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Kineta, Inc.

Kineta, Inc.

Case [2017] APO 45 31 August 2017

Patent Application

Best Method of Performance

Enablement Requirement

Specific Performance

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Kineta, Inc. [2017] APO 45

Patent Application: 2012315953

Title:Anti-viral compounds

Patent Applicant:                   Kineta, Inc.
Hearing Officer:  Dr S.D. Barker – Deputy Commissioner of Patents
Decision Date:  31 August 2017
Hearing Date:  Written submissions completed on 17 August 2017

Catchwords: PATENTS – examiner objection – best method of performance – compounds prepared by contractor, but this was not disclosed in the specification – best method not provided

Representation: Patent attorney for the applicant: Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012315953

Title:Anti-viral compounds

Patent Applicant: Kineta, Inc.
Date of Decision: 31 August 2017
DECISION
The ground of objection of lack of a best method of performance is properly raised.
I allow the applicant the time remaining for acceptance in order to attempt to overcome the objection.
Pursuant to regulation 13.4 the present application will not lapse until 3 months from the date of this decision.
REASONS FOR DECISION

Patent application 2012315953 was filed by Kineta, Inc. (the applicant) on 27 September 2012. A first examination report issued on 29 July 2016 raising the grounds of clear enough and complete enough disclosure, novelty and inventive step. Amendments were filed on 2 December 2016, and a second examination report issued on 10 January 2017 maintaining the ground of clear enough and complete enough disclosure. A response was filed on 28 March 2017. A third examination report issued on 12 April 2017 raising the objection of failure to disclose a best method of performance. That objection has been maintained in a fourth and fifth report. The applicant has asked to be heard in relation to the outstanding objection. The matter was heard on the basis of written submissions, which were filed on 10 August 2017.
The relevant law
The examination of the present application is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act). Amendments to sections 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b) of the Raising the Bar Act – the application was made before 15 April 2013 but the applicant did not ask for examination of the patent request and specification for the application until 8 February 2016.
The standard of proof that applies to the examination of the present application is the balance of probabilities – I must accept the present application if satisfied on the balance of probabilities that the application complies with the Act.[1] If I am not so satisfied, then I can refuse the application.[2]
[1] Section 49 of the Act as amended.
[2] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 54.
THE SPECIFICATION
The specification as filed states that the field of the invention is:
"Compounds and methods disclosed herein are useful for treating viral infection in vertebrates, including RNA viral infections."[3]
[3] The application at page 1.

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.

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Details

AGLC: Kineta, Inc. [2017] APO 45
Case: [2017] APO 45
Decision Date: 31 August 2017

CaseChat Overview and Summary

Kineta, Inc. sought to patent anti-viral compounds, which were discovered through a high-throughput screening process. The patent application was objected to on the ground of failing to disclose the best method of performing the invention, as required by section 40(2)(aa) of the Patents Act 1990. The dispute was heard by the Australian Patent Office and decided on the basis of written submissions. The court found that the applicant had failed to disclose the best method of performing the invention. The applicant had contracted the work of preparing the compounds to a commercial supplier but did not provide any instruction or supervision of the work. The applicant did not disclose that the only method known to it (and thus the best method known to it) was to purchase the compounds from the commercial supplier. The applicant's knowledge of this method was sufficient to require disclosure in the specification. The court found that the applicant was aware that the compounds could be obtained from a commercial supplier, and this information should have been included in the specification. The applicant has not provided a best method of performance. Any other conclusion would allow an applicant to obtain a patent for these novel substances without providing any information as to how to obtain the substance. The court allowed the applicant the time remaining for acceptance in order to attempt to overcome the objection. The present application will not lapse until 3 months from the date of this decision.

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