Wyeth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth [2013] APO 4

Patent Application: 2011224046

Title:Multivalent avian influenza vaccines

Patent Applicant: Wyeth

Delegate: E J Knock

Decision Date: 10 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: 2011224046
Title:Multivalent avian influenza vaccines

Patent Applicant: Wyeth

Date of Decision: 10 January 2013

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2011224046 was filed by Wyeth as a divisional of application 2005294322 on 14 September 2011. An examination report issued on 6 September 2012, raising four objections. In line with the Commissioner's approach to case management of divisionals, the report included the following objection:

“Objection(s) 1-4 of my report is/are based on the same grounds objected to in the examination of patent application 2005294322. 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 6 September 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 decision concerns the patent application 2011224046, filed by Wyeth as a divisional of application 2005294322. The application pertains to multivalent avian influenza vaccines. On 6 September 2012, an examination report was issued by the Australian Patent Office, raising four objections to the application. The applicant was given two months to respond to these objections but failed to do so, leading to the application being referred for a hearing.

The central legal issue before the court was whether the objections raised in the examination report were valid and whether the applicant's failure to respond warranted the refusal of the patent application. The Commissioner of Patents had outlined a clear case management approach in handling divisional applications, specifying that if no response is provided within the stipulated period, the application could be refused or directed for amendment. Given the applicant's inactivity, the court needed to determine if the application should be refused due to the lack of response and the absence of any amendments proposed by the applicant.

The court agreed with the examiner's objections and found that the applicant had not provided any submissions or amendments to address the objections raised. The court concluded that there were no reasonable prospects of the applicant overcoming the objections, and thus, the application should be refused. The applicant's lack of response and failure to propose any amendments to overcome the objections solidified the decision to refuse the application.

The final order of the court was to refuse the patent application 2011224046. The court found that the objections raised in the examination report were valid and that the applicant's inaction warranted the refusal of the application. The applicant's failure to respond or propose any amendments left no reasonable prospect of overcoming the objections, leading to the refusal of the application.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established