Merial Limited v Zoetis Services LLC - [2018] APO 30

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Merial Limited v Zoetis Services LLC [2018] APO 30

Patent Application: 2007343130

Title:Methods of vaccine administration

Patent Applicant:                   Zoetis Services LLC
Opponent:  Merial Limited
Delegate:  Dr S. J. Smith
Decision Date:  11 May 2018
Hearing Date:  Written submissions completed 1 February 2018
Catchwords:  PATENTS – section 59 – final determination – amendments do not overcome deficiencies identified in previous decisions – application refused – costs awarded against applicant

Representation: Patent attorney for the applicant: Allens Patent and Trade Mark Attorneys
Patent attorney for the opponent: FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007343130

Title:Methods of vaccine administration

Patent Applicant: Zoetis Services LLC
Date of Decision: 11 May 2018
DECISION
The amendments to the specification do not overcome the deficiencies identified in the earlier decisions; claims 1-18 lack inventive step.
I refuse the application.
I award costs according to Schedule 8 against Zoetis Services LLC.
REASONS FOR DECISION
Background

Patent application 2007343130 in the name of Pfizer Products Inc. was advertised as accepted on 20 December 2012. Changes of ownership to Zoetis P LLC then Zoetis Services LLC (collectively Zoetis) were published on 27 June 2013 and 16 July 2015, respectively. Merial Limited (Merial) opposed the grant of the patent. The matter was heard on 9 May 2015 and 17 February 2016 and on 7 March 2016 a decision that the opposition succeeded on the ground of inventive step was reported as [2016] APO 12 (the first decision).
In the first decision Zoetis was allowed a period of time in which to propose amendments to the claims, and filed amendments under s 104 (the first amendments) which were allowed unopposed on 15 September 2016. Merial requested to be heard before the final determination of the s 59 opposition. The matter was heard on 24 February 2017 and on 5 May 2017 a decision that the amendments did not overcome the deficiencies identified in the previous decision was reported as [2017] APO 20 (the second decision).
Zoetis was allowed a further period of time in which to propose amendments to the claims, and filed amendments under s 104 (the second amendments) which were allowed unopposed on 26 October 2017. Merial again requested to be heard before the final determination of the s 59 opposition and a hearing by written submissions was completed on 1 February 2018.
The law
It is well established that a decision of a delegate in opposition proceedings is final and determines all the issues arising on the notice of opposition so far as they are capable of determination at the time.[1] The Deputy Commissioner recently considered the law on final determinations, and concluded that:
“… I cannot revisit any findings that were part of the original decision, but issues that were not considered in the original decision can be decided (for the first time) in a final determination. However, the decision in the final determination should be consistent with any…

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

Case: [2018] APO 30
Decision Date: 11 May 2018

CaseChat Overview and Summary

Merial Limited opposed a patent application by Zoetis Services LLC for a method of vaccinating dogs against canine diseases. The opposition succeeded on the ground that the claims lacked inventive step, a decision which was upheld on appeal. The delegate allowed Zoetis a period of time in which to propose amendments to the claims, and filed amendments were allowed unopposed. Merial requested to be heard before the final determination of the opposition, and the matter was heard by written submissions only. The delegate concluded that the amendments did not overcome the deficiencies identified in the earlier decisions, and refused the application. Costs were awarded against Zoetis. The delegate found that the inventive step deficiencies identified in the earlier decisions had not been overcome, and that claims 1-18 lacked inventive step in light of prior art disclosed in WO 2006/038115. The delegate concluded that the amendments did not add anything to the method previously found to lack inventive step, but instead limited the methods claimed to those which achieved the claimed result.

Orders