The Scripps Research Institute Summary

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

The Scripps Research Institute [2011] APO 24

Patent Application: 2008202293

Title:Stabilized proteins with engineered disulfide bonds

Patent Applicant: The Scripps Research Institute

Delegate: Dr S.D.Barker

Decision Date: 1 April 2011

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

Representation: Patent applicant: Shelston IP

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2008202293

Title:Stabilized proteins with engineered disulfide bonds

Patent Applicant: The Scripps Research Institute

Date of Decision: 1 April 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008202293 was filed by The Scripps Research Institute as a divisional of application 2002310438 on 23 May 2011. An examination report issued on 29 November 2010, raising two objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

"This objection is based on the same grounds objected to in the examination of patent application 2002310438. 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 29 November 2010 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.

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

The Scripps Research Institute sought to patent a new method of stabilising proteins through the engineering of disulfide bonds. The Australian Patent Office received the application and issued an examination report objecting to the patent on two grounds. The applicant did not respond to the objections within the required timeframe and therefore, the Commissioner issued a hearing notice. The Commissioner allowed the applicant one month to file any submissions addressing the objections. The applicant did not provide any submissions. The legal issue for the Commissioner was whether the application should be refused due to the applicant's failure to respond to the objections. The Commissioner found that the objections were appropriately raised and the applicant had chosen not to defend the application. Given that the applicant provided no submissions and did not propose any amendments to overcome the objections, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the application was refused.

The Commissioner considered the case management of divisional applications and the applicant's failure to respond to the objections. The Commissioner noted that the applicant had been given a reasonable opportunity to respond to the objections, but had chosen not to do so. The Commissioner also noted that the applicant had not proposed any amendments to overcome the objections. In these circumstances, the Commissioner concluded that there were no reasonable prospects of the applicant overcoming the objections. The Commissioner found that the application should be refused. The Commissioner's decision was in line with the Commissioner's approach to case management of divisional applications, and the applicant's failure to respond to the objections. The Commissioner's decision was based on the evidence before them and the law applicable to the case.

The Scripps Research Institute

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