Beth Israel Deaconess Medical Center, Yale Unidersity and Ikara Holdings, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Beth Israel Deaconess Medical Cente, Yale University and Ikaria Holdings, Inc.
[2011] APO 16

Patent Application: 2008221551

Title:Carbon monoxide improves outcomes in tissue and organ transplants and suppresses apoptosis

Patent Applicant: Beth Israel Deaconess Medical Center, Yale University and Ikaria Holdings, Inc.

Delegate: Dr S.D.Barker

Decision Date: 15 March 2011

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

Representation: Patent applicant: Davies Collison Cave

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2008221551

Title:Carbon monoxide improves outcomes in tissue and organ transplants and suppresses apoptosis

Patent Applicant: Beth Israel Deaconess Medical Center, Yale University and Ikaria Holdings, Inc.

Date of Decision: 15 March 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008221551 was filed by Beth Israel Deaconess Medical Center, Yale University and Ikaria Holdings, Inc. as a divisional of application 2002318377 on 18 September 2008. An examination report issued on 15 January 2010, raising objections of lack of unity, novelty, inventive step and manner of manufacture. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection(s) 1-4 of my report are based on the same grounds objected to in the examination of patent application 2002318377. Please note that if a response overcoming those objections 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 above."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 15 November 2010 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 objections

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.

Dr S.D.Barker
Delegate of the Commissioner of Patents

Beth Israel Deaconess Medical Center, Yale University, and Ikaria Holdings, Inc. filed a patent application with the Australian Patent Office seeking to protect their invention related to the use of carbon monoxide in improving outcomes in tissue and organ transplants and suppressing apoptosis. The application was a divisional of an earlier application, and the Commissioner of Patents issued an examination report raising objections regarding lack of unity, novelty, inventive step, and manner of manufacture. Despite being given the opportunity to respond to these objections, the applicants did not provide any submissions or propose any amendments to overcome the objections.

The legal issues before the court involved determining whether the objections raised by the Commissioner were valid and whether the applicants had provided sufficient grounds to overcome those objections. The court had to consider the case management approach of the Commissioner in relation to divisional applications and whether the applicants' failure to respond to the objections justified the refusal of the application.

The court found that the objections raised by the Commissioner were appropriately raised and that the applicants had not provided any submissions or proposed any amendments to overcome the objections. The court held that in these circumstances, there were no reasonable prospects of the applicants overcoming the objections. As a result, the application was refused. The court emphasised that the Commissioner's approach to case management of divisional applications was appropriate and that the applicants' failure to respond to the objections justified the refusal of the application.

The final orders of the court were that the application be refused. The court also noted that the applicants had the option to appeal the decision to the Federal Court of Australia.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established