Syngenta Limited Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Syngenta Limited [2013] APO 7

Patent Application: 2011236047

Title:Agrochemical concentrate comprising an adjuvant and a hydrotrope

Patent Applicant: Syngenta Limited

Delegate: E J Knock

Decision Date: 22 January 2013

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

Representation: Patent applicant: Keith Leslie, Davies Collison Cave, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011236047
Title:Agrochemical concentrate comprising an adjuvant and a hydrotrope

Patent Applicant: Syngenta Limited

Date of Decision: 22 January 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011236047 was filed by Syngenta Limited as a divisional of application 2004262987 on 14 October 2011. An examination report issued on 7 August 2012, raising five objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“The objections of my report are based on the same grounds objected to in the examination of patent application 2004262987. 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 below.

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

"The examination report of 7 August 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

Syngenta Limited's patent application 2011236047 was considered by the Australian Patent Office, which issued a report raising five objections to the application. The application was a divisional of an earlier application, 2004262987. Following the Commissioner's approach to case management of divisional applications, the report highlighted that the objections were based on the same grounds as those objected to in the examination of the parent application. Syngenta was given two months to respond to the report but failed to do so, leading to a hearing notice being issued. Despite being allowed a month to file submissions addressing the grounds of objection, Syngenta again did not respond. The delegate of the Commissioner of Patents, E J Knock, concluded that the application should be refused due to the lack of response and proposed amendments to overcome the objections.

The primary legal issue before the court was whether Syngenta had adequately responded to the objections raised in the examination report and hearing notice. The court noted that Syngenta had not provided any submissions or amendments to address the objections, and therefore had not demonstrated any reasonable prospects of overcoming them. The Commissioner's approach to case management of divisional applications was considered, which includes the possibility of refusing the application if no response is received. Given Syngenta's inaction, the court found that the application should be refused under section 49(2) of the Patents Act.

In reaching the decision, the delegate reviewed the examiner's report and found that the objections were appropriately raised. The lack of response from Syngenta indicated that they had chosen not to defend the application. As no submissions or proposed amendments were made, the delegate concluded that there were no reasonable prospects of Syngenta overcoming the objections. Consequently, the application was refused. The reasoning focused on the procedural requirements for responding to objections and the consequences of failing to do so under the Commissioner's case management approach.

The final orders of the court were to refuse the patent application 2011236047 due to Syngenta's failure to respond to the objections raised in the examination report and hearing notice. The application was deemed to have no reasonable prospects of being amended to overcome the objections, leading to its refusal.

Syngenta Limited

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