GlaxoSmithKline LLC Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

GlaxoSmithKline LLC [2012] APO 134

Patent Application: 2011205058

Title:Methods for synthesis of encoded libraries

Patent Applicant: GlaxoSmithKline LLC

Delegate: E J Knock

Decision Date: 20 December 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: 2011205058

Title:Methods for synthesis of encoded libraries

Patent Applicant: GlaxoSmithKline LLC

Date of Decision: 20 December 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011205058 was filed by GlaxoSmithKline LLC as a divisional of application 2006257915 on 28 July 2011. An examination report issued on 3 August 2012, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1,2,4 and 5 of my report are based on the same grounds objected to in the examination of patent application 2006257915. 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 3 August 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

The decision in GlaxoSmithKline LLC involved a patent application for methods for synthesis of encoded libraries. GlaxoSmithKline LLC, the applicant, filed the application as a divisional of an earlier application. The application was examined and objections were raised by the examiner. The applicant did not respond to the objections within the specified timeframe, leading to a refusal of the application. The applicant had the opportunity to file submissions or amendments to address the objections but chose not to do so.

The central legal issue in this case was whether the patent application met the requirements for grant under Australian patent law. Specifically, the objections raised by the examiner needed to be adequately addressed by the applicant. The Commissioner's approach to managing divisional applications, which includes a requirement for a timely response to objections, was also relevant. The applicant's failure to respond or propose amendments meant that there were no reasonable prospects of the objections being overcome.

The delegate of the Commissioner of Patents considered the objections raised by the examiner and concluded that they were appropriately raised. The applicant had not provided any submissions or proposed amendments to address the objections. Given the applicant's inaction, the delegate found that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused.

The final orders of the delegate were to refuse the patent application, as the applicant had not adequately responded to the objections and there were no reasonable prospects of overcoming them. This decision highlights the importance of timely responses and amendments in patent applications, particularly in the case of divisional applications where the examination process is closely linked to that of the parent application.

GlaxoSmithKline LLC

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Background to the litigation

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