Illumina, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Illumina, Inc. [2012] APO 119

Patent Application: 2010219336

Title:Methods and compositions for whole genome amplification and genotyping

Patent Applicant: Illumina, Inc.

Delegate: E J Knock

Decision Date: 1 November 2012

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

Representation: Patent applicant: Brendan Nugent, Griffith Hack, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010219336
Title:Methods and compositions for whole genome amplification and genotyping

Patent Applicant: Illumina, Inc.

Date of Decision: 1 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010219336 was filed by Illumina, Inc., as a divisional of application 2004253882 on 9 September 2010. An examination report issued on 27 June 2012, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 - 3 of my report are based on the same grounds objected to in the examination of patent application 2004253882. 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 27 June 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

Illumina, Inc. sought to patent methods and compositions for whole genome amplification and genotyping. The Australian Patent Office considered application 2010219336, a divisional of an earlier application. Following the issuance of an examination report raising objections, the applicant was given two months to respond. The applicant did not reply or propose amendments, leading to a hearing notice allowing for written submissions within one month. The applicant did not submit any arguments or amendments, resulting in the Commissioner's refusal of the application.

The central legal issue was whether the applicant's failure to respond to the objections and proposed amendments justified the refusal of the application. Given the applicant's inactivity and lack of submissions, the Commissioner assessed whether the objections were appropriately raised and if the applicant had a chance of overcoming them. The Commissioner concluded that the objections were valid and that the applicant had no reasonable prospects of overcoming them due to the absence of any submissions or proposed amendments.

The Commissioner found that the objections were appropriately raised, and the applicant had chosen not to defend the application. The applicant did not provide any submissions or proposed amendments to address the objections. Consequently, the Commissioner determined that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the application. The Commissioner noted that the applicant could still amend the application to overcome the objections, but since no amendments were filed, the application was refused.

The Commissioner refused the patent application, 2010219336, due to the applicant's failure to respond to the objections and proposed amendments. The Commissioner found that the objections were valid and that the applicant had no reasonable prospects of overcoming the objections, given the absence of any submissions or proposed amendments. The Commissioner emphasized that the applicant could still amend the application to address the objections, but as no amendments were filed, the application was refused.

Illumina, Inc.

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