Wyeth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth [2012] APO 62

Patent Application: 2008201924

Title:Stabilised formulation

Patent Applicant: Wyeth

Delegate: E J Knock

Decision Date: 18 June 2012

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: 2008201924

Title:Stabilised formulation

Patent Applicant: Wyeth

Date of Decision: 18 June 2012

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2008201924 was filed by Wyeth as a divisional of application 2006203347 on 1 May 2008. An examination report issued on 3 February 2012, raising eleven objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 2-11 of my report are based on the same grounds objected to in the examination of patent applications 2006203347. 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 you intend 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 3 February 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 matter of Wyeth, the patent applicant, the Australian Patent Office was called upon to decide whether to refuse the patent application for a "stabilised formulation." The application, numbered 2008201924, was filed as a divisional application of an earlier application, 2006203347. The case was heard by the Delegate, E J Knock, who issued a decision on 18 June 2012. The key issue before the court was whether the objections raised by the examiner in the examination report should result in the refusal of the patent application. These objections were based on the same grounds that were objected to in the examination of the parent application.

The Commissioner's approach to the case management of divisional applications, as outlined in the examination report, required the applicant to respond to the objections within two months. If no response was received, the Commissioner would consider either directing an amendment of the application under section 107 of the Patents Act 1990 (Cth) or proceeding to refuse the application under section 49(2) of the Act. After the two-month period elapsed without a response from the applicant, the Commissioner issued a hearing notice allowing the applicant one month to file any submissions addressing the grounds of objection. Despite this opportunity, the applicant did not provide any submissions, nor did they propose any amendments to overcome the objections. The Delegate concluded that there were no reasonable prospects of the applicant overcoming the objections and decided that the application should be refused.

The Delegate's decision to refuse the application was based on the applicant's failure to respond to the objections raised in the examination report and their subsequent lack of submissions or proposed amendments. The Delegate found that the objections were appropriately raised and, in the absence of any defence or attempts to amend the application, there were no reasonable prospects of the applicant overcoming the objections. As a result, the Delegate upheld the objections and refused the patent application.

The final orders of the court were to refuse the patent application 2008201924 for the "stabilised formulation" due to the applicant's failure to respond to the objections raised in the examination report and their lack of submissions or proposed amendments to overcome the objections.

CaseChat Overview and Summary

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Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established