Catchwords: PATENTS – examiner’s objections – synergistic mixtures – manner of manufacture – claim directed to a kit – novelty – section 40 – disclosure and support – plausibility – post-filing evidence – inventive step – common general knowledge – combinations – final date for acceptance deferred
Representation: Counsel for the applicant: Mr Craig Smith
Patent attorneys for the applicant: Dr Grant Jacobsen, Dr Chris Vindurampulle and Ms Amanda Jones of Watermark Intellectual Property Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017204400 & 2017204506
Title:Pesticidal mixtures
Patent Applicant: BASF Corporation
Date of Decision: 19 July 2019
DECISION
2017204400
The claims are novel and the specification complies with sections 40(2)(a) and 40(3). The claims do not lack inventive step in light of the common general knowledge alone. Claim 5 is not for a manner of manufacture.
Pursuant to regulation 13.4(3), the final date for acceptance is six (6) months from the date of this decision.
2017204506
The specification complies with section 40(2)(a) and 40(3). The claims do not lack inventive step in light of the common general knowledge alone or in combination with the cited prior art. Claim 2 is not for a manner of manufacture.
Pursuant to regulation 13.4(1)(g), the final date for acceptance is three (3) months from the date of this decision.
REASONS FOR DECISION
Background
BASF Corporation (the applicant) filed patent application 2017204400 (the 400 application) on 28 June 2017. The 400 application is a divisional application based on 2013349839, which claims priority from EP 13182466.6 and EP 12193723.9 and has an earliest claimed priority date of 22 November 2012.
The applicant filed patent application 2017204506 (the 506 application) on 30 June 2017. The 506 application is a divisional application based on 2013349890, which claims priority from EP 13182404.7, EP 12193741.1 and EP 13185093.5 and has an earliest claimed priority date of 22 November 2012.
Amendments brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) apply to these applications as they were filed after its commencement.
A first examination report on the 400 application was issued on 25 January 2018 raising an objection of lack of compliance with sections 40(2)(a) and 40(3). The objection to lack of compliance with section 40 was maintained in a second examination report issued on 18 May 2018 and a third examination report was issued on 20 December 2018 including objections in relation to manner of manufacture, sections 40(2)(a) and 40(3), novelty and inventive step.
A first examination report on the 506 application was issued on 25 January 2018 raising an objection of lack of compliance with sections 40(2)(a), 40(2)(aa) and 40(3). After a number of reports in which lack of compliance with section 40 was maintained (and further…
Grounds of appeal
[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.
[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.
[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.
Consideration
[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.
[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.
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AGLC
BASF Corporation [2019] APO 34
Case
[2019] APO 34
Decision Date
CaseChat Overview and Summary
BASF Corporation filed two patent applications, 2017204400 and 2017204506, which relate to synergistic pesticidal mixtures. The applications were subject to objections raised by the examiner, which were heard by Dr Smith, a delegate of the Commissioner of Patents. The objections related to the manner of manufacture, novelty, compliance with section 40 of the Patents Act 1990 (Cth) and inventive step. The applicant, BASF Corporation, sought to have the objections dismissed. Dr Smith found that claims 5 and 2 of the 400 and 506 applications, respectively, were not for a manner of manufacture. The applicant had indicated an intention to delete claim 5 of the 400 application and to amend claim 1 of the 400 application to delete “M-2 GABA-gated chloride channel antagonists.” The claims of the 400 application were found to be novel in light of the cited prior art and to have an inventive step in light of the common general knowledge. The claims of the 506 application were also found to be novel in light of the cited prior art and to have an inventive step in light of the common general knowledge and the cited prior art documents. Dr Smith concluded that the specifications of the 400 and 506 applications complied with the disclosure and support requirements of section 40 of the Patents Act 1990 (Cth). Dr Smith allowed the applicant a period of six months from the date of the decision to gain acceptance of the 400 application and three months from the date of the decision to gain acceptance of the 506 application.