National Research Council of Canada

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

National Research Council of Canada [2013] APO 26

Patent Application: 2011201888

Title:Water-soluble compositions of bioactive lipophilic compounds

Patent Applicant: National Research Council of Canada

Delegate: E J Knock

Decision Date: 21 March 2013

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

Representation: Patent applicant: Rosie Stramandinoli, Griffith Hack, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011201888

Title:Water-soluble compositions of bioactive lipophilic compounds

Patent Applicant: National Research Council of Canada

Date of Decision: 21 March 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011201888 was filed by National Research Council of Canada as a divisional of application 2007231911 on 27 April 2011. An examination report issued on 6 September 2012, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 and 2 of my report is/are based on the same grounds objected to in the examination of patent application 2007231911. 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 below."

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

"The examination report of 6 September 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

The National Research Council of Canada, as the patent applicant, filed a patent application for water-soluble compositions of bioactive lipophilic compounds. This application was a divisional of a previous application, 2007231911, and was filed on 27 April 2011. The Commissioner of Patents issued an examination report on 6 September 2012, raising two objections to the application. Despite being given two months to respond to the report, the applicant did not reply or provide any submissions. As a result, the Commissioner issued a hearing notice, allowing one month for the applicant to file any submissions or amendments. However, the applicant did not respond, leading to the current refusal of the application.

The legal issues before the court were whether the objections raised by the examiner were valid and whether the applicant had adequately responded to those objections. The court had to determine if the applicant's failure to respond to the objections and provide submissions or amendments constituted a sufficient reason to refuse the patent application. Furthermore, the court needed to assess whether the objections were appropriately raised and if there were reasonable prospects of the applicant overcoming the objections.

The court examined the examiner's report and found that the objections were appropriately raised. The applicant had not provided any submissions disputing the objections or proposing any amendments to overcome them. Given the applicant's failure to respond and the lack of reasonable prospects of overcoming the objections, the court found that the application should be refused. The Commissioner's approach to case management of divisional applications was also considered, which emphasised the importance of responding to objections and providing submissions or amendments within the specified timeframe.

As a result of the court's decision, the patent application 2011201888 was refused. The applicant, National Research Council of Canada, did not respond to the objections raised in the examination report and failed to provide any submissions or amendments to overcome the objections. The court found that there were no reasonable prospects of the applicant overcoming the objections, and therefore, the application should be refused in line with the Commissioner's approach to case management of divisional applications.

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established