Wyeth

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Wyeth [2011] APO 61

Patent Application: 2009210357

Title:Substituted benzoxazoles and analogues as estrogenic agents

Patent Applicant: Wyeth

Delegate: E J Knock

Decision Date: 12 August 2011

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: 2009210357

Title:Substituted benzoxazoles and analogues as estrogenic agents

Patent Applicant: Wyeth

Date of Decision: 12 August 2011

DECISION

I refuse the application.

REASONS FOR DECISION

Patent application 2009210357 was filed by Wyeth as a divisional of application 2002353014 on 17 August 2009. An examination report issued on 08 March 2011, raising seven objections. In line with the Commissioner's approach to case management of divisionals, the report included the following note:

“Objection(s) 3 and 4 of my report are based on the same grounds objected to in the examination of patent application 2002353014. 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 08 March 2011 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

CaseChat Overview and Summary

The case involved Wyeth, the patent applicant, and the Australian Patent Office, which was responsible for examining the patent application. The application in question, numbered 2009210357, was a divisional of an earlier application, 2002353014, and related to substituted benzoxazoles and analogues as estrogenic agents. The Australian Patent Office issued an examination report on 8 March 2011, which raised seven objections against the patentability of the invention claimed in the application. The applicant was given two months to respond to the examination report, but failed to do so. Following the lapse of the two-month period, the Commissioner issued a hearing notice inviting the applicant to file any submissions within one month to address the grounds of objection identified in the examination report. The applicant did not provide any submissions, and the Commissioner proceeded to issue a decision refusing the patent application.

The legal issues before the Commissioner were whether the objections raised in the examination report were valid and, if so, whether the applicant had any reasonable prospects of overcoming the objections. The Commissioner considered that the objections were valid and that, in light of the applicant's failure to respond to the examination report or to file any submissions, there were no reasonable prospects of the applicant overcoming the objections. The Commissioner concluded that the application should be refused.

The Commissioner's decision was based on the case management approach adopted by the Australian Patent Office in relation to divisional applications. The Commissioner noted that the objections raised in the examination report were based on the same grounds as those objected to in the examination of the parent application. The Commissioner also noted that the applicant had been given an opportunity to respond to the examination report and to file submissions, but had failed to do so. In these circumstances, the Commissioner was satisfied that there were no reasonable prospects of the applicant overcoming the objections, and that the application should be refused. The Commissioner's decision was therefore in line with the statutory provisions of the Patents Act 1990, which provide for the refusal of a patent application where there are no reasonable prospects of overcoming objections to patentability.

The final orders of the Commissioner were that the patent application 2009210357 be refused. The Commissioner also noted that the applicant had the right to appeal the decision to the Federal Court of Australia within the relevant statutory period.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established