Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research [2011] APO 60

Patent Application: 2009202745

Title:Analysis of methylated nucleic acid

Patent Applicant: Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research

Delegate: E J Knock

Decision Date: 11 August 2011

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: 2009202745

Title:Analysis of methylated nucleic acid

Patent Applicant: Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research

Date of Decision: 11 August 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009202745 was filed by Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research as a divisional of application 2005254616 on 7 July 2009. An examination report issued on 31 March 2011, raising three objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“I note that the claims are identical to those presented in the parent application 2005254616. Therefore these grounds of objection substantially follow those presented in the first examination report of 2005254616 (8 October 2007). 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 31 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

Novartis Forschungsstiftung Zweigniederlassung Friedrich Miescher Institute for Biomedical Research, the patent applicant, applied for a patent in relation to the analysis of methylated nucleic acid. The application was filed as a divisional of an earlier application (2005254616) and was given the number 2009202745. An examination report was issued on 31 March 2011 raising three objections. The applicant was given two months to respond, however, no reply was received. The Commissioner issued a hearing notice allowing the applicant one month to file submissions addressing the grounds of objection. The applicant did not provide any submissions.

The primary legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the objections raised in the examination report and the lack of any submissions to address those objections. The Commissioner had to determine whether there were reasonable prospects of the applicant overcoming the objections, and if not, whether the application should be refused.

The Commissioner reviewed the examiner's report and agreed that the objections were appropriately raised. The applicant had chosen not to defend the application and had provided no submissions disputing the objections or proposing any amendments to overcome the objections. In these circumstances, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application should be refused.

The Commissioner refused the application under section 49(2) of the Act. The final order was that the patent application 2009202745 be refused.

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