Sanofi Pasteur, Inc.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Sanofi Pasteur, Inc. [2012] APO 99

Patent Application: 2011203153

Title:Multivalent meningococcal polysaccharide-protein conjugate vaccine

Patent Applicant: Sanofi Pasteur, Inc.

Delegate: E J Knock

Decision Date: 11 September 2012

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

Representation: Patent applicant: Simon Potter, Spruson & Ferguson, Sydney

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011203153

Title:Multivalent meningococcal polysaccharide-protein conjugate vaccine

Patent Applicant: Sanofi Pasteur, Inc.

Date of Decision: 11 September 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011203153 was filed by Sanofi Pasteur, Inc. as a divisional of application 2010219288 on 28 June 2011. An examination report issued on 14 May 2012, raising five 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 2010219288. 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 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 not only those identified above."

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

"The examination report of 14 May 2012 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

In this matter, Sanofi Pasteur, Inc. applied for a patent for a multivalent meningococcal polysaccharide-protein conjugate vaccine. The application, number 2011203153, was a divisional of application 2010219288, filed on 28 June 2011. The Australian Patent Office issued an examination report on 14 May 2012, raising five objections to the patent application. The applicant did not respond to the report within the stipulated two months. Subsequently, the Commissioner issued a hearing notice to the applicant, granting one month for written submissions addressing the objections raised in the examination report. The applicant did not provide any submissions.

The primary legal issue before the court was whether the patent application should be refused due to the applicant's failure to respond to the examination report and subsequent hearing notice. The court had to consider whether the objections raised by the examiner were appropriately raised and whether the applicant had reasonable prospects of overcoming the objections. The Commissioner had to decide whether to refuse the application or direct amendment based on the case management of divisional applications.

The Commissioner reviewed the examiner's report and found that the objections were appropriately raised. The applicant did not defend the application and provided no submissions disputing the objections or proposing any amendments to overcome them. In these circumstances, the Commissioner found that there were no reasonable prospects of the applicant overcoming the objections. Consequently, the application should be refused.

The final orders of the court were that the patent application 2011203153 be refused. The Commissioner, E J Knock, acting as a delegate of the Commissioner of Patents, issued the decision on 11 September 2012.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established