Boehringer Ingelheim Pharma GmbH & Co. KG Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Boehringer Ingelheim Pharma GmbH & Co. KG [2011] APO 78

Patent Application: 2010202845

Title:Indoline derivatives substituted in position 6, production and use thereof as medicaments

Patent Applicant: Boehringer Ingelheim Pharma GmbH & Co. KG

Delegate: E J Knock

Decision Date: 22 September 2011

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

Representation: Patent applicant: Keith Leslie, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010202845

Title:Indoline derivatives substituted in position 6, production and use thereof as medicaments

Patent Applicant: Boehringer Ingelheim Pharma GmbH & Co. KG

Date of Decision: 22 September 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202845 was filed by Boehringer Ingelheim Pharma GmbH & Co. KG as a divisional of application 2003254557 on 6 July 2010. An examination report issued on
19 May 2011, raising one objection. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 1 of my report is based on the same grounds objected to in the examination of patent application AU 2003254557. Please note that if a response overcoming that 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 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 19 May 2011 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

The case involved Boehringer Ingelheim Pharma GmbH & Co. KG, the patent applicant, and the Australian Patent Office, the respondent. The dispute centered around patent application 2010202845, which related to Indoline derivatives substituted in position 6, their production, and their use as medicaments. The application was a divisional of an earlier application 2003254557. The applicant, represented by Keith Leslie from Davies Collison Cave, did not respond to the objections raised by the examiner, leading to the Commissioner's decision to refuse the application.

The primary legal issue for the court was whether the objections raised in the examination report were valid and if the applicant had sufficiently addressed these objections. The Commissioner needed to determine if there were reasonable prospects of the applicant overcoming the objections. Given the applicant's failure to respond to the examination report or propose amendments, the Commissioner had to assess the merits of the objections and decide on the application's fate.

The Commissioner reviewed the objections raised in the examiner's report and concluded that they were valid. The applicant had not provided any submissions or amendments to address these objections. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the Commissioner decided to refuse the patent application. The decision was based on the applicant's inaction and the absence of any evidence suggesting the objections could be overcome.

The final order of the Commissioner was to refuse the patent application 2010202845. The Commissioner communicated this decision in writing, explaining the reasons and the basis for the refusal. The applicant was informed that the application had been refused due to the lack of a response to the objections and the absence of any amendments to address them.

Boehringer Ingelheim Pharma GmbH & Co. KG

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established