Gary B Cox v MacroGenics, Inc.

Gary B Cox, the Applicant, opposed the grant of a patent to MacroGenics, Inc., the Opponent, for their invention relating to a polypeptide capable of binding to serum albumin. The dispute was heard by Dr. S. J. Smith, a delegate of the Commissioner of Patents, and the primary focus was on whether the claims in the patent lacked utility and whether the specification complied with the disclosure requirements of the Patents Act 1990 (Cth). The case involved the examination of the patent's claims and specification to determine if they met the statutory requirements for patentability. The court had to assess the clarity, completeness, and sufficiency of the disclosure in the specification, as well as whether the invention was useful.

The court's reasoning revolved around the interpretation of the patent claims and the specification, focusing on whether the specified polypeptide could be considered deimmunized and whether it extended the serum half-life of the polypeptide as claimed. The court found that the specification did not sufficiently disclose the claimed invention, particularly in terms of the deimmunization of the polypeptide and the specific residues identified in the amino acid sequence. Additionally, the court concluded that the Opponent had not demonstrated that the invention was useful, as required by the act. The specification did not provide sufficient information to support the claim that the polypeptide could extend the serum half-life, and the evidence provided did not convincingly demonstrate this utility.

The court determined that the opposition was successful, as the patent did not meet the disclosure and utility requirements. The court allowed the Applicant a period to amend the claims and specification to address these deficiencies. The court also awarded costs to the Opponent, as they were successful in their opposition, despite the lengthy nature of the Opponent's submissions. The court did not find the length of the submissions to be a behaviour warranting a variation in the award of costs.