Duke University Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Duke University [2012] APO 33

Patent Application: 2009227827
Title:Modulators of odorant receptors
Patent Applicant: Duke University

Delegate: E J Knock

Decision Date: 22 March 2012

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

Representation: Patent applicant: Martin O’Brien, Spruson & Ferguson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009227827

Title:Modulators of odorant receptors

Patent Applicant: Duke University

Date of Decision: 22 March 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009227827 was filed by Duke University Holdings Corporation as a divisional of application 2005258061 on 16 October 2009. An examination report issued on 25 May 2011, raising twelve objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 3 to 7 of my report are based on the same grounds objected to in the examination of patent application 2005258061. 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 25 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

Duke University Holdings Corporation, represented by Martin O’Brien from Spruson & Ferguson, applied for a patent on "Modulators of odorant receptors" on 16 October 2009. The application was a divisional of an earlier application, 2005258061. The Australian Patent Office issued an examination report on 25 May 2011, raising twelve objections. Given the lack of response from the applicant within the stipulated period, a hearing notice was issued, allowing one month for written submissions to address the objections. The applicant did not respond, leading to the current decision.

The primary legal issue was whether the objections raised in the examination report were valid and whether the applicant had adequately responded to them. The applicant had the opportunity to overcome the objections by providing submissions or amendments but chose not to do so. The Commissioner, E J Knock, had to decide if the application could proceed, be directed for amendment, or be refused.

The Commissioner reviewed the objections and found them appropriately raised. The applicant did not provide any submissions or propose amendments to address the objections. Consequently, there were no reasonable prospects of the applicant overcoming the objections. The Commissioner concluded that the application should be refused. The decision was made in accordance with the Commissioner's approach to managing divisional applications and the provisions of the Patents Act.

The Commissioner refused the application, and no further amendments were proposed by the applicant. The decision was communicated to Duke University Holdings Corporation on 22 March 2012.

Duke University

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