Legal Research
Cases
Gary B Cox v MacroGenics, Inc.

Gary B Cox v MacroGenics, Inc.

Case [2019] APO 13 27 March 2019

Patent Law

Clear and Complete Enough Disclosure

Intellectual Property Law

No judgment structure available for this case.

Type to search within this case.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gary B Cox v MacroGenics, Inc. [2019] APO 13

Patent Application: 2012259162

Title:Deimmunized serum-binding domains and their use for extending serum half-life

Patent Applicant:                   MacroGenics, Inc.
Opponent:  Gary B Cox
Delegate:  Dr S. J. Smith
Decision Date:  27 March 2019
Hearing Date:  28 November 2018, in Canberra

Catchwords: PATENTS – opposition to the grant of a patent – grounds of clear enough and complete enough disclosure, support and utility – principle of general application – plausibility – undue burden – contribution to the art – specification does not comply with s 40(2)(a) or s 40(3) – lack of utility not established – costs awarded

Representation: Patent attorney for the applicant: Dr David Loch of Spruson & Ferguson
Counsel for the opponent: Mr Andrew Fox
Patent attorney for the opponent: Mr Craig Humphris of Wrays

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012259162

Title:Deimmunized serum-binding domains and their use for extending serum half-life

Patent Applicant: MacroGenics, Inc.
Date of Decision: 27 March 2019
DECISION
The specification does not comply with section 40(2)(a) or section 40(3). MacroGenics, Inc. is allowed two months from the date of this decision to file amendments to overcome these deficiencies.
I award costs according to Schedule 8 against MacroGenics, Inc.
REASONS FOR DECISION
Background

Patent application 2012259162 was filed by MacroGenics, Inc. (the Applicant) on 16 May 2012 under the provisions of the Patent Cooperation Treaty. The application claims priority from US 61/488,725 which was filed on 21 May 2011.
Acceptance of the application was advertised on 3 November 2016. Gary B Cox (the Opponent) filed a notice of opposition under section 59 of the Patents Act 1990 (the Act) on 3 February 2017.
The applicant proposed post-acceptance amendments to the specification on 6 November 2017 which were allowed unopposed on 23 February 2018 and this decision is in relation to the specification as amended.
The statement of grounds and particulars was filed on 2 May 2017, a first amendment to the statement was allowed on 16 August 2017 and a further amendment allowed on 13 April 2018, following the amendment to the specification. The statement as amended identifies three grounds of opposition: clear enough and complete enough disclosure, support and utility. I note that by filing an early amendment to the claims and subsequently to the statement of grounds and particulars the parties have assisted in focusing the opposition on the matters now in dispute.
Evidence
The evidence filed during the evidentiary periods is summarised in the table below:

Evidence Declarant Exhibits Declaration Date Reference

In Support

Peter Hudson

PH-1 to PH-12

4 August 2017

Hudson 1

In Answer

Matthew Baker

MB-1 to MB-10

29 November 2017

Baker 1

In Reply

Peter Hudson

-

7 February 2018

Hudson 2

Following completion of the evidentiary periods, the Applicant filed a further declaration by Matthew Baker dated 26 June 2018 (Baker 2) and requested that it be considered under the provisions of regulation 5.23. I informed the parties…

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.

Continue reading Gary B Cox v MacroGenics, Inc.

Details

AGLC: Gary B Cox v MacroGenics, Inc. [2019] APO 13
Case: [2019] APO 13
Decision Date: 27 March 2019

CaseChat Overview and Summary

Gary B Cox, the Opponent, opposed the grant of a patent to MacroGenics, Inc., the Applicant, in relation to patent application 2012259162. The Applicant's invention relates to a polypeptide comprising a portion of a deimmunized serum-binding protein capable of binding to serum albumin, wherein said deimmunized serum-binding protein portion extends the serum half-life of the polypeptide relative to the serum half-life of said polypeptide if lacking said portion of said deimmunized serum-binding protein. The Opponent argued that the specification did not comply with section 40(2)(a) or 40(3) of the Patents Act 1990 (Cth), and that the invention lacked utility. The Applicant proposed amendments to the specification which were allowed. The opposition was heard on 28 November 2018. The Commissioner found that the specification did not comply with section 40(2)(a) or 40(3) and that the claims extended to subject matter which did not achieve the promised benefit. The Commissioner found the opposition to be successful and allowed the Applicant two months to file amendments to overcome these deficiencies. The Commissioner awarded costs to the Opponent according to Schedule 8 against the Applicant.

Orders