Schering Corporation

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Schering Corporation [2011] APO 10

Patent Application: 2009200539

Title:Human receptor proteins; related reagents and methods

Patent Applicant: Schering Corporation

Delegate: Dr S.D.Barker

Decision Date: 7 February 2011

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

Representation: Patent applicant: Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2009200539

Title:Human receptor proteins; related reagents and methods

Patent Applicant: Schering Corporation

Date of Decision: 7 February 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009200539 was filed by Schering Corporation as a divisional of application 2006222684 (which itself is a divisional of application 2001264889) on 12 February 2009. An examination report issued on 4 November 2010, raising an objection that the claims do not relate to one invention only, and reserving comment on other issues. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"Objection 2 of my report is based on the same grounds objected to in the examination of patent applications 2001264889 and 2006222684. 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 not only those identified above. "

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

"The examination report of 4 November 2010 raised an objection 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 two (2) weeks from the date of this letter to file any submissions you wish. Your submissions should address the ground 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."

The applicant has not provided any submissions.

The objection

The objection raised by the examiner is that the claims do not relate to one invention only. The examination report identifies nine different inventions, based on nine different proteins designated DTLR2 – DTLR10. I agree that in the absence of an overarching special technical feature, the different proteins are prima facie directed to different inventions. I agree that the objection is appropriately raised.

The applicant has chosen not to defend the application. They have provided no submissions disputing the objection, and have not proposed any amendment to attempt to overcome the objection. In these circumstances there are no reasonable prospects of the applicant overcoming the objection. The application should be refused.

Dr S.D.Barker
Delegate of the Commissioner of Patents

CaseChat Overview and Summary

The case involved a patent application filed by Schering Corporation, an Australian corporation, seeking to protect an invention related to human receptor proteins and associated reagents and methods. The application, numbered 2009200539, was a divisional of an earlier application (2006222684), which itself was a divisional of an initial application (2001264889). The Commissioner of Patents raised an objection that the claims of the application did not relate to a single invention, as they encompassed multiple distinct proteins. This objection was consistent with previous objections raised in the examination of the parent and grandparent applications. The Commissioner gave the applicant two months to respond to the objection but received no reply, prompting a hearing notice. Schering Corporation did not provide any submissions to address the objection, leading the Commissioner to conclude that there were no reasonable prospects of overcoming the objection.

The central legal issue before the Commissioner was whether the claims in the patent application related to a single invention, as required by section 18(1) of the Patents Act 1990 (Cth). The Commissioner noted that the claims covered nine distinct proteins, each designated DTLR2 to DTLR10, and found that without an overarching special technical feature, these claims were prima facie directed to different inventions. The Commissioner had to determine whether the applicant could overcome this objection and if there were reasonable prospects of success in doing so. Additionally, the Commissioner needed to consider the appropriate case management approach for divisional applications, especially in light of the applicant's failure to respond to the objection.

The Commissioner agreed with the examiner's objection that the claims did not relate to a single invention. The Commissioner observed that there was no overarching special technical feature linking the nine distinct proteins, and thus, they were directed to different inventions. The Commissioner noted that the applicant had not provided any submissions or proposed amendments to address the objection. Given the lack of response and the absence of a reasonable prospect of overcoming the objection, the Commissioner concluded that the application should be refused. The Commissioner also highlighted the importance of responding to objections in a timely manner, particularly in the context of divisional applications, and that the failure to do so could result in the refusal of the application.

The Commissioner refused the application for the patent, citing the lack of unity among the claims and the absence of a response from the applicant to overcome the objection. This decision underscores the importance of addressing objections in patent applications and the potential consequences of failing to do so. The Commissioner's decision also reflects the need for patent applicants to carefully consider the scope of their claims to ensure they relate to a single invention.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established