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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Novartis AG [2011] APO 72

Patent Application: 2009201511

Title:Novel colloid synthetic vectors for gene therapy

Patent Applicant: Novartis AG

Delegate: E J Knock

Decision Date: 21 September 2011

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

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

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009211501

Title:Novel colloid synthetic vectors for gene therapy

Patent Applicant: Novartis AG

Date of Decision: 21 September 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009201511 was filed by Novartis AG as a divisional of application 2004231170 on 17 April 2009. An examination report issued on 24 March 2011, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 – 3 of my report are based on the same grounds objected to in the examination of patent application 2004231170. 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 24 March 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

In the case of Novartis AG, the patent application 2009201511, which was filed as a divisional of application 2004231170, faced objections during examination. The Australian Patent Office issued an examination report on 24 March 2011, raising four objections. The delegate, E J Knock, was tasked with deciding whether to proceed with the application or to refuse it, given the applicant's lack of response to the objections.

The legal issues before the court involved the assessment of the objections raised in the examination report and determining the appropriate course of action in light of the applicant's failure to respond. The Commissioner's approach to managing divisional applications was also considered, as it provided a framework for handling such cases. Specifically, the court had to decide whether the objections were valid and whether the applicant's inaction justified refusing the application.

The delegate reviewed the examination report and found that the objections were appropriately raised. The applicant had not provided any submissions or proposed amendments to address the objections. Given this inaction, the delegate concluded that there were no reasonable prospects of the applicant overcoming the objections. The court agreed with this assessment, leading to the decision to refuse the application. The lack of response from the applicant and the absence of any submissions or proposed amendments supported the conclusion that the application should not proceed.

The final order was that the application 2009201511 was refused. The decision was based on the applicant's failure to respond to the objections raised in the examination report, leading to the conclusion that there were no reasonable prospects of overcoming the objections.

Novartis AG

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