IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Life Technologies Corporation [2011] APO 30
Patent Application: 2008243157
Title:Compositions and methods for restoring immune responsiveness in patients with immunological defects
Patent Applicant: Life Technologies Corporation
Delegate: Dr S.D.Barker
Decision Date: 20 May 2011
Catchwords: PATENTS – examiner objection – case management of divisional applications – no response by applicant – application refused
Representation: Patent applicant: Baldwins Intellectual Property
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243157
Title:Compositions and methods for restoring immune responsiveness in patients with immunological defects
Patent Applicant: Life Technologies Corporation
Date of Decision: 20 May 2011
DECISION
I refuse the application.
REASONS FOR DECISION
Patent application 2008243157 was filed by Life Technologies Corporation as a divisional of application 2003216436 on 7 November 2008. An examination report issued on 12 January 2011, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:
"Objections 1-5 of my report are based on the same grounds objected to in the examination of patent application 2003216436. Please note that if a response overcoming those objections 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 above."
As no reply was received, the Commissioner issued a hearing notice in the following terms:
"The examination report of 12 January 2011 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.
Dr S.D.Barker
Delegate of the Commissioner of Patents
- AGLC
- Life Technologies Corporation [2011] APO 30
- Case
- [2011] APO 30
- Decision Date
CaseChat Overview and Summary
The primary legal issue was whether the application could be refused due to the applicant's failure to respond to objections raised in the examination report. The court had to determine if the objections were appropriately raised and if the applicant's inaction justified a refusal of the application. Additionally, the court needed to consider whether there were reasonable prospects of the applicant overcoming the objections or if the application should be refused due to the lack of response. The Commissioner's approach to case management of divisional applications was also relevant, as it guided the handling of the application after the applicant's inaction.
Dr. Barker, the delegate, reviewed the examiner's report and concluded that the objections were appropriately raised. The applicant did not provide any submissions disputing the objections, nor did they propose any amendments to overcome them. Given these circumstances, the delegate found that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application should be refused. The delegate's decision was based on the applicant's failure to respond to the objections and the lack of any submissions or proposed amendments to address the objections. The Commissioner's approach to case management of divisional applications supported the decision to refuse the application.
The final orders of the court were that the application 2008243157 was refused. The applicant was given the opportunity to file submissions or propose amendments to overcome the objections, but as they failed to do so, the application was ultimately refused. The delegate's decision was made in accordance with the relevant provisions of the Act and the Commissioner's approach to case management of divisional applications.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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