Benitec Australia Ltd v the Carnegie Institution of Washington and the University of Massachusetts

[2005] APO 49

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 743798 in the name of The Carnegie Institution of Washington and The University of Massachusetts

Title:          Genetic Inhibition of double-stranded DNA

Action:          Opposition under Section 104 by Benitec Australia Ltd and a Request under Regulation 5.5(1) for dismissal of that Opposition

Decision:          Issued 03 November 2005.

Abstract

Opposition dismissed.  None of the opponent's arguments in the section 104 opposition were found to be tenable.  The opponent has objected to the introduction of particular terms in the amended claims under every ground of section 104.  From the nature of the objections, I was unable to identify any plausible argument supporting the opponent’s allegations and the opponent failed to provide any substantive reasoning for their objections.  As a result, the opponent has not disclosed a case with any possibility of success.  As a consequence, I dismiss the section 104 opposition in its entirety.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 743798 by The Carnegie Institution of Washington and The University of Massachusetts, an opposition under section 104 by Benitec Australia Ltd and a Request under Regulation 5.5(1) by the applicants for dismissal of the Opposition

BACKGROUND

1. Patent application 743798 in the name of The Carnegie Institution of Washington and The University of Massachusetts (hereafter "Carnegie") was filed on 21 December 1998 under the provisions of the PCT.  The application claims priority from two earlier US applications (68562 and 215257) filed on 23 December 1997 and 18 December 1998 respectively. 

2. The Australian application was advertised accepted on 7 February 2002 and a notice of opposition was filed on 7 May 2002 by Paul Jones who had opposed the application on behalf of the real opponent.  The notice of opposition was subsequently amended to reflect the real opponent [Benitec Australia Ltd (hereafter "Benitec")] on the agreement of the parties.  Evidence in support was completed on 7 April 2004 and on 6 July 2004, the applicant filed a request to amend the specification under section 104.  Leave was granted to amend the specification and this was advertised on 27 January 2005.

3. On 27 April 2005, Benitec filed a notice of opposition to the section 104 amendments.  The opponent served their Statement of Grounds and Particulars on 27 July 2005 and on 17 August 2005, the applicant requested dismissal of the opposition under regulation 5.5(1).  The matter was heard in Canberra on 20 September 2005.  The opponent was represented by Mr Paul Jones, patent attorney from Freehills Patent and Trade Mark Attorneys, Melbourne who appeared by phone.  The applicant did not appear but relied on written submissions from Dr Trevor Davies, patent attorney from Allens Arthur Robinson Patent and Trade Marks Attorneys, Sydney. 

   SPECIFICATION AS ACCEPTED

4. The specification relates to a method of suppressing (or "silencing") a target gene using double stranded RNA (dsRNA).  According to the specification, the process involves the introduction of RNA with partial or fully double-stranded…