Methexis Genomics N.V

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Methexis Genomics N.V [2011] APO 90

Patent Application: 2010202676

Title:Genetic diagnosis using multiple sequence variant analysis

Patent Applicant: Methexis Genomics N.V

Delegate: E J Knock

Decision Date: 7 November 2011

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

Representation: Patent applicant: Jacinta Flattery-O’Brien, Shelston IP, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010202676

Title:Genetic diagnosis using multiple sequence variant analysis

Patent Applicant: Methexis Genomics N.V

Date of Decision: 7 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202676 was filed by Methexis Genomics N.V as a divisional of application 2004215928 on 25 June 2010. An examination report issued on 4 July 2011, raising six objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objections 1-6 of my report are based on the same grounds objected to in the examination of patent application 2004215928. 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 you intend 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 4 July 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.

E J Knock
Delegate of the Commissioner of Patents

Methexis Genomics N.V, the patent applicant, filed a divisional patent application 2010202676, a follow-up to application 2004215928, seeking patent protection for a method of genetic diagnosis using multiple sequence variant analysis. The Australian Patent Office issued an examination report on 4 July 2011, raising six objections to the application. Given that the application was a divisional of an earlier application that faced similar objections, the Commissioner informed the applicant that if a response to the objections was not filed within two months, the Commissioner would either direct amendment of the application or proceed to refuse it. The applicant did not respond to the objections, leading to the Commissioner issuing a hearing notice allowing the applicant one month to file submissions or amendments to address the objections. The applicant did not provide any submissions or amendments.

The central legal issue in this case was whether the objections raised by the examiner in the examination report were valid and if the applicant had provided sufficient grounds or amendments to overcome these objections. The Commissioner needed to determine whether the application should be refused or if there was a possibility of it being amended to meet patentability criteria.

The Commissioner reviewed the examiner's report and found that the objections were appropriately raised. The applicant chose not to defend the application, providing no submissions to dispute the objections and proposing no amendments to overcome them. Given these circumstances, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application should be refused. The Commissioner, E J Knock, acting as the delegate of the Commissioner of Patents, refused the patent application.

No further orders were made beyond the refusal of the application. The Commissioner's decision stands, and the applicant has the right to appeal the decision within the specified timeframe.

CaseChat Overview and Summary

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Background to the litigation

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Legal Principle Established