Novartis AG

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Novartis AG [2011] APO 93

Patent Application: 2010246493

Title:Vanilloid receptor-related nucleic acids and polypeptides

Patent Applicant: Novartis AG

Delegate: E J Knock

Decision Date: 8 November 2011

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

Representation: Patent applicant: Michael Caine, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010246493

Title:Vanilloid receptor-related nucleic acids and polypeptides

Patent Applicant: Novartis AG

Date of Decision: 8 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010246493 was filed by Novartis AG as a divisional of application 2006252263 on 29 November 2010. An examination report issued on 16 June 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 to 3 of my report are based on the same grounds objected to in the examination of patent application 2006252263. 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 16 June 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

Novartis AG, the applicant, sought to patent a novel invention related to vanilloid receptor-related nucleic acids and polypeptides. The application, number 2010246493, was a divisional application of an earlier application, 2006252263. The Australian Patent Office issued an examination report on 16 June 2011, raising three objections to the application. Despite being given a two-month period to respond to the report, the applicant did not provide any submissions or amendments to the application. Consequently, the Commissioner issued a hearing notice to the applicant, allowing one month to file any submissions addressing the grounds of objection identified in the examination report. The Commissioner noted that the matter would be passed to a hearing officer for a written decision if no submissions were received.

The primary legal issue before the court was whether the objections raised in the examination report were valid and whether the applicant had adequately addressed these objections. The applicant had the opportunity to respond to the objections and propose amendments but chose not to do so. The Commissioner was required to consider whether there were reasonable prospects of the applicant overcoming the objections and, if not, whether the application should be refused. The Commissioner found that the objections were valid and that the applicant had not provided any submissions or amendments to overcome the objections.

In reaching the decision, the Commissioner reviewed the examination report and found the objections to be appropriately raised. The applicant had not provided any submissions disputing the objections or proposing amendments to overcome them. Consequently, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner determined that the application should be refused.

The Commissioner issued a written decision on 8 November 2011, refusing the application. The Commissioner noted that the objections raised in the examination report were valid and that the applicant had not provided any submissions or amendments to overcome the objections. The Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections and that the application should be refused. The Commissioner also noted that the applicant had the option to appeal the decision within the prescribed timeframe.

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Legal Principle Established