Regenesis Biomedical, Inc. Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Regenesis Biomedical, Inc. [2011] APO 83

Patent Application: 2009225279

Title:Electromagnetic activation of gene expression and cell growth

Patent Applicant: Regenesis Biomedical, Inc.

Delegate: E J Knock

Decision Date: 1 November 2011

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

Representation: Patent applicant: Brendan Nugent, Griffith Hack, Brisbane

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009225279

Title:Electromagnetic activation of gene expression and cell growth

Patent Applicant: Regenesis Biomedical, Inc.

Date of Decision: 1 November 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009225279 was filed by Regenesis Biomedical, Inc. as a divisional of application 2004205915 on 12 October 2009. An examination report issued on 1 July 2011, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“The pending claims are identical to those originally filed in parent application 2004205915. Consequently, the objections raised in the first report dated 1 February 2008 in the parent application (attached for reference) have been maintained.
Please note that if a response overcoming those objections 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 intending 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."

As no reply was received, the Commissioner issued a hearing notice in the following terms:

"The examination report of 1 July 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 matter of Regenesis Biomedical, Inc. involved a patent application for electromagnetic activation of gene expression and cell growth. The applicant, Regenesis Biomedical, Inc., filed the application as a divisional of an earlier application. The Commissioner of Patents issued an examination report raising objections to the claims, noting that they were identical to those in the parent application. The applicant was given a two-month period to respond to the report, but failed to do so.

The legal issues before the court were whether the objections raised in the examination report were valid and, if so, whether the applicant had any reasonable prospect of overcoming those objections. The Commissioner's approach to case management of divisional applications required the applicant to address the objections raised in the parent application, which had not been overcome. The applicant had not provided any submissions or proposed any amendments to overcome the objections.

The court found that the objections raised in the examination report were appropriately raised and that the applicant had not provided any submissions disputing the objections. The applicant had not proposed any amendment to overcome the objections, and there were no reasonable prospects of the applicant overcoming the objections. The court agreed with the Commissioner's decision to refuse the application.

The final orders were that the patent application was refused. The applicant had one month to file any submissions addressing the ground(s) of objection identified in the examination report. If no submissions were received, or if the submissions did not fully overcome the objections, the matter would be passed to a hearing officer to issue a written decision. Alternatively, if the applicant filed amendments overcoming the objections within this period, the Commissioner would not proceed with the hearing. However, if the amendments did not fully overcome the objections, the applicant would be advised of this fact and the hearing may continue as above.

Regenesis Biomedical, Inc.

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Background to the litigation

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