Coley Pharmaceutical Group, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Coley Pharmaceutical Group, Inc. [2012] APO 8

Patent Application: 2010202893

Title:Immunostimulatory nucleic acids for inducing IL-10 responses

Patent Applicant: Coley Pharmaceutical Group, Inc.

Delegate: E J Knock

Decision Date: 17 January 2012

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: 2010202893

Title:Immunostimulatory nucleic acids for inducing IL-10 responses

Patent Applicant: Coley Pharmaceutical Group, Inc.

Date of Decision: 17 January 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202893 was filed by Coley Pharmaceutical Group, Inc. as a divisional of application 2005243250 on 8 July 2010. An examination report issued on 5 September 2011, raising seven objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1, 3-5 of my report are based on the same grounds objected to in the examination of patent application 2005243250. 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 5 September 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 matter involved Coley Pharmaceutical Group, Inc. and the Australian Patent Office, with the dispute centering on the refusal of a patent application (2010202893) by the applicant. The application was a divisional of an earlier application (2005243250) and related to immunostimulatory nucleic acids for inducing IL-10 responses. The Australian Patent Office issued an examination report on 5 September 2011, raising seven objections against the application, and requested a response from the applicant within two months. When no response was received, a hearing notice was issued, allowing the applicant one month to file submissions or amendments to address the objections. The applicant did not respond or propose any amendments, leading to the Commissioner's decision to refuse the application.

The legal issues before the court involved whether the Commissioner was justified in refusing the patent application due to the applicant's failure to respond to the objections raised in the examination report. The primary issue was whether the applicant had provided sufficient grounds to overcome the objections or propose amendments to the patent application. The Commissioner's approach to case management of divisional applications and the applicant's failure to respond to the objections were also factors that needed to be considered.

The Commissioner reviewed the examiner's report and found that the objections were appropriately raised. The applicant chose not to defend the application and did not provide any submissions or proposed amendments to overcome the objections. In these circumstances, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused. The Commissioner's decision was based on the lack of response from the applicant and the absence of any proposed amendments to address the objections. Therefore, the Commissioner refused the patent application.

The final orders were that the patent application (2010202893) by Coley Pharmaceutical Group, Inc. was refused by the Australian Patent Office. The decision was based on the applicant's failure to respond to the objections raised in the examination report and the absence of any proposed amendments to address the objections. The Commissioner found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused.

CaseChat Overview and Summary

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Background to the litigation

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Legal Principle Established