Orexigen Therapeutics, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Orexigen Therapeutics, Inc. [2012] APO 42

Patent Application: 2010221801

Title:Compositions for Affecting Weight Loss

Patent Applicant: Orexigen Therapeutics, Inc.

Delegate: E J Knock

Decision Date: 12 April 2012

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

Representation: Patent applicant: Bernadette Hawkins, Cullens, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010221801

Title:Compositions for Affecting Weight Loss

Patent Applicant: Orexigen Therapeutics, Inc.

Date of Decision: 12 April 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010221801 was filed by Orexigen Therapeutics, Inc.as a divisional of application 2004233846 on 16 September 2010. An examination report issued on 6 December 2011, raising ten objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1-4 of my report are based on the same grounds objected to in the examination of patent application 2004233846. 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 6 December 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

Orexigen Therapeutics, Inc. filed a patent application for a composition affecting weight loss. The application, number 2010221801, was a divisional of application 2004233846, filed on 16 September 2010. An examination report issued on 6 December 2011 raised ten objections, and the applicant was given two months to respond. However, the applicant did not reply to the report or the subsequent hearing notice, which asked for submissions to address the objections or amendments to overcome them. The delegate, E J Knock, refused the application because the applicant had not provided any submissions or amendments to address the objections, and thus, there were no reasonable prospects of overcoming the objections.

The legal issue before the court was whether the applicant had adequately responded to the objections raised in the examination report and the subsequent hearing notice. The applicant had two months to respond to the report and one month to file submissions or amendments in response to the hearing notice. The applicant did not respond at all, providing no submissions or proposed amendments to address the objections. The court had to decide whether the application should be refused because of the applicant's failure to respond to the objections.

The delegate considered the examiner's report and agreed that the objections were appropriately raised. The applicant had not disputed the objections or proposed any amendments to overcome them. The delegate concluded that there were no reasonable prospects of the applicant overcoming the objections and decided to refuse the application. The delegate's decision was based on the applicant's failure to respond to the objections and provide any submissions or amendments to address them.

The final order was that the patent application 2010221801 was refused by the delegate, E J Knock, on 12 April 2012. The applicant had not provided any submissions or proposed amendments to address the objections raised in the examination report and the subsequent hearing notice. The delegate concluded that there were no reasonable prospects of the applicant overcoming the objections and decided to refuse the application.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established