Merial Limited v Zoetis Services LLC - [2017] APO 20

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Merial Limited v Zoetis Services LLC [2017] APO 20

Patent Application: 2007343130

Title:Methods of vaccine administration

Patent Applicant:                   Zoetis Services LLC
Opponent:  Merial Limited
Delegate:  Dr B. Akhurst
Decision Date:  5 May 2017
Hearing Date:  24 February 2017, in Canberra

Catchwords: PATENTS – section 59 – final determination – amendments do not overcome the deficiencies identified in previous decision – further opportunity provided to amend.

Representation: Counsel for the applicant: Mr Patrick Flynn
Patent attorney for the applicant: Dr Tony Shaw of Allens Patent and Trade Mark Attorneys
Counsel for the opponent: Mr Jonathan Gottschall
Patent attorneys for the opponent: Dr Jenny Petering and Dr Karin Innes of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007343130

Title:Methods of vaccine administration

Patent Applicant: Zoetis Services LLC
Date of Decision: 5 May 2017
DECISION
The amendments to the specification do not overcome the deficiencies identified in the earlier decision.
Zoetis Services LLC has one month from the date of this decision to propose amendments to the claims.
I award costs according to Schedule 8 against Zoetis Services LLC.
REASONS FOR DECISION
Background

Patent application 2007343130 was advertised as accepted on 20 December 2012 and is presently owned by Zoetis Services LLC (Zoetis). After Merial Limited (Merial) opposed the grant of the patent, the matter was heard and on 7 March 2016 my decision that the opposition succeeded on the ground of inventive step was reported as [2016] APO 12 (the earlier decision). However, I allowed Zoetis a period of time in which to propose amendments to the claims.
Zoetis proposed amendments under s 104 (the amendments) which were allowed unopposed on 15 September 2016. Merial requested to be heard before the s 59 opposition was finally determined and a hearing was held in Canberra on 24 February 2017.
The law
It is well established that the decision of the 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 (R v Smith; Ex parte Mole Engineering Pty Ltd [1981] HCA 25; (1981) 147 CLR 340 at 348-349). In a final determination of an opposition the issues to be considered are whether the amendments overcome the deficiencies identified in the earlier decision, and whether the amendments introduce any new deficiencies.
The amendments
The amended claims consist of two independent claims and 17 dependent claims. Independent claims 1 and 2 as amended are reproduced below:
1. A method of treating a dog for canine diseases comprising administering to the dog therapeutically effective amounts of a vaccine;
wherein the vaccine comprises viral antigens and a bacterin;
wherein the viral antigens comprise 1) canine distemper (CD) virus, 2) canine adenovirus type 2 (CAV-2), 3) canine parainfluenza (CPI) virus, and 4) canine parvovirus (CPV);
wherein the bacterin comprises one or more bacteria selected from Leptospira canicola, L. grippotyphosa, L. icterohaemorrhagiae, L. pomona,…

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: [2017] APO 20
Decision Date: 5 May 2017

CaseChat Overview and Summary

The Australian Patent Office Delegate, Dr B. Akhurst, was required to decide whether the amended claims of Zoetis Services LLC (Zoetis) to a patent application for a method of vaccine administration overcame the deficiencies identified in a previous decision. The previous decision had found that the claims lacked an inventive step in light of two documents. Merial Limited (Merial) had opposed the grant of the patent. In this decision, Dr Akhurst found that the amendments did not overcome the deficiencies identified in the earlier decision. The Delegate considered that Zoetis had made a genuine attempt to overcome the deficiencies, and there may be subject matter disclosed in the specification that would overcome the defects identified. Therefore, Zoetis was given a further short period in which to file further amendments to the claims. Costs were awarded to Merial according to Schedule 8.

Orders