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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth [2012] APO 88

Patent Application: 2010202344

Title:Adjuvanted bovine vaccines

Patent Applicant: Wyeth

Delegate: E J Knock

Decision Date: 8 August 2012

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

Representation: Patent applicant: Graham Cowin, Phillips Ormonde Fitzpatrick, Melbourne

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2010202344

Title:Adjuvanted bovine vaccines

Patent Applicant: Wyeth

Date of Decision: 8 August 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2010202344 was filed by Wyeth as a divisional of application 2004220543 on 4 June 2010. An examination report issued on 28 March 2012, raising one objection. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 1 of my report are based on the same grounds objected to in the examination of patent application 2004220543. 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 28 March 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

In the case of Wyeth, the patent applicant sought to obtain a patent for adjuvanted bovine vaccines. The application was filed as a divisional of an earlier application, 2004220543. An examination report was issued on 28 March 2012, which raised an objection regarding the patentability of the invention. The applicant did not respond to the examination report within the required two-month period, and subsequently, a hearing notice was issued by the Commissioner. The applicant did not provide any submissions or propose any amendments to overcome the objection, leading to the consideration of whether the application should be refused or directed for amendment.

The legal issues that the court needed to decide included whether the objections raised in the examination report were valid and whether the applicant had taken appropriate steps to respond to the objections. The court also needed to consider the Commissioner's approach to case management of divisional applications and whether the applicant's failure to respond to the examination report justified the refusal of the patent application.

The court reviewed the examination report and found that the objections raised were valid. The applicant did not provide any submissions or propose any amendments to overcome the objections. Given the applicant's lack of response and failure to propose any amendments, the court found that there were no reasonable prospects of the applicant overcoming the objections. Therefore, the court decided that the application should be refused. The court also noted that the Commissioner had the authority to refuse the application or direct amendment, and in this case, the refusal of the application was the appropriate outcome.

The final orders of the court were to refuse the patent application, 2010202344, for adjuvanted bovine vaccines by Wyeth. The applicant's failure to respond to the examination report and propose any amendments to overcome the objections led to the refusal of the application. The court's decision was based on the valid objections raised in the examination report and the lack of any reasonable prospects of the applicant overcoming those objections.

Wyeth

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