Oravax, Inc v CSL Limited - [2002] APO 20

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 678195 in the name of Oravax, Inc

Title: Urease Vaccine Against Helicobacter Infection

Action: Opposition under section 59 of the Patents Act 1990 by CSL Limited

Decision: Issued 24 May 2002.
Abstract

The opposition was upheld on the grounds that:
1. Claims 1, 3 to 18 and 23 to 26 are not fairly based on the matter described in the specification insofar as they include within their scope active vaccines of the invention used in therapeutic treatment of mammals infected with Helicobacter.
2. Claims 1, 3 to 5, 7 to 18 and 23 to 27 lack novelty and an inventive step when compared with the prior art base, insofar as they relate to active vaccines used in the treatment of a mammal infected with Helicobacter.
It was found that, because the description fails to provide a "real and reasonably clear disclosure" of therapeutic use of an active vaccine for the treatment of mammals infected with Helicobacter, Claims 1, 4 to 18 and 23 to 26 in part and Claim 3 in full are not entitled to the claimed priority dates, but should take the priority date of the first disclosure of therapeutic vaccination as a result of amendment, viz. 17 February 1997.
Furthermore it was found that Claims 1, 2, 4, 8 to 18 and 22 to 24, 26 and 27 in part and Claims 5 to 7 and 25 in full, insofar as they are directed to polyaminoacid compositions comprising a single subunit of Helicobacter urease, are not fairly based on the disclosure in 07/970,996, but should take the priority date of 08/085938, viz. 6 July 1993.
The opposition failed on grounds of Manner of Manufacture in that the specification does not indicate prime facie that invention is obvious to a person skilled in the art.
Section 40 matters raised in the Statement of Grounds and Particulars were not pursued.
Costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 678195 by Oravax, Inc and opposition under section 59 of the Patents Act 1990 by CSL Limited.

BACKGROUND

Patent application no. 678195 was filed under the Patent Cooperation Treaty on 2 November 1993 in the name of Fondation pour la recherche des maladies gastro-intestinales : Gastrofonds Mandataria Fiduciaire SA as International Application Number PCT/EP 93/3059. The application claimed priority from US Applications 07/970996 and 08/085938 dated 3 November 1992 and 6 July 1993 respectively. On 5 July 1994, the applicant changed its name to Oravax, Inc. The application entered the National Phase on 21 July 1994 and was advertised accepted on 22 July 1997. Notice of opposition was filed on 21 August 1997 by CSL Limited and the evidentiary stages completed by 17 August 1999.

The opposition was heard in Canberra on 29 November 2001. The applicant was represented by Ms Katrina Howard of counsel assisted by…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Oravax, Inc v CSL Limited

Details

AGLC: Oravax, Inc v CSL Limited [2002] APO 20
Case: [2002] APO 20
Decision Date: 24 May 2002

CaseChat Overview and Summary

In the case of Oravax, Inc v CSL Limited, the Opposition Division of the Australian Patent Office upheld an opposition to a patent application for a urease vaccine against Helicobacter infection. The key issues were whether the claims were fairly based on the specification, novel, and involved an inventive step, as well as whether the invention complied with the manner of manufacture requirement. The Opposition Division found that claims relating to therapeutic vaccination were not fairly based on the specification, and that those claims, as well as others relating to subunit vaccines, were not entitled to the claimed priority dates. The Division also found that several claims lacked novelty and an inventive step in light of prior art. However, the opposition failed on the manner of manufacture ground, as the specification did not indicate that the invention was obvious to a person skilled in the art. Consequently, the opposition was upheld in part, but the specification was amendable to overcome the issues. Costs were awarded against the applicant.

Orders