Rozenberg & Co Pty Ltd. v Velin-Pharma A/S - [2017] APO 61

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61

Patent Application: 2010294197

Title:Method for the preparation of micro-RNA and its therapeutic application

Patent Applicant:  Velin-Pharma A/S
Opponent:  Rozenberg & Co Pty Ltd.
Delegate:  Dr A. Lim
Decision Date:  5 December 2017
Hearing Date:  12 September 2017, in Canberra

Catchwords: PATENTS – section 59 – opposition to the grant of a patent –allowability of amendments to the statement of grounds and particulars under subregulation 5.16 considered – lack of novelty in light of documents established – the concept of parametritis considered – the phrase “comprising a therapeutically effective amount of one or more miRNA molecule(s), said miRNA being upregulated in a blood serum preparation derived from a body fluid after activation of said body fluid” is purely descriptive and does not add a limitation to the claim – ‘grace period’ provisions of paragraph 24(1)(a), subregulations 2.2(1A) and 2.3(1A) considered require citation D13 be disregarded – lack of novelty in light of acts not established as information was not made publicly available by the doing of the acts – lack of inventive step in light of cited documents considered together with common general knowledge established – composition comprising upregulated amounts of miRNA is a manner of manufacture in light of D’Arcy v Myraid Genetics Inc [2015] HCA 35 – lack of clarity not established – lack of sufficiency not established – opposition succeeds – costs awarded against applicant – opportunity to amend

Representation: Patent attorney for the applicant: Dr Lee Miles from FB Rice. The patent applicant relied solely on written submissions
Counsel for the opponent: Mr Benjamin Fitzpatrick
Patent attorneys for the opponent: Dr Mark Wickham and Mr David Longmuir from Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010294197

Title:Method for the preparation of micro-RNA and its therapeutic application

Patent Applicant: Velin-Pharma A/S
Date of Decision: 5 December 2017
DECISION
The opposition is successful on the grounds of novelty and inventive step.
Each of claims 1, 2, 5, 6, and claims 9-11 and 17-20 that are dependent on claim 1 lacks novelty in light of the prior art. Each of claims 1-6 and claims 9-11 and 17-20 that are dependent on claim 1 lacks inventive step in light of the prior art considered together with CGK.
It has not been established that claim 17 is not a manner of manufacture in light of the D’Arcy v Myraid Genetics Inc [2015] HCA 35.
I allow Velin-Pharma A/S a period of two months from the date of this decision in which to propose amendments.
Costs according to Schedule 8 are awarded against Velin-Pharma A/S.
REASONS FOR DECISION

Patent application number 2010294197 (the opposed application) was filed on 10 September 2010 under the provisions of the Patent Cooperation Treaty. The applicants at the time of filing the opposed application were the inventors, Mr Flemming Velin and Mr Svend Lindenberg. A request by both inventors to assign their rights in the opposed application to…

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.

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Details

Case: [2017] APO 61
Decision Date: 5 December 2017

CaseChat Overview and Summary

In the case of Rozenberg & Co Pty Ltd. v Velin-Pharma A/S, the Australian Patent Office (IPO) considered an opposition to the grant of a patent for a method for the preparation of micro-RNA and its therapeutic application. The key legal issues before the court were whether the invention was novel, involved an inventive step, was a manner of manufacture, was sufficiently disclosed, and was clear. The IPO found that the invention was not novel and did not involve an inventive step. The IPO also found that the invention was not a manner of manufacture and that it was sufficiently disclosed and clear. The IPO allowed Velin-Pharma A/S a period of two months from the date of this decision in which to propose amendments. Costs according to Schedule 8 were awarded against Velin-Pharma A/S.

Orders