Reckitt Benckiser Healthcare (UK) Limited

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Reckitt Benckiser Healthcare (UK) Limited [2011] APO 58

Patent Application: 2009251172

Title:Microbial N- and O-demethylation of a thebaine derivative

Patent Applicant: Reckitt Benckiser Healthcare (UK) Limited

Delegate: E J Knock

Decision Date: 10 August 2011

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

Representation: Patent applicant: Bill McFarlane, Madderns Patent & Trade Mark Attorneys, Adelaide

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009251172

Title:Microbial N- and O-demethylation of a thebaine derivative

Patent Applicant: Reckitt Benckiser Healthcare (UK) Limited

Date of Decision: 10 August 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009251172 was filed by Reckitt Benckiser Healthcare (UK) Limited as a divisional of application 2003226563 on 23 December 2009. An examination report issued on 25 March 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following passage:

“Objection(s) 1-2 of my report are based on the same grounds objected to in the examination of parent patent application 2003226563. 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 25 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

The decision involved a patent application 2009251172, a divisional application of 2003226563, filed by Reckitt Benckiser Healthcare (UK) Limited. The application, which related to the microbial N- and O-demethylation of a thebaine derivative, faced objections raised by the Australian Patent Office examiner. These objections were similar to those encountered in the examination of the parent patent application. Reckitt Benckiser did not respond to the objections raised in the examination report issued on 25 March 2011. Consequently, the Commissioner issued a hearing notice, giving the applicant one month to file submissions addressing the grounds of objection. Reckitt Benckiser failed to respond or file any submissions, leading to the Commissioner's decision to refuse the application.

The central legal issue in this case was whether the objections raised by the examiner were valid and if Reckitt Benckiser's inaction in responding to the objections warranted the refusal of the patent application. The Commissioner had to determine if there were reasonable prospects that the objections could be overcome, considering the applicant's failure to provide any submissions or proposed amendments.

In evaluating the case, the Commissioner reviewed the examiner's report and determined that the objections were appropriately raised. The applicant's failure to respond to the objections or propose any amendments led the Commissioner to conclude that there were no reasonable prospects of overcoming the objections. The Commissioner's decision to refuse the patent application was based on the applicant's inaction and the absence of any attempt to address the objections. The Commissioner's approach to case management of divisional applications, which involves a strict timeline for responding to objections, was also a significant factor in the decision.

The final order of the Commissioner was to refuse the patent application 2009251172 due to the applicant's failure to respond to the objections raised in the examination report and the lack of reasonable prospects of overcoming those objections. The applicant had been given ample opportunity to address the objections but chose not to do so, resulting in the refusal of the application.

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