Biogen Idec MA Inc. - [2014] APO 25

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Biogen Idec MA Inc. [2014] APO 25

Patent Application: 2011239311

Title:Treating neurological disorders

Patent Applicant:  Biogen Idec MA Inc.
Hearing Officer:  P M Spann, Deputy Commissioner of Patents
Decision Date:  30 April 2014 (Reasons published 15 May 2014)
Hearing Date:  30 April 2014
Catchwords:  PATENTS – examiner’s objections – whole contents novelty – whether section 24(1)(b) applies – whether relevant information made publicly available without consent – citation raised by the examiner must be disregarded.

Representation: Patent applicant: Cullens

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011239311

Title:Treating neurological disorders

Patent Applicant: Biogen Idec MA Inc.
Date of Decision: 30 April 2014 (Reasons published 15 May 2014)
DECISION
Section 24(1)(b) applies to information disclosed in application WO 2005/080972 published on 1 September 2005 and that information is to be disregarded for the purpose of deciding whether the claimed invention is or is not novel.
REASONS FOR DECISION

This matter concerns whether information relevant to deciding that an invention is or is not novel as set out in paragraph (b)(ii) of the definition of the prior art base (‘whole contents’ novelty) is to be disregarded pursuant to section 24(1)(b) of the Act.
Background
Patent application 2011239311 was filed by Biogen Idec MA Inc. (Biogen) on 25 October 2012. It is a divisional application from application 2006214179 which was filed on 17 February 2006 under the provisions of the Patent Cooperation Treaty. That application claims priority under Article 8 of the PCT from an application filed in the US on 17 February 2005. For the purpose of this decision it is accepted that the present application is entitled to the earliest priority date of 17 November 2005.
The application was subject to examination with the examiner finding in three examination reports, inter alia, that the invention defined in all claims was not novel in light of a published patent specification WO 2005/080972 A1 (AXARON BIOSCIENCE AG) whose date of publication was 1 September 2005. While published after the earliest priority date, this specification constituted information relevant to deciding that the invention is or is not novel as set out in in paragraph (b)(ii) of the definition of the prior art base. In this regard the specification was filed for PCT application PCT/EP2005/001921 which, under section 88(1) of the Act (as it existed before 15 April 2013), must be treated for the purposes of the Act as a complete application. Most significantly, the priority date of that application, 23 February 2004, is earlier than the priority date of the present application.
As a defence to the examiner’s objection the applicant asserted that section 24(1)(b) of the Act applied such that information contained in the publication should be disregarded for the purpose of determining novelty. In support of this, the applicant’s attorneys filed an affidavit of Jennifer Zarutskie Sleczkiewicz dated 22 April 2014 setting out circumstances under which information contained in PCT/EP2005/001921 was found in German court proceedings to have been sourced from Biogen. This resulted in the…

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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Details

Case: [2014] APO 25
Decision Date: 15 May 2014

CaseChat Overview and Summary

Biogen Idec MA Inc. challenged the examiner's finding that their patent application for treating neurological disorders was not novel due to information disclosed in a previously published patent application. The dispute centred on whether section 24(1)(b) of the Patents Act could be applied to disregard information made publicly available without consent, specifically in cases of 'whole contents' novelty. The case was heard by the Australian Patent Office with Deputy Commissioner P M Spann presiding.

The primary legal issue was whether section 24(1)(b) could be invoked to disregard information that was relevant to determining novelty but had been published without consent. This issue arose because the patent application in question was filed after another application, which was subsequently published and cited as prior art. Biogen argued that the second application was filed without their consent and therefore, the information it contained should be disregarded.

Deputy Commissioner P M Spann examined the legislative provisions and previous judicial interpretations to conclude that section 24(1)(b) could indeed apply to information that was relevant for 'whole contents' novelty, provided the statutory requirements were met. The Commissioner noted that while the Office's practice had been to disregard such information, a literal interpretation of the statute supported the applicant's argument. The Commissioner also accepted evidence that the relevant information was derived from Biogen and published without their consent. Therefore, the application was found to be novel, and the examiner's objection was overruled.

The final order was that the patent application 2011239311 by Biogen Idec MA Inc. was accepted as novel, and the objection regarding prior art was dismissed. This decision allowed Biogen to proceed with their application, ensuring that information published without their consent would not bar their patent rights.

Orders