commissioner then issued a hearing notice, allowing the applicant one month to file submissions to address the grounds of objection. Despite this, the applicant did not provide any submissions or proposed amendments. The Commissioner, E J Knock, found that the objections were appropriately raised and concluded that there were no reasonable prospects of the applicant overcoming the objections, leading to the application being refused.

The legal issue before the Commissioner was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report. The Commissioner considered the Commissioner's approach to case management of divisional applications, which includes allowing a two-month period for the applicant to respond to an examination report. In this case, the applicant had not responded within the given timeframe, and subsequently did not provide any submissions or proposed amendments to overcome the objections. The Commissioner had to determine whether the application should be refused under section 49(2) of the Act, or if there were reasonable prospects of the applicant overcoming the objections.

In considering the matter, the Commissioner reviewed the examiner's report and found that the objections were appropriately raised. The applicant had chosen not to defend the application, providing no submissions disputing the objections and not proposing any amendments. In these circumstances, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the application was refused.

The final order was that the patent application 2010212463 be refused by the Commissioner of Patents.

Banner Pharmacaps, Inc.

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