Otsuka Pharmaceutical Co., Ltd.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Otsuka Pharmaceutical Co., Ltd. [2011] APO 45

Patent Application: 2010200362

Title:Derivatives of 4-piperazin-1-yl-4-benzo[B]thiophene suitable for the treatment of CNS disorders

Patent Applicant: Otsuka Pharmaceutical Co., Ltd.

Delegate: E J Knock

Decision Date: 29 June 2011

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

Representation: Patent applicant: Keith Leslie of Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010200362

Title:Derivatives of 4-piperazin-1-yl-4-benzo[B]thiophene suitable for the treatment of CNS disorders

Patent Applicant: Otsuka Pharmaceutical Co., Ltd.

Date of Decision: 29 June 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010200362 was filed by Otsuka Pharmaceutical Co., Ltd. as a divisional of application 2006285607 on 1 February 2011. An examination report issued on 11 February 2011, raising one objection. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection 1 of my report is based on the same grounds objected to in the examination of patent application 2006285607. 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 11 February 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

The decision in the case of Otsuka Pharmaceutical Co., Ltd. involves a patent application filed by Otsuka Pharmaceutical Co., Ltd. for a compound derivative of 4-piperazin-1-yl-4-benzo[B]thiophene intended for the treatment of central nervous system disorders. The application, numbered 2010200362, was submitted as a divisional application of an earlier patent application numbered 2006285607. The Australian Patent Office issued an examination report raising objections, which were based on the same grounds as those raised in the parent application. The applicant was given a two-month period to respond to the report but failed to do so, leading to the Commissioner's decision to proceed with the application's refusal.

The primary legal issues addressed in this case revolve around the handling of divisional patent applications and the consequences of the applicant's failure to respond to objections raised during the examination process. The key issue was whether the application could be successfully defended or amended to overcome the objections raised by the examiner. Given the applicant's inactivity and lack of response to the Commissioner's notices, the court needed to determine if there were reasonable prospects of the applicant overcoming the objections and if the application should be refused.

In reaching its decision, the court examined the Commissioner's approach to managing divisional applications, particularly the requirement for timely responses to examination reports. The court noted that the applicant had not only failed to respond to the examination report but also did not submit any written submissions or propose amendments to address the objections. Consequently, the court found that there were no reasonable prospects of the applicant overcoming the objections. The court concluded that the application should be refused due to the applicant's inaction and lack of engagement with the examination process.

The final order in this case was to refuse the patent application 2010200362. The court determined that the objections raised in the examination report were valid and that the applicant's failure to respond or engage with the examination process warranted the refusal of the application. This decision underscores the importance of timely and active engagement in the patent application process, particularly in response to examination reports and objections raised by the Australian Patent Office.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established