Kominox, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Kominox, Inc. [2012] APO 110

Patent Application: 2011224052

Title:Pharmaceutical compositions comprising of arsenous acid, its sodium salt and its derivatives intended for the treatment of urogenital cancer and its metastasis

Patent Applicant: Kominox, Inc.

Delegate: E J Knock

Decision Date: 4 October 2012

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

Representation: Patent applicant: Linda Govenlock, Allens Arthur Robinson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011224052

Title:Pharmaceutical compositions comprising of arsenous acid, its sodium salt and its derivatives intended for the treatment of urogenital cancer and its metastasis

Patent Applicant: Kominox, Inc.

Date of Decision: 4 October 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011224052 was filed by Kominox, Inc. as a divisional of application 2006244767 on 14 September 2011. An examination report issued on 21 May 2012, raising six objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 2-4 of my report are based on the same grounds objected to in the examination of patent application 2006244767. 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 21 May 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 the case of Kominox, Inc. v. IP Australia and the Australian Patent Office involved a patent application 2011224052, a divisional of application 2006244767, filed by Kominox, Inc. The application pertained to pharmaceutical compositions comprising arsenous acid, its sodium salt, and its derivatives for treating urogenital cancer and its metastasis. The Commissioner of Patents issued an examination report on 21 May 2012 raising several objections, and subsequently, due to the applicant's failure to respond within the stipulated two months, the Commissioner issued a hearing notice allowing one month for the applicant to file submissions or amendments.

The primary legal issues for the court to determine were whether the objections raised by the examiner were valid, and whether the applicant had demonstrated any reasonable prospects of overcoming these objections. The Commissioner was required to assess the merits of the objections and the applicant's response, or lack thereof, to determine the appropriate course of action under the Patents Act.

The Commissioner reviewed the objections raised in the examination report and found them to be appropriately raised. The applicant did not provide any submissions or proposed amendments to address the objections. Given the absence of any response from the applicant, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the Commissioner decided to refuse the patent application. The decision was based on the applicant's failure to engage with the objections and their non-compliance with the case management process.

The final orders of the court were to refuse the patent application 2011224052. The Commissioner's decision was justified by the applicant's lack of response to the objections and their failure to propose any amendments to overcome the identified issues. This outcome reflects the importance of responding to objections in patent applications and the consequences of non-compliance with the examination process.

Kominox, Inc.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established