Mixis France S.A.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Mixis France S.A. [2012] APO 37

Patent Application: 2011201470
Title:Reduction of spontaneous mutation rates in cells

Patent Applicant: Mixis France S.A.

Delegate: E J Knock

Decision Date: 22 March 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: 2011201470

Title:Reduction of spontaneous mutation rates in cells

Patent Applicant: Mixis France S.A.

Date of Decision: 22 March 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011201470 was filed by Mixis France S.A. as a divisional of application 2005217094 on 31 March 2011. An examination report issued on 10 November 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2005217094. 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 10 November 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

Mixis France S.A. filed a patent application with the Australian Patent Office, seeking protection for a method of reducing spontaneous mutation rates in cells. The application was a divisional of an earlier application, and was subject to an examination report that raised three objections. The applicant was given a two-month period to respond to the objections but failed to do so. The Commissioner issued a hearing notice, allowing one month for written submissions or amendments to address the objections. The applicant did not provide any submissions or amendments, and the Commissioner proceeded to refuse the application.

The legal issues before the court included whether the objections raised in the examination report were appropriately raised, and whether the applicant had any reasonable prospects of overcoming the objections. The court found that the objections were appropriately raised and that the applicant had not provided any submissions or amendments to dispute the objections or propose amendments to overcome them. The court considered whether there were reasonable prospects of the applicant overcoming the objections, and concluded that there were not.

The court's reasoning was based on the fact that the applicant had failed to respond to the examination report or provide any submissions or amendments to address the objections. The court noted that the Commissioner had given the applicant an opportunity to respond to the objections and to propose amendments to overcome them, but the applicant had chosen not to do so. The court concluded that there were no reasonable prospects of the applicant overcoming the objections, and that the application should be refused.

The final orders of the court were that the patent application was refused. The applicant had one month from the date of the decision to appeal to the Federal Court of Australia.

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established