Bayer CropScience AG

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Bayer CropScience AG [2012] APO 89

Patent Application: 2011203181

Title:Method of analyzing phosphorous acid, fosetyl-Al or both simultaneously

Patent Applicant: Bayer CropScience AG

Delegate: E J Knock

Decision Date: 8 August 2012

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

Representation: Patent applicant: Andrew Jones, Griffith Hack, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011203181

Title:Method of analyzing phosphorous acid, fosetyl-Al or both simultaneously

Patent Applicant: Bayer CropScience AG

Date of Decision: 8 August 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011203181 was filed by Bayer CropScience AG as a divisional of application 2006208702 on 29 June 2011. An examination report issued on 23 March 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2006208702. 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 23 March 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

Bayer CropScience AG recently faced a decision from the Australian Patent Office regarding their patent application 2011203181. The application, which was a divisional of an earlier application 2006208702, sought to patent a method of analyzing phosphorous acid, fosetyl-Al, or both simultaneously. The applicant, represented by Andrew Jones from Griffith Hack in Sydney, did not respond to the examiner's objections, leading to the application being refused.

The primary legal issue before the court was whether the objections raised by the examiner were valid and whether the applicant had adequately responded to them. The objections included concerns about the novelty and inventive step of the claimed invention. Given the applicant's failure to respond to the objections or propose amendments, the court had to determine whether these objections were sufficient to warrant refusal of the patent application.

In its decision, the court acknowledged that the objections raised by the examiner were appropriately raised and aligned with the commissioner's approach to managing divisional applications. The court noted that the applicant had not provided any submissions or amendments to address the objections. As a result, the court concluded that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the court upheld the examiner's decision to refuse the patent application.

The final orders of the court were to refuse the patent application 2011203181 in its entirety, reflecting the court's determination that the objections raised by the examiner were valid and the applicant had not adequately addressed them.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established