Mixis France S.A.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Mixis France S.A. [2012] APO 76

Patent Application: 2011202192

Title:Generation of recombinant genes in Saccharomyces cerevisiae

Patent Applicant: Mixis France S.A.

Delegate: E J Knock

Decision Date: 20 July 2012

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

Representation: Patent applicant: Keith Leslie, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011202192

Title:Generation of recombinant genes in Saccharomyces cerevisiae

Patent Applicant: Mixis France S.A.

Date of Decision: 20 July 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011202192 was filed by Mixis France S.A. as a divisional of application 2005211487 on 11 May 2011. An examination report issued on 13 February 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 and 2 of my report are based on the same grounds objected to in the examination of patent application 2005211487. 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 above.

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 13 February 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

Mixis France S.A. was the applicant for a patent concerning the generation of recombinant genes in Saccharomyces cerevisiae, with the patent application number 2011202192. This was a divisional application stemming from the earlier application 2005211487. The Australian Patent Office issued an examination report on 13 February 2012, which raised two objections to the patent application. The applicant, Mixis France S.A., did not respond to the report within the allotted time, leading the Commissioner to issue a hearing notice and ultimately refuse the application.

The primary legal issue before the Commissioner was whether the objections raised in the examination report were valid and whether the applicant had taken any steps to overcome these objections. The Commissioner's approach to case management of divisional applications necessitated that if a response overcoming the objections was not received within two months, the Commissioner would consider either directing amendment of the application under section 107 or refusing the application under section 49(2) of the Act. Given the lack of response from the applicant, the Commissioner proceeded to refuse the application.

In reaching the decision, the Commissioner reviewed the objections outlined in the examiner's report and found them to be appropriately raised. The applicant did not provide any submissions or proposed amendments to address the objections. Consequently, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections, leading to the refusal of the application. The Commissioner's decision was rendered on 20 July 2012.

The final order was that the patent application 2011202192 by Mixis France S.A. was refused by the Commissioner of Patents.

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