University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts [2012] APO 122

Patent Application: 2011202964

Title:Nuclear transfer with differentiated fetal and adult donor cells

Patent Applicant: University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts

Delegate: E J Knock

Decision Date: 2 November 2012

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

Representation: Patent applicant: Bruce Dowsing, Watermark, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2011202964

Title:Nuclear transfer with differentiated fetal and adult donor cells

Patent Applicant: University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts

Date of Decision: 2 November 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011202964 was filed by University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts, as a divisional of application 2006236032 on 21 June 2011. An examination report issued on 17 April 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1 and 2 of my report is based on the same grounds objected to in the examination of patent application 2006236032. 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 17 April 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

The University of Massachusetts, a Public Institution of Higher Education of the Commonwealth of Massachusetts, applied for a patent for a nuclear transfer with differentiated fetal and adult donor cells. The application was a divisional of an earlier application and was refused by the Australian Patent Office. The applicant did not respond to objections raised in the examination report, resulting in the refusal of the patent application.

The primary legal issue in this case was whether the applicant had adequately responded to the objections raised in the examination report. The Commissioner of Patents issued an examination report raising four objections to the application. The applicant was given two months to respond to the report, but they did not provide any submissions or propose any amendments to overcome the objections. The Commissioner proceeded to issue a hearing notice, giving the applicant one month to file written submissions or amendments. However, the applicant did not respond, and the matter proceeded to a written decision.

The Delegate of the Commissioner of Patents reviewed the examiner's report and agreed that the objections were appropriately raised. The applicant did not dispute the objections or propose any amendments to overcome them. In these circumstances, the Delegate concluded that there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused.

The final order of the court was that the patent application 2011202964 was refused. The Delegate of the Commissioner of Patents found that the applicant had not responded to the objections raised in the examination report and had not proposed any amendments to overcome the objections. Therefore, there were no reasonable prospects of the applicant overcoming the objections, and the application should be refused.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established