Elan Pharmaceuticals, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Elan Pharmaceuticals, Inc. [2012] APO 123

Patent Application: 2011211351

Title:Methods and compositions for treating tumors and metastatic disease

Patent Applicant: Elan Pharmaceuticals, Inc.

Delegate: E J Knock

Decision Date: 2 November 2012

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

Representation: Patent applicant: Debra Barnes, Mallesons Stephens Jacques, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011211351

Title:Methods and compositions for treating tumors and metastatic disease

Patent Applicant: Elan Pharmaceuticals, Inc.

Date of Decision: 2 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011211351 was filed by Elan Pharmaceuticals, Inc. as a divisional of application 2005213324 on 9 August 2011. An examination report issued on 24 May 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 - 2 of my report is based on the same grounds objected to in the examination of patent application 2005213324. 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 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 below.

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

"The examination report of 24 May 2012 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

Elan Pharmaceuticals, Inc. filed a patent application with the Australian Patent Office in relation to a method and composition for treating tumors and metastatic disease. The application was a divisional of a previous application. After an examination report was issued, raising two objections, the applicant failed to respond within the prescribed period, leading to a refusal of the application. The primary issue was whether the objections raised in the examination report were valid and, if so, whether the applicant could overcome them.

The court considered the objections raised by the examiner in the examination report and the applicant's failure to respond. The objections related to the same grounds as those in the parent application, and the applicant did not provide any submissions or amendments to overcome the objections. The Commissioner, in line with their approach to managing divisional applications, considered the matter based on the objections raised and the applicant's inaction. The court found that the objections were valid and that the applicant had no reasonable prospects of overcoming them.

The court ruled that the application should be refused due to the applicant's failure to respond to the objections raised in the examination report. The objections were deemed valid, and the applicant's inaction in not providing any submissions or amendments led to the conclusion that there were no reasonable prospects of overcoming the objections. The Commissioner was authorised to proceed with the refusal of the application.

The Australian Patent Office refused the patent application 2011211351 filed by Elan Pharmaceuticals, Inc. The refusal was based on the valid objections raised in the examination report, which the applicant failed to address within the prescribed period. The court found that the applicant had no reasonable prospects of overcoming the objections, leading to the decision to refuse the application.

Elan Pharmaceuticals, Inc.

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